In the latter 20
th century, one of the greatest achievements of humans being is the success of internet. The network technology has brought great convenience for our lives. Meanwhile, it also led to many new forms of intellectual property infringement, such as internet domain name disputes, trademark disputes, and copyright disputes, etc. Through analyzing the infringement cases on network, this article is going to clarify issues concerning the jurisdiction of the network infringement cases and the ascertainment of infringement liability, and to learn how to obtain valid evidence. We will be very pleased if this article can give you some reference.
I. Issue on the venue
Firstly, let’s take a look at the case of dispute over trademark infringement and unfair competition between Shenzhen Yuanhang Science and Technology Co., Ltd. and Shenzhen Tengxun Computer System Co., Ltd., Tengxun Science and Technology (Shenzhen) Co., Ltd., Shenzhen Tengxun Computer System Co., Ltd.-Xian Branch.
Brief Introduction of the case: in this case, the plaintiff Shenzhen Yuanhang Science and Technology Co., Ltd. independently developed two kinds of network game soft wares named “Wakeng” and “Baohuang”. Later, the plaintiff applied registration for the trademarks “Wakeng” and “Baohuang” with the State Trademark Office and then was granted the exclusive rights to use the two trademarks. Since February，2005, the plaintiff found that the three defendants including Tengxun Computer Company used the game soft wares which bear the mark identical to the registered trademark of the plaintiff on QQ game registration hall of their websites without permission of the plaintiff. The plaintiff claimed that these three defendants had already infringed its exclusive right to use the trademark and violated the principle of fair competition. Therefore, the plaintiff filed a lawsuit with Xi’an Intermediate People's Court. Within the period of submission of defense, the defendant raised an objection to the jurisdiction of the court. After the hearing, Xi’an Intermediate People's Court concluded that the objection was untenable and rejected the defendant’s objection. As soon as the ruling of first instance announced, the defendant appealed to the Higher People’s Court of Shaanxi Province. After the hearing, the Higher Court held that the original ruling was clear in fact finding and should be affirmed, and made the final ruling rejecting the appeal and upholding the original ruling”.
[i]
Analysis:
The key point of this case lies in whether the place where the network server is located can be regarded as the place where the act of infringement has taken place. Generally speaking, the actions against the trademark infringement come under the jurisdiction of the people's court at the place where such acts are committed or at the place where the defendant is domiciled. It’s legal ground lies in the provision of Article 6 of
The Interpretation by the Supreme People’s Court Relating to Several Issues on the Application of Law on the Trial of Cases of Trademark Disputes, which stipulates "For any civil case brought against infringement upon the exclusive right to use registered trademarks, the people’s courts in places where the infringement takes place or where the infringing goods are stored or sealed for investigation and impounded or where the defendant resides shall have jurisdiction over the case as provided for in Articles 13 and 52 of the Trademark Law”. But as for the cases of network trademark infringement, there is not any provision on how to ascertain the place where an infringing act is committed. In view of the virtual character of network as well as the seriously situation of network infringement, the Supreme People’s Court issued a judicial interpretation which is
The Interpretation by the Supreme People’s Court Relating to Several Issues on the Application of Law on the Trial of Cases of Disputes over the Computer Network Copyright. Article 1 of this interpretation stipulates that the actions against the network trademark infringement come under the jurisdiction of the people's court at the place where such acts are committed or at the place where the defendant is domiciled. The place where an infringing act is committed includes the place where the devices including the network server and the computer terminal are located. Therefore, by reference to this provision, we hold that as for the disputes over the infringement of the exclusive right to use registered trademark, the location of the network server should also be considered as the place where an infringement act is committed. As for this case, we hold that the two rulings are both correct.
Conclusions:
According to related provisions of the Trademark Law and the Civil Procedural Law, the jurisdiction of the traditional act of trademark infringement is basically clear. But with regard to the jurisdiction of the network trademark infringement, there is not any explicit provision. However, we hold that when determining the jurisdiction of the cases on network trademark infringement, the court can make a reference to the provision of
The Interpretation by the Supreme People’s Court Relating to Several Issues on the Application of Law on the Trial of Cases of Disputes over the Computer Network Copyright.
II. Ascertainment of infringement liability
Before analyzing the ascertainment of infringement liability, let us first look at this dispute over trademark infringement and unfair competition between on Dazhong Transportation Company, Dazhong Moving Company and Baidu Webex Company, Baidu Online Company, Baidu Online Company-Shanghai Branch.
Brief introduction of the case: in this case, the plaintiff Dazhong Transportation Company enjoys the exclusive right to use the registered trademark “Dazhong”, and the other plaintiff Dazhong Moving Company enjoys sole license to use the registered trademark “Dazhong”. In 2007, the two plaintiffs found the three defendants including Baidu Webex Company used the two plaintiffs’ registered trademark “Dazhong” without permission in two advertisement sections named “Bidding Rank” and “Hot Zone” on Baidu website. Thereafter, the plaintiffs filed a lawsuit with Shanghai No.2 Intermediate People's Court and claimed that the three defendants including Baidu Webex Company constituted trademark infringement and unfair competition of publicizing false advertisement. After the hearing, the court concluded that there was no evidence to prove these three defendants having subjective intent to provide convenience to conduct infringing act for the third party website. Thus, Baidu website should not be ascertained as having conducted the act of trademark infringement directly. However, the three defendants failed to exercise reasonable care. They had subjective offence and objectively helped the third party website conducting infringing act, which resulted in harmful consequences. For these reasons, they constituted joint infringement with the third party website which conducted direct infringement, and shall bear civil liabilities. But they were only limited to bear corresponding liability based on their act of helping infringement.
[ii]
Analysis:
Let’s discuss the ascertainment of direct infringement and indirect infringement. Through this case, it’s not difficult to find that the court distinguished between the direct infringement and indirect infringement when it ascertained that whether Baidu website constituted infringement on the plaintiffs’ exclusive right to use trademark. In fact, in the theories of network infringement, in order to protect right owners’ interest more effectively, scholars have created two doctrines of liability for network infringement, which are direct infringement and indirect infringement. The former refers to conducting the act controlled by the exclusive right of the right owner without the right owner’s permission as well as the legal counterpleas, such as “reasonable use” and “statutory license”, etc. The latter is opposite to “direct infringement”, it means though the act of the doer is not controlled by any one of the right owner’s exclusive rights, it is ascertained as an infringement by law as it has some specific relationship with “direct infringement”. Therefore, if the court wants to determine the act uncontrolled by “exclusive right” as the act of trademark infringement, the act must be blamable, which means that the doer has fault in subject and has objectively conducted acts of instigation, inducing and helping.
Conclusion:
We hold that internet service provider shall include the technology service provider and the content service provider. The technology service provider refers to the internet subject who provides services including access, cache, information memory space, search and links, etc. The content service provider refers to the internet subject who provides contents to the net users actively. The role Baidu website played in this case is internet service provider, more specifically the technology service provider. Baidu Company finally bore the liability of helping infringement in this case. On how to identify the liability of internet service providers in network infringement cases, we hold they can be summarized as follows:
1. Liability of direct infringement. For the act of trademark infringement conducted by the internet service provider actively, as long as it accords with the constitutive requirements stipulated by law, the internet service provider should bear the liability of trademark infringement.
2. Liability of indirect infringement. Under the circumstance that the internet service providers do not actively conduct the act of trademark infringement and are ignorant of net users’ act of infringement, they only probably bear the liability of indirect infringement if they have certain duty of care. Just like Baidu website’s liability of helping infringement in the above mentioned case.
3. Obligation of “removing”. Paragraph 2, Article 36 of the newly released "Tort Law"
[iii] regulates that the infringee has the right to inform the internet service provider to take necessary measures including deleting, screening and cutting off links when net users conduct the act of infringement through the internet service. If the internet service provider fails to take necessary measures in time since the receipt of notice, they shall bear a joint and several liability with the direct infringer for the loss expended due to the failure of taking measures timely.
4. Fault liability. If the internet service providers (especially the technology service provider) know that the net users conduct acts of trademark infringement through their net service and fail to take necessary measures, they shall bear a joint and several liability together with the net user. The internet service provider bears liability based on the premise that he knows someone utilizes its net service to conduct acts of infringement. But someone proposed that it shall apply to liability without fault, we do not agree. At the early stage of development of network, the courts in some countries have once decided that the internet service providers shall undertake the tort liability according to the liability without fault. However, with the deeper research on network problems, researchers gradually realized that the internet service providers who provide technology service do not provide service directly for the public, they only provides a platform for net users to issue or search information. Facing the overwhelming amounts of information every day, they can not examine information one by one technically. Unlike the status of the publishers in the traditional copyright field, the liability without fault undertaken by the internet service providers is too heavy for them. It will not only endanger the normal development of network industry, but also damage the public interests of the society at last.
III. On the collection of evidence in network infringement
On the collection of evidence in network infringement, a typical case in practice is the dispute over information network transmission rights between Xinchuan Online (Beijing) Information Technology Co., Ltd. and Chinese Network Communication Group -Zigong Branch.
Brief introduction of the case: in this case, the plaintiff obtained the copyright authorization from Zhongying Warner Hengdian Film Co., Ltd. and acquired the network transmission right in mainland China for the film “Crazy Stone” for three years. Later, the plaintiff found the defendant provided the on-line broadcasting service for the film “Crazy Stone” on its website. Then the plaintiff filed a law suit and claimed that the defendant had infringed its right of information network transmission for the film “Crazy Stone”. In order to prove its claims, the plaintiff submitted two notarial deeds which issued by Shudu notary office of Chengdu City, Sichuan Province. After the hearing, the court concluded that the notarial deeds submitted by the plaintiff were identified to be short of authenticity and objectivity for some reasons and could not be taken as a basis for ascertaining the fact. Therefore, the court decided not supporting the plaintiff's claims. The plaintiff is dissatisfied with the original judgment and appealed to Sichuan Higher People’s Court. After the hearing, the Higher Court affirmed the original judgment. The plaintiff was still not satisfied, and then applied for a retrial to the Supreme People’s Court. But the Supreme People’s Court refused the plaintiff’s retrial application after the hearing.
[iv]
Analysis:
Ultimately, all the network infringement cases will encounter a key point, which is how to collect evidence. The infringement evidence involved in network infringement is the electronic evidence, which refers to the electromagnetic recorder generated during the operation of computer or computer system with its recorded content to prove the facts. As the contents on net are constantly updated and changed, people can make great changes or additions and deletions to the contents on net freely, and the previous contents are difficult to be reproduced, which makes it more complicated to collect evidence in network infringement cases than traditional infringement cases. Due to the particularity of the network infringement case, notarial preservation of evidence becomes the first choice in most of these cases at the present stage. However, with the development of net technology, the traditional way of notarization is also facing new challenges.
In the above case, the notarial deed submitted by the plaintiff was identified to be short of authenticity and objectivity and could not be taken as a basis for ascertaining the facts. The main reason is that the act of notarization involved in the notarial deed is conducted in the place provided by the entrusted agent of the plaintiff. The computer and the HDD (Hard Driver Disk) were also provided by that entrusted agent and operated by this agent. The notarial deed does not record the contents on whether the cleanness of the computer and the HDD has been examined. It is technically possible that people can pre-establish the target page on local computer, and when access to the internet via computer, the virtual target page can coexist with other true web pages at the same time. In this case, the authenticity and objectivity of the contents recorded in the notarial deed will be questioned.
Conclusion:
In the network infringement cases, we think that the parties should pay attention to the following points:
1. Collecting evidence in time. Generally speaking, the point is very essential during the process of collecting evidence for all the cases. Due to the specialty of network, it is of vital importance to collect evidence in time in the network infringement cases.
2. Comprehensive and pertinent collection of evidence. It also refers to the relatedness of evidence which is frequently mentioned by law. In practice, if the parties find that the evidence is useful for them, they’d better fix all the evidence. The instantaneity of network may make it difficult for people to make a valid judgment in short time. Although some evidence seems irrelevant, it can often support other evidence.
3. As the development of net technology, electronic data may be easily amended or even forged. Therefore, notarial preservation of evidence shall be conducted on the neutral third server. For example, the evidence can be collected on the independent computer of the notary office or law firm in practice.
