Fordham Report 2014: Enforcement issues

Following a hearty lunch, this year's Fordham IP Conference split into streams. Eleonora raced off to the copyright session, while Annsley the AmeriKat committed herself to patents, leaving this Kat to pick up the pieces. The first such piece was a session on IP enforcement chaired bu Michael Schlesinger (Mitchell, Silberberg & Knupp, Washington D.C.). This session was opened by Christian Liedtke, a German-born IP consultant based in Newport Beach, whose talk was entitled "Stop in the Name of Law - How New EU Customs Laws Create Stumbling Blocks For Intellectual Property Owners". Christian offered a list of stumbling-blocks that festoon Customs Regulation 608/2013, the EU's upgraded legal system for tackling counterfeit and other dodgy goods when they enter the portals of the single European market. First, said Christian, the new regulation excludes parallel-traded goods -- even though 16 EU Member States are happy enough to allow for their seizure already. Secondly, he added, there is serious lack of provision for penalties. Thirdly, it doesn't provide for the seizure of product overruns. Fourthly, it may undo the good effects of the Court of Justice of the European Union's recent ruling in Case C-583/12 Sintax [noted here by the IPKat]. Finally, it doesn't take into effect the ruling of the same court in Davidoff.

Howard Knopf (Macera & Jarzyna LLP, Ottawa) spoke next, on the effect of Canadian Bill C-8. This Bill was passedintroduced (thank you Howard for pointing out that it is not passed yet) in order to ratify ACTA -- which only Japan has ratified and which looks effectively dead in the water.  Howard ran through the various provisions of the Bill and the Toblerone case and speculated as to what its effect might be on the benefit conferred on the Canadian economy by parallel imports. Harold also raised the question whether the US Supreme Court ruling in Kirtsaeng [noted on the 1709 Blog here] might provide the best solution -- a suggestion that met with little enthusiasm from the session's panellists.

Roxanne Elings (Davis Wright Tremaine LLP, New York) then spoke on "Rogue Website Litigation: Tackling The Onslaught of Internet Counterfeiting through US Courts" then addressed the concerns raised against the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA) which caused their opponents to rise up and crush them. Curiously, actions against rogue websites appear to have increased since SOPA and PIPA were dropped, which indicates that IP owners appear to have to navigated around them.  Service by email is now accepted as the most appropriate means of initiating an action, and publication to websites has been accepted too. Third party liability can be added to injunctive relief, where hosts are actively acting in concert, with notice, and where they are participating in the rogue website's actions.

Annette Kur (Max Planck Institute) then offered an account of the decisions of the Court of Justice of the European Union (CJEU) on IP enforcement and jurisdiction. Annette distinguished between cases of territorially unlimited and limited jurisdiction, dealing with the UK Supreme Court decision in Lucasfilm (the Star Wars helmet case), the CJEU ruling in Wintersteiger and Pinckney, leaving us with the question why the jurisdictional rules in the European Union need to be so generous.

Richard Vary (Nokia) was the final speaker in this session. He reviewed the nature and the quality of counterfeit mobile phones, which enjoy a larger market share than some of the smaller legitimate manufacturers.  Speaking on the celebrated Nokia case, here, he observed how long it took the European Union to get to the right solution when it came to dealing with counterfeit goods in transit. Closing, Richard observed how strange it was that injunctive relief now appears easier to obtain in China than in the United States.