Tuesday, October 09, 2007

The Fundamentals: Definition Piracy and Counterfeiting

Inspired by the open source movement I invited everybody to give feedback to my thesis. Attorney at law Mr Michiel Amende, LL.M of Amende Advocaten in the Netherlands advised me to include a list of definitions. I totally agree. So, let us start with the definitions of counterfeiting and piracy.

Ms Ay Ling Josaputra has compared the definitions of TRIPs, EU Regulation 1383/2003 and Chinese legislation.

TRIPs uses the following ones:
Article 51 TRIPs: Counterfeit trade mark goods shall mean any goods, including packaging, bearing without authorization a trade mark which is identical to the trade mark validly registered in its essential aspects form such a trade mark, and which thereby infringed the rights of the owner of the trade mark in question under the law of the country of importation"

"pirated copyright goods shall mean any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation."

Article 2 EU Regulation 1383/2003: expands the term piracy to designs.

Neither the counterfeiting and piracy definitions of TRIPs nor those of the EU Regulation 1383/2003 refer to the copying of a patent.

However, in the Chinese national laws counterfeiting refers not only to trade marks but also to patents.

According to G. Zhang, English-Chinese and Chinese-English Intellectual Property Dictionary (Yinghan-Hanying Zhishichanquan Baohu Cidian), Beijing, Law Publishing House, 1996, pp. 222, 275 and 276, the word piracy (daoban 盗版), is linked with copyrights, and the word for counterfeiting (weizao 为造) or jiamao (假冒) is linked with patents and trade marks.

Ms Josaputra rightly points out that oftentimes the definition of counterfeiting is interpreted more broadly to include any infringement of the exclusive right of the holder and not only in case of copying an identical trade mark on an identical good, but the copying of a similar trade mark on the same good if it is likely to confuse the public.

Source: Ay Ling Josaputra 'Catching the Copycat, Combating counterfeiting and piracy in the EU and China', University of Leiden.

1 comment:

kay.schmitz said...

Dear IP Dragon,

my name is Kay and I'm currently working on my Diplom thesis about IPR breaches in China. Right now I'm a little confused about the terms "counterfeiting" and "piracy". When I finally thought that I got them straight I read your post.

So let me try to formulate my problem with these terms:

The WIPO (in its definition of IP) devides intellectual property into industrial property (which includes patents, trademarks, industrial designs, geographical indications and trade secrets) and copyright and related rights (Copyright is a legal term describing rights given to creators for their literary and artistic works (including computer software). Related rights are granted to performing artists, producers of sound recordings and broadcasting organizations in their radio and television programs).

Using the TRIPS definition "counterfeiting" refers to trademark infringement. This is pretty much clear to me. But what about piracy?

If, as you suggest, "piracy" only refers to copyrights and related rights as defined by WIPO, then how do we call breaches of patents, industrial designs and geographical indications? For me these could be subsumed under the TRIPS definition of piracy as well as it talks about "production" and not "creation". But then the word copyright would have been totally misused here.

What then is a patent or design breach - a knock-off? So what is a knock-off then?

And if patents etc. are not included in the TRIPS definitions then why? Is TRIPS only concerned with trademarks and copyrights but not with other IP infringements??

As you can see, I'm pretty confused. Could you please bring some light into my dark?

Thank you so much in advance

Kay (from Germany)