Analysis of the 39th Batch of Guiding Cases on Intellectual Property Topics
Yi Jiming is a professor at Peking University
Recently, the Supreme People's Court released eight Guiding Cases on Intellectual Property Rights, covering areas such as copyright, patent rights, exclusive rights in layout designs of integrated circuits, anti-unfair competition, and anti-monopoly. This batch of Guiding Cases is highly pertinent and thorough, leading the adjudication of intellectual property rights, and also inspiring the intellectual property academic community. Looking at these cases, it can be summed up in two sentences: protecting rights to promote innovation, and integrating legal principles and rules.
1. Protecting rights and promoting innovation
In this batch of Guiding Cases, the Supreme People's Court has further strengthened the protection of technical secrets. In the case of "Guangzhou Tian High-tech Materials Co., Ltd. *** Jiujiang Tian High-tech Materials *** v. Anhui New Fine Chemical *** and other technical secret infringement disputes", punitive damages should be applied in accordance with the law for large-scale infringement or repeated infringement of infringement of others' technical secrets with obvious subjective malice and even as a business. It is true that it is necessary to take into account the contribution of the technical secret to the value of the product, but in the case of obstruction of proof, such as if the infringer fails to provide the corresponding original accounting documents, account books and income statement as required by the court and fails to provide sufficient evidence to prove the profit rate of its own products, the court shall rule that it bears the legal consequences of adducing unfavorable evidence, and the profit rate of the infringer's product or the profit rate of the industry shall be used as the profit rate of the infringer's products. In the case of Jiaxing Zhongxin Chemical Co., Ltd. and Shanghai Xin New Technology v. Wang Group, Ningbo Wang Science and Technology Co., Ltd., etc., the Supreme People's Court applied the rules of obstruction of proof and preponderance of evidence to expand the scope of the alleged infringer's use of the technical secrets involved in the case as determined by the court of first instance, and finally made a reasonable presumption that the accused infringer used all the technical secrets involved in the case based on the facts and daily life experience that the accused infringer had used all the technical secrets involved in the case.
In the case of Suzhou Sai XX Electronic Technology *** v. Shenzhen Yu XX Technology *** et al., a dispute over infringement of the exclusive right of integrated circuit layout design, the court further clarified the institutional design for the protection of integrated circuit layout design in the judgment: First, the protection of integrated circuit layout design is not conditional on unconditional full disclosure of the content of the layout design, so the scope of protection cannot be determined only by the content that has been disclosed at the time of registration. Second, when the right holder claims that the 3D configuration of the layout design is original in whole or in part, it shall make a full explanation or preliminary proof, and then the accused infringer shall provide contrary evidence, so as to comprehensively determine whether the 3D configuration of the layout design is original. Third, the determination of infringement of the layout design of integrated circuits can adopt a similar approach to the determination of copyright infringement, that is, the judgment method of "contact plus substantial similarity".
In the case of Guangzhou De Aquatic Equipment Technology Co., Ltd. v. Guangzhou Yu Aquatic Science and Technology Co., Ltd., a dispute over compensation for property damage caused by a Aquatic Research Institute in the south of Guangzhou, the court expressed its basic attitude towards maintaining the validity of the patent right: when there is a dispute over the ownership of the patent involved in the case, the original right holder has the duty to maintain the validity of the patent in question, including paying the annual fee of the patent involved in the case, or promptly informing the other party or the trial court when it does not agree to continue to pay the annual fee of the patent involved in the case;Otherwise, they should be liable for damages caused by the failure to maintain the rights of others and cause damage to property.
2. The rules of the law of integration
Network technology allows us to interconnect, promotes the integration and development of the virtual world and the real world, and also brings some confusion to the field of intellectual property justice. These Guiding Cases clarify the jurisprudence through disputes over utility model patents and disputes over infringement of the right of information network transmission, and further clarify the rules of e-commerce platforms, the rules of jurisdiction and the rules of evidence related to the infringement of the right of information network transmission.
In the case of Cixi Bo Plastic Products v. Yongkang Lian Industry and Trade Industry and Trade Network et al., a dispute over infringement of utility model patents, if there are "necessary measures" based on the "notice-counter-notice", then the court shall review the alleged infringer's application to the court for act preservation and request that the e-commerce platform operator be ordered to restore the link or service. At the same time, during the period when the patent right involved in the case has been declared invalid, but the relevant administrative litigation for patent confirmation has not yet been concluded, and the accused infringer applies for act preservation measures to restore the link or service, the court may rule to adopt act preservation measures and order the accused infringer to provide security as the case may be, after preliminary proof or reasonable explanation. This practice is similar to the sham disposition under German law.
The civil litigation jurisdiction system has long adhered to the "two-convenience principle". However, at present, the results of the infringement of the right of information network dissemination due to network diffusion are blurred, and the parties have artificially created jurisdictional connection points, resulting in the alienation of the "two-convenience principle". In the case of Zhang Moulong v. Cheng and Ma of Beijing Moudie Cultural Communication, the Supreme People's Court clearly pointed out that the place where the infringement of the right of information network dissemination of works occurred is uncertain and should not be used as the basis for determining jurisdiction. When determining the jurisdiction of civil disputes over cases of infringement of the right of information network transmission of works, the provisions of article 15 of the "Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Infringement of the Right of Information Network Transmission" shall be applied, that is, the people's court at the place where the infringement occurred or where the defendant is domiciled shall have jurisdiction. The "Case of a Dispute over the Infringement of the Right of Information Network Dissemination of Works by a Mei (Tianjin) Image Technology*** v. Henan Api Industry" clarifies the basic rights of photographers and the issues of authorization and sub-authorization in subsequent network communication, and at the same time clarifies the corresponding rules of proof and the burden of proof.
In addition, in the case of "Zhang Mouxun v. Yibin Heng Investment Group *** Wu Building Materials Industry Co., Ltd., Yibin City, Sichuan Province and Other Monopoly Disputes", the Supreme People's Court held that Zhang Mouxun was one of the implementers of the horizontal monopoly agreement in this case, and the so-called economic losses were essentially caused by the uneven distribution of monopoly benefits, and the illegality of his actions determined that he could not obtain relief. In fact, this case further clarifies that Article 50 of the Anti-Monopoly Law (implemented in 2008) is intended to stop and crack down on monopolistic acts and to provide civil remedies for entities harmed by monopolistic acts.
3. There are new ways to litigate in good faith
Zhang Moulong v. Beijing Moudie Cultural Communication *** Cheng and Ma X "clarified a basic legal principle of the application of law: special law is superior to general law, that is, Article 15 of the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes over Infringement of the Right of Information Network Transmission of Works shall be applied to the determination of jurisdiction over disputes over infringement of the right of information network transmission, rather than Article 25 of the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China. At the same time, based on the nature of the right of information network dissemination and the characteristics of the infringement of the right of information network dissemination, it is not appropriate to use the uncertain place of the infringement as the basis for the jurisdiction of civil cases of infringement of the right of information network dissemination. As far as civil tort litigation is concerned, the principle of territorial jurisdiction of determining the competent court based on the defendant's domicile or the place of tort is a direct manifestation of the implementation of the "two-convenience principle" in the current jurisdiction system.
In fact, the Supreme People's Court has a clear understanding of this in judicial practice, and has been trying to prevent the plaintiff from artificially creating jurisdictional connection points and attempting to arbitrarily select the competent court. The Supreme People's Court has also clarified in other cases that the jurisdiction of intellectual property infringement cases and unfair competition cases cannot be determined by the place of receipt of online purchases, which is different from cases of "entering into sales contracts by means of information networks". Article 13 of the Supreme People's Court's 2020 Opinions on Comprehensively Strengthening the Judicial Protection of Intellectual Property Rights proposes to "strengthen the rules and guidelines for disputes over intellectual property jurisdiction, and regulate acts of maliciously delaying litigation such as artificially creating jurisdictional connection points and abusing jurisdictional objections", which has been clearly listed as one of the key tasks of China's people's courts in comprehensively strengthening intellectual property protection in the new era. To a certain extent, the (2022) Zui Gao Fa Min Zhi No. 42 Civil Ruling was issued as a Guiding Case, which authoritatively resolved disputes related to jurisdiction in cases of infringement of the right of information network transmission, explained the basic principles and corresponding rules for the determination of jurisdiction in such cases, and ensured the uniformity and standardization of judicial governance of intellectual property rights in cyberspace.
Fourth, the clouds and the sun will stop the dispute
The Supreme People's Court further clarified the rules for determining the ownership of such cases, reasonably allocated the burden of proof, and provided guidance for the trial of the most popular rights protection cases in recent years, which is of guiding significance for the presentation of evidence and adjudication of similar cases.
First, clarify the authorization chain and clarify the ownership of copyright. In a copyright dispute case where ownership is obtained by way of licensing, it is necessary to first trace the starting point of the authorization chain, that is, to examine and determine the relationship between the plaintiff and the copyright owner, and then resolve the issue of whether the plaintiff's claim for copyright ownership is established. For photographic works, it is especially necessary to accurately determine whether the legal relationship between the two parties is a ** relationship or an authorization relationship based on the content of the agreement between the photographer and the ** providing platform. The nature of the relationship determines that there is no transfer of civil rights between the person and the recipient, that is, there is no necessary relationship between the relationship and the determination of copyright ownership. The basis of the retrial and reversal of the judgment in this case is also this, the evidence submitted by a certain United States (Tianjin) Image Technology *** hereinafter referred to as a certain American image company) can only prove the fact that G* Company authorized it, and failed to provide contrary evidence on the evidence adduced by a certain Lu Bee Industry in Henan, and it cannot prove that G* Company enjoys copyright in the photographic works involved in the case, which also shakes the factual basis of a certain American Image Company's claim that Henan Lu Bee Industry *** constitutes infringement.
Second, the burden of proof should be reasonably distributed in light of the characteristics of the work. In a copyright infringement case, the plaintiff must first prove that it enjoys the rights asserted, and the defendant should provide evidence to the contrary if it does not accept itWhen the contrary evidence reaches the probative force that can balance the prima facie evidence, the plaintiff should submit further evidence, and if it is unable to provide further evidence, it may face the adverse consequences of failing to present evidence. Generally speaking, the preliminary evidence that the plaintiff may present includes the authorship of the work, the copyright registration certificate, the agreement on the ownership of the copyright of the work, the effective judgment document, the declaration of rights related to the work in question, the notarization document, and the materials of the creation process of the work. In this case, a U.S. image company provided a confirmation of authorization between G* and G* Company, screenshots of some webpages, and relevant notarization documents. The defendant provided e-mails with G* to prove G*'s operating mechanism and the photographer's retention of copyright. Based on the characteristics of the photographic works and the authorization relationship between the plaintiff and G* Company in this case, the Supreme People's Court analyzed that the plaintiff was more likely to obtain favorable evidence than the defendant, but did not provide a reasonable explanation for the defendant's rebuttal evidence, and should bear the corresponding adverse consequences.
Third, carefully grasp the relationship between the watermark and the authorship of the work, and comprehensively judge the probative power. The application of electronic technology and the development of network platforms have made more and more works no longer rely on physical media, but are disseminated in virtual form, and traditional handwritten or printed signatures are gradually replaced by electronic signatures. For photographic works, it has become a common trend to use watermarks to identify the creator, but there is still a practical debate about whether watermarks can be directly equated with signatures. In the course of the retrial of this case, the Supreme People's Court provided a more instructive way of making a judgment, that is, specifically analyzing the details of the watermark on the photographic work. In addition to the watermark of "getty images", the watermark of the photographer and other brand names were also marked, and it contained a registered trademark logo, so the watermark could not be identified as a signature, and the copyright ownership of the work could be simply determined. Based on the practical characteristics of watermarks, such as large arbitrariness and self-operation, it is more reasonable to deny that the copyright ownership is determined based on watermarks alone, and it is also more conducive to protecting the rights of relevant subjects.
*: Information Bureau of the Supreme People's Court.