[pp.int.general] Fwd: [The IPKat] Lock them up or make they pay?
teirdes at gmail.com
Fri May 27 09:35:22 CEST 2011
how incredibly informative :D
mark down march 15th in your calendars. it's the chinese
-------- Original Message --------
Subject: [The IPKat] Lock them up or make they pay?
Date: Fri, 27 May 2011 00:09:33 -0700 (PDT)
From: Jeremy <jjip at btinternet.com>
Reply-To: jjip at btinternet.com
To: ipkat_readers at googlegroups.com
/What shall we do with them?
(photo by hmmlargeart <http://www.flickr.com/photos/e_hmm/489030150/>)/
*The IPKat put in four 16-hour days *at the recent International
Trademark Association Meeting in San Francisco, but was still unable to
cover more than a small amount of the programme. He is therefore
grateful to his friend and fellow blogger *Aurelia J. Schultz
<http://www.blogger.com/profile/04296562132231894342>*for providing him
with this note on one of the Table Topics which she attended:
*"Counterfeit Goods, Civil Liability and Criminal Punishment*
Lock them up or make them pay? An international group of lunch
munchers explored the various considerations in this choice at one
of this year’s *INTA* <http://www.inta.org/Pages/Home.aspx>**Table
Topics: The Intersection of Criminal Prosecution and Civil Trademark
Enforcement, moderated by *Michael J. Allan*
<http://www.steptoe.com/professionals-596.html> of Steptoe & Johnson
LLP. In opting for one or other option, there are two main
questions to ask: What do you want? How likely are you to get it?
/What do You Want? /
In China, a successful criminal prosecution will get you the
satisfaction of jail time for the defendant and a guarantee that
confiscated counterfeit goods will be destroyed on 15 March,
National Customs Day, when all confiscated counterfeit goods from
across the country are destroyed. It will not however, get
destruction of the machinery used to produce the counterfeit goods
and it will not get the trademark owner any money. In the US, a
successful criminal prosecution can include money for the trademark
owner in the form of restitution, but the amount is far less than
possible damages in a civil suit.
Occasionally, it may happen that law enforcement begins a criminal
investigation before the trademark owner brings a civil suit.
Things can get a little tricky when both cases wind up in the court
system at the same time. In the United States, the common procedure
is for the defendant to ask for a stay of the civil proceedings
until the criminal proceedings are complete. Whether the court
grants this stay can greatly affect the procedure of the civil case;
thus the plaintiff needs to decide whether to argue in support of or
against the stay. A stay can make things easier for the plaintiff
in the civil case because the government will do a large part of the
discovery work through its investigation. Plus, if the defendant is
found guilty in the criminal case, that can be used to show
liability in the civil case. However, not having the stay can also
benefit the plaintiff in the civil case by forcing the defendant to
make some tough decisions. Under the US Constitution’s
the defendant has a right not to testify in a criminal proceeding.
But, if he chooses to testify in the civil case, that right is
considered waived. In Latvia, there are no choices to make; the
stay is automatic.
/How Likely are You to Get it? /
One notable consistency across the countries, if you want criminal
enforcement, you’re probably going to have to do the dirty work
yourself. Governments are short on resources, money, time and
personnel. In the United States, trademark owners who want to close
down counterfeit operations are more likely to get results working
with the local law enforcement and prosecution offices, rather than
with any of the various federal agencies. In China, success is more
likely with engagement of officers at higher government levels, most
notably the Ministry of Public Security. Local decision makers are
often friends with the counterfeiters.
Convincing law enforcement to get involved can be challenging, even
if you’re able to foot the bill. Generally, you need to show that
involvement in your case benefits the greater public. In the United
States, all you have to do is find some way to persuade law
enforcement that this counterfeit goods operation is linked to
terrorism. In Latvia, the sell is a little more difficult unless
the counterfeit good is physically dangerous; loss of tax revenue is
often the best point. But there are also some places where the
convincing is not as needed. In Latin America, criminal prosecution
is the standard for trademark infringement and counterfeit goods.
Civil cases just take way too long.
So when do you go for the money, when do you try for criminal
enforcement and when do you have to choose? Generally, you go for
the money when you want money and you go for criminal enforcement
when you are dealing with repeat counterfeiters and want the whole
operation shut down, provided you can find a willing government
partner and do some funding. [Which brings up a very interesting
question about access to justice, but I’ll leave that for the
Posted By Jeremy to The IPKat
5/27/2011 08:09:00 AM --
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