This Week in IP Enforcement

SIIA Calls for More Trademark and Copyright Protections for New Domain Names
In comments filed with ICANN (Internet Corporation for Assigned Names and Numbers) last week, SIIA called for more intellectual property (IP) safeguards before any new generic top level domain (gTLD) applications are approved. Under the new program, trademark and copyright owners will be forced to expend significant resources and time to protect their intellectual property on thousands of new domains. Specifically, SIIA continues to stress the need for registries (the gTLD applicants) that are approved by ICANN put in place greater safeguards to protect against piracy and counterfeiting — this is especially true for domain names that are targeted toward software and information products and brands. Establishment of a clear process for complaints and systems for ensuring that domain information is accurate and publically available are the minimum levels of protection that rights holders deserve under this new program. Read more on SIIA’s Digital Discourse Blog.

SIIA Continues on China’s Trade Practices at Issue at USTR
Last week, USITO filed comments with the United States Information Technology Office (USITO) in China, in the annual review of China’s compliance with its accession commitments to the World Trade Organization (WTO). As a follow-up, SIIA Public Policy VP Mark MacCarthy will be testifying on behalf of SIIA and USITO at the USTR’s hearing on these issues on October 3rd, focusing on the issues of intellectual property enforcement, utility model patents, services invention remuneration and Internet regulation. His oral testimony is here.

IP News

Holder Announces Grant Winners in Effort to Prosecute Intellectual Property Theft (The Baltimore Sun)
U.S. Attorney General Eric Holder announced $2.4 million in grants to 13 jurisdictions that are helping to fight intellectual property theft.

Japanese Music Pirates Face Jail, Big Fines (paidContent)
In contrast with the emerging approach in other countries, new laws in Japan make uploading and downloading illegal content a criminal rather than civil offense, punishable by large fines and up to two years in prison.

Google’s Motorola Drops ITC Patent Infringement Complaint Against Apple (International Business Times)
Google’s Motorola unit suddenly and unexpectedly withdrew a complaint it recently filed with the ITC against Apple, asking the ITC to ban U.S. imports of all current and recent iPhone, iPad and Mac Computer models.

MPAA Chief Says SOPA, PIPA ‘Are Dead,’ But ISP Warning Scheme Lives On (Wired)
Former Sen. Christopher Dodd, now chairman of the MPAA, said SOPA and PIPA are not going to be floated again in Congress, but the nation’s major internet service providers are cooperating to implement mitigation measures to fight piracy.


Keith Kupferschmid is General Counsel and SVP, Intellectual Property Policy & Enforcement at SIIA.

More Trademark and Copyright Protections are Needed before New Domain Names Go Live on the Internet

SIIA today called for more Intellectual Property safeguards before any new generic top level domain (gTLD) applications are approved. SIIA filed comments with the Internet Corporation for Assigned Names and Numbers (ICANN ) on the new gTLD applications as part of the public comment and objection process.

Under the current program, trademark and copyright owners will be forced to expend significant resources and time to protect their intellectual property on thousands of new domains. It is essential that the registries (the gTLD applicants) that are approved by ICANN put in place greater safeguards to protect against piracy and counterfeiting. This is especially true for domain names that are targeted toward software and information products and brands.

SIIA and other concerned groups have recommended a minimum set of safeguards that all new gTLDs should be required to abide by. Among other things, these safeguards would require registries to offer publicly accessible, authenticated, verified Whois data for all second-level domain names within the registry. All registries must implement standards that ensure prompt investigation and resolution of rights holder complaints.

A clear process for complaints and systems for ensuring that domain information is accurate and publically available are the minimum levels of protection that rights holders deserve under this new program. Without this, the new domains will create huge potential for abuse by those seeking to profit from the name, reputation, and content of others. Trademark and copyright owners need a reasonable and open complaint process to turn to.


Keith Kupferschmid is General Counsel and SVP, Intellectual Property Policy & Enforcement at SIIA.

This Week in IP Enforcement

Switzerland, Italy Join Congressional Watch List on Piracy for First Time (Hollywood Reporter)
The U.S. Congressional International Anti-Piracy Caucus released its annual Anti-Piracy Watch List, with Italy and Switzerland making the list for the first time.

Jones, Others, Face Copyright Infringement Lawsuit from 2 Leading Publishers in N.Y. (Murray Ledger & Times)
McGraw-Hill Companies and Pearson Education filed a copyright infringement lawsuit against Murray businessman Charles Jones and his business College Book Rental Company for reproducing and distributing counterfeit copies of various textbooks.

Microsoft Said to Ask China to Stop Piracy at Four Firms (Bloomberg)
Microsoft filed complaints asking China to stop the alleged use of pirated versions of its Office software at four state-owned companies, including China Post Group and China National Petroleum Corp.

Client Loses Bid to Sue Ex-Lawyer for Copyright Infringement (Thomson Reuters)
A U.S. District Judge tossed a lawsuit brought by Bernard Gelb, a man who claimed his former attorney, Norman Kaplan, committed copyright infringement by using a complaint Gelb authored five years earlier.


Keith Kupferschmid is General Counsel and SVP, Intellectual Property Policy & Enforcement at SIIA.

SIIA Weighs in on China’s Trade Practices at Issue at USTR

Today, SIIA filed the comments with the United States Information Technology Office (USITO) in the annual review of China’s compliance with its accession commitments to the World Trade Organization (WTO). The review is held by the United States Trade Representative (USTR).

The comments cover a broad range of concerns on the part of the US tech industry aimed at improving trade and investment in China, including China’s indigenous innovation policies, intellectual property rights, market access and technical barriers to trade, national treatment, communications services and commercial Internet regulations.

The annual USTR review provides USITO and its members an effective means to recognize areas where progress has been made, to raise issues of concern and suggest approaches to resolve areas of disagreement with China’s government over implementation of its WTO agreements.

USITO is the leading independent non-governmental policy organization focused on the technology industry in China. USITO acts as the joint office in China of several U.S.-based trade associations representing the high-tech industry, including SIIA, the Information Technology Industry Council, the Semiconductor Industry Association, TechAmerica and the Telecommunications Industry Association.

I will be testifying on behalf of SIIA and USITO at the USTR’s hearing on these issues on October 3, along with Jimmy Goodrich, Director of Global Policy at the Information Technology Industry Council (ITI), and Brian C. Toohey, President & CEO of the Semiconductor Industry Association (SIA).


Mark MacCarthy, Vice President, Public Policy at SIIA, directs SIIA’s public policy initiatives in the areas of intellectual property enforcement, information privacy, cybersecurity, cloud computing and the promotion of educational technology. Follow the SIIA Public Policy team on Twitter at @SIIAPolicy

China’s Utility Model Patent System: A Perfect Storm for Patent Trolls

In testimony at today’s House Subcommittee on Intellectual Property hearing on international intellectual property enforcement, Victoria Espinel, the US Intellectual Property Enforcement Coordinator, made reference to “unexamined utility model patents” as a problem in the Chinese patent system.

Chairman Bob Goodlatte also raised the issue in his opening statement, noting that it is “problematic” when “a country grants many low-quality or “junk” patents to local companies, so that they can sue American companies and get rich quick. Many of these are utility model patents that go through minimal review and lack real inventiveness.”

It is good news that the Administration and the Congress are focusing on this. A recent Washington Post story highlights the problem.  It looks as if China is about to recreate the patent troll problem we are struggling with here in the United States.  The Post story puts the problem this way: “ Small companies that take on bigger firms in questionable patent cases have become known here as “patent cockroaches,” a play off the U.S. term “patent trolls,” used to describe companies that make money primarily by hoarding flimsy patents and suing others.”

A recent report from Thompson Reuters describes how this lesser-known part of China’s patent system works. It is intended to apply to incremental improvements that change the shape or structure of an object.  It is typically used for electronic or communication devices but software implemented inventions have also been issued as utility model patents.

The problem is that it is too easy, cheap and quick to get these patents.  As a result, they are often of low quality.  Despite this they carry with them the same arsenal of remedies as higher quality invention patents do, including substantial fines and even injunctions.

The threshold of inventiveness is lower for utility model patents.  As compared to prior art, an invention patent has “prominent substantive features and represents a notable progress;” while a utility model patent merely has “substantive features and represents progress.” As a result it is more difficult to invalidate a questionable utility model patent. And there is no mandatory examination upon filing an infringement action.

The utility models are issued without substantive examination typically in under 6 months (3 months is the target) Utility models are 20% cheaper than invention patents to obtain.

Because of these attractive features utility model patents are growing quickly.  Most of these are owned by Chinese individuals.

A few problematic cases have already surfaced. Several years ago, the French company Schneider lost a utility model suit in China, costing them a $23 million settlement. A patent infringement case was filed on July 30, 2012 involving a utility model against Apple by Mr. Lee of Taipei in Zhenjiang Immediate People’s Court.  The case involves Facetime.

The situation is ripe for abuse.  Since 2008, well-known non-practicing entities have begun to establish a presence in China. It is only a matter of time before the patent troll problem burst out there and by then it will be too late to prevent the damage these.

We know the extent of the problem here.  A recent study by Boston University faculty members James Besen and Michael Meurer suggest that the economic loss from patent trolls reached $29 billion in 2011. We don’t need to recreate this problem in the world’s second largest economy. The time is now to begin consultations with industry and other governments to investigate remedies to this potential problem.


Mark MacCarthy, Vice President, Public Policy at SIIA, directs SIIA’s public policy initiatives in the areas of intellectual property enforcement, information privacy, cybersecurity, cloud computing and the promotion of educational technology. Follow the SIIA Public Policy team on Twitter at @SIIAPolicy

This Week in IP Enforcement

France Sees First Conviction Under New Anti-Piracy Law (CNET)
France assessed its first fine under Hadopi against a man found liable for failing to secure his Internet connection that was being used to illegally download copyrighted content.

Microsoft Finds New PCs in China Preinstalled with Malware (PCWorld)
An investigation by Microsoft revealed that brand-new laptop and desktop computers sold in China contained preinstalled malware embedded in counterfeit versions of Windows OS. While consumers in Western countries may not be vulnerable to that kind of tampering, they do face risks if they download counterfeit software from the Internet.

“Six Strikes” Internet Warning System Will Come to US this Year (Ars Technica)
Jill Lesser, head of the newly formed Center for Copyright Information, says the Copyright Alert System, commonly known as the “six strikes” anti-piracy program, is set to launch by the end of this year.

The 3 Myths Behind “Internet Pirates Always Win” (paidContent)
Michael Smith, an economist from Carnegie Mellon, argues that three myths are driving the popular notion that online piracy is inevitable and can’t be stopped.

Judge Suspends Google E-Book Litigation (Reuters)
An appeals court judge suspended trial court litigation involving Google and thousands of authors pending Google’s appeal of an order granting the authors class-action status in the case over Google’s plans to create the world’s largest digital books library.

Piracy May Be Commonplace, But Music’s Outlook is Improving (paidContent)
A recent report says more than three billion songs were downloaded illegally around the world via torrent in the first half of 2012, and while that is a huge number, it is likely shrinking and moving in the direction the industry wants.


Keith Kupferschmid is General Counsel and SVP, Intellectual Property Policy & Enforcement at SIIA.

This Week in IP Enforcement

SIIA Defends Publishers’ Copyright Before Supreme Court
SIIA last week filed an amicus brief in Kirtsaeng v. John Wiley & Sons, Inc. — a hotly contested case that could undermine U.S. publishers’ competitiveness in the global marketplace. The case involves the legality of purchasing copyrighted works that are made and sold overseas and reselling them into the U.S. without authorization from the publisher. SIIA has taken the lead in previous court filings to defend the flexibility for publishers to employ the most effective and efficient market strategies by controlling their content and price structures from country to country, and in this brief we argue that there are a variety of beneficial reasons for a publisher to prevent copies made for sale abroad from entering the United States.

Read more: SIIA Tells Supreme Court that ‘First Sale Doctrine’ Should Not Apply to Copies of Copyrighted Works Made Abroad & Resold in U.S.
SIIA Amicus Brief in Kirtsaeng v Wiley & Sons

Will 3-D Printing Lead to a New Wave of Piracy? (GigaOM)
New, cheap 3-D printers could inaugurate a technological revolution, but at the same time lead to massive new piracy problems.

Mobile Carriers and Consumers Are All Pirates in South Africa (paidContent)
A new report on digital content in South Africa highlights a significant problem regarding some of the nation’s largest online music providers’ refusal to pay licensing fees, and proposes the same kind of “three-strikes” penalty system being leveled against infringers in other countries.

Google Restricts Pirate Bay From Autocomplete, Instant Search Features (PCWorld)
Google is making it more difficult to find The Pirate Bay by reducing its appearance in the Autocomplete and Google Instant search features; users must now type out nearly the entire name of the site before seeing any Autocomplete suggestions.

Appeals Court Sides with RIAA, Jammie Thomas Owes $222,000 (CNET)
The U.S. Court of Appeals for the Eighth Circuit vacated a lower court’s decision and ruled that a Minnesota woman, found by a judge to have lied about illegally uploading music, must pay the top four record labels $222,000.

Pirate Bay Founder Accused of New Crime in Sweden (Bloomberg Businessweek)
Pirate Bay co-founder Gottfrid Svartholm Warg was arrested in a new hacking investigation as he returned home to Sweden from Cambodia to serve a prison sentence for his involvement with The Pirate Bay.

China’s Taobao E-Commerce Site Signs Deal with U.S. Film Rep to Curb Piracy (Reuters)
China’s largest e-commerce site, Taobao Marketplace, signed an agreement with the Motion Picture Association to curb the sale of counterfeit goods and goods that infringe the copyrights of the MPA’s members.


Keith Kupferschmid is General Counsel and SVP, Intellectual Property Policy & Enforcement at SIIA.