US embassy cable - 05TAIPEI495

UNCLAS SECTION 01 OF 03 TAIPEI 000495 
 
SIPDIS 
 
STATE FOR EAP/RSP/TC, EB/TPP/MTA/IPC, PLEASE PASS FOR 
AIT/W, USTR 
 
E.O. 12958: N/A 
TAGS: TW, IPR 
SUBJECT: IPR LITIGATION IN TAIWAN: CONFERENCE HIGHLIGHTS 
AREAS FOR CHANGE 
 
1.  (U) Summary: A three-day seminar for Judicial Yuan 
employees sponsored by the AIT Public Affairs Section brought 
a U.S. District Court Judge, U.S Department of Justice 
Prosecutor, and an experienced U.S. legal advisor to discuss 
U.S. practice in intellectual property cases and offer advice 
on ways to improve Taiwan's legal protection of IPR. 
Comments and questions by participating members of the Taiwan 
judiciary illuminated the differences between Taiwan's 
resolution of IPR disputes through criminal courts, and 
resolution of IPR cases through the civil justice system in 
the U.S.  Panelists emphasized the need for efficient and 
fair consideration of cases to provide the best possible 
protection for IPR.  The discussions highlighted the need for 
Taiwan's planned IPR Court to handle administrative, civil, 
and criminal cases if it is to serve as an effective legal 
venue for the protection of intellectual property rights. 
End summary. 
 
2.  (U) AIT's Public Affairs section hosted over 100 judges, 
attorneys, prosecutors, and legal scholars for a conference 
on U.S. IPR enforcement, litigation, and case management at 
the Judicial Yuan's Institute for Judicial Professionals 
January 26-28 2005.  Speakers included Steven Mayo, Director 
of the Institute for Study and Development of Legal Systems 
(ISDLS), Judge Jeremy Fogel, U.S. District Court, Northern 
California, and Chris Sonderby, Director of the Computer 
Hacking and IP (CHIP) Unit, U.S. Department of Justice, San 
Jose.  The purpose of the conference was to demonstrate how 
U.S. experts deal with IPR cases and offer suggestions for 
reform to Taiwan's judiciary as it aims to improve its 
ability to handle IPR disputes. Topics addressed include 
elements of successful civil and criminal IPR enforcement, 
strategies for reducing case loads through effective 
alternative dispute resolution (ADR) while still providing 
strong protection for IPR, and techniques for shortening the 
length of time required to resolve an IPR dispute through 
effective case management. 
 
Defining successful IPR enforcement 
----------------------------------- 
 
3.  (U) Judge Fogel opened the conference with an overview of 
the U.S. approach to resolving IPR cases, pointing out that 
IPR cases are usually handled in civil courts, rather than 
criminal courts as in Taiwan.  Fogel identified the key 
elements of successful civil enforcement of IPR, including 
quick access to the courts, provisional remedies including 
civil injunctions, an educated judiciary, technical 
expertise, enforcement of judgments, a quick appeals process, 
efficient case management, and an appropriate discovery 
process.  He further explained that effective criminal 
prosecution requires technical training for prosecutors and 
judges, appropriate and consistent penalties, pre-trial case 
management, and victim assistance.  Fogel stressed that 
whether applying a civil or criminal approach, the goal 
should be effective and timely resolution of cases, and 
enforcement of judgments.  To achieve these goals, Fogel 
argued that courts must devote their capital and human 
resources to the IPR cases that pose the greatest threats to 
the economy and/or public welfare, while resolving smaller 
disputes through alternative mechanisms. 
 
4.  (U) Prosecutor Chris Sonderby cited examples from the San 
Jose CHIP Unit to illustrate ways in which the local high 
tech industry, judges, prosecutors, victims, and 
investigators cooperate to reduce the time needed to bring 
IPR and computer hacking cases to resolution.  Sonderby 
explained that the CHIP unit works closely with Silicon 
Valley companies, meeting regularly to discuss recent IPR and 
computer related criminal activity.  These discussions have 
facilitated an understanding with the private sector of the 
types of cases the CHIP unit is able to prosecute.  Sonderby 
stated that CHIP Unit prosecutors also improve efficiency by 
collaborating with investigators and victims early in the 
investigation process to anticipate evidentiary problems and 
build better cases.  He echoed Fogel's views, explaining that 
CHIP prosecutors devote their time to prosecuting the most 
egregious IP and computer crimes.  Sonderby explained that in 
the U.S. by bringing only major crimes to trial, judges' time 
is spent on cases that will result in more severe sentences 
and greater media attention. Such cases, he explained, are 
likely to serve as examples to society and have a greater 
deterrent effect on IPR and computer crime.  He stated that 
in the long run, "it is not the amount of prosecution, but 
the rate of successful prosecution" that will have the 
greatest impact on society.  In contrast to the Taiwan 
system, where virtually every IP related case is brought in 
the criminal court, less egregious cases in the U.S. are 
typically brought as civil suits and most often settled 
before they reach a hearing. 
 
 
Participant reactions 
---------------------- 
 
5.  (U) Participants in the conference ranged from recently 
appointed judges to senior members of Taiwan's judiciary. 
Their questions focused heavily on procedural issues. 
Several judges inquired about tutorials and training held for 
judges handling cases that involve unfamiliar technology. 
Others asked about how the courts attract good mediators and 
neutral evaluators to handle Alternative Dispute Resolution 
(ADR).  Additional questions addressed concerns about 
enforcement of civil settlements, the civil appeals process, 
differences between state and federal procedures, and the 
standards for determining which IPR cases will be prosecuted. 
 
 
6.  (U) When asked by the ISDLS team about Taiwan's rationale 
for handling IPR cases through the criminal justice system, 
participants shared a variety of opinions.  One judge 
commented that in Taiwan, IPR cases are best resolved through 
criminal prosecution for two reasons. First, he stated that 
it is the most effective way for judges to collect the 
evidence needed to resolve the case.  In the absence of 
criminal charges, he explained, it is much more difficult to 
collect the evidence required to present a strong case. 
Second, he argued that there is no incentive for prosecutors 
to reduce case loads for judges.  Another senior judge agreed 
that prosecutors need to focus their efforts on major IPR 
infringements, expending less effort on smaller cases. 
 
7.  (U) On the other hand, the same judge also noted that by 
resolving IPR violations through the criminal, rather than 
civil, system, Taiwan is demonstrating the seriousness of its 
commitment to IPR enforcement.  In fact, by trying these 
cases in the criminal system, he argued, Taiwan has an even 
stronger enforcement regime than that of the U.S.  He stated 
that Taiwan is very concerned about its Special 301 status 
and argued that by prosecuting all IPR violators in criminal 
courts, Taiwan has shown that it will not tolerate IPR 
infringement. The judge further explained that a decision by 
the Judicial Yuan to handle IPR cases through the civil 
justice system or ADR may be unpopular in Taiwan, and worse 
yet, it could have a negative effect on foreign perception of 
Taiwan's IPR environment.  A senior prosecutor agreed, noting 
that the U.S. would likely reconsider its recent decision to 
remove Taiwan from the Special 301 Priority Watch List if 
fewer cases were being tried in the criminal courts. 
 
Comment 
------- 
 
8.  (U) Over the past two years, Taiwan has markedly improved 
its ability to protect IPR.  Additional enforcement task 
forces and tougher laws have allowed Taiwan to slip off 
USTR's Special 301 Priority Watch List.  However, the 
judicial process remains a weakness in Taiwan's IPR 
protection system.  The lack of credible civil or 
administrative proceedings means that virtually every case 
goes through the criminal courts.  Judges and prosecutors 
must devote limited time and resources to trying cases that 
would be fairly settled through alternative means in the U.S. 
 Although Taiwan judges argue that handling IPR cases through 
criminal courts demonstrates Taiwan's commitment to IPR 
protection, the current approach ensures neither timely 
resolution of cases nor effective enforcement of judgments. 
The large number of criminal IPR cases, many of which involve 
relatively small levels of infringement, place a tremendous 
burden on an already overworked judiciary and do nothing to 
compensate rightsholders.  Despite newly adopted minimum 
sentencing requirements, Taiwan's criminal sentences for 
minor IPR infringements are a questionable deterrent. 
Companies that have lost revenue or whose reputations have 
been damaged due to IPR infringements, must subsequently file 
an expensive civil suit in order to receive damages 
compensation. In these types of cases, the civil suit is 
usually resolved only months or years after the initial 
criminal judgment, and in many cases, the civil judgment is 
not properly enforced.  Such inefficacies have reduced the 
international business community's confidence in the civil 
courts' ability to successfully enforce IPR in Taiwan. 
 
9.  (U) Taiwan's Judicial Yuan is currently developing plans 
to establish a special IP court.  This presents a unique 
opportunity for Taiwan to develop a more effective framework 
for IPR enforcement.  The appointment of judges with 
appropriate training in IPR law and current technology will 
lend credibility to the court's decisions.  Judges with 
experience in IPR will be better equipped to resolve cases in 
an efficient and fair manner.  Such benefits will not be 
realized, however, unless Taiwan adopts measures to allow 
some smaller IPR cases to be fairly handled outside the 
courtroom.  Taiwan legal experts are currently debating 
whether this new court will hear just administrative and 
civil cases, or whether criminal IPR cases will also be 
decided by the court.  To be effective in the Taiwan legal 
environment, an IP court must be capable of handling all 
three types of cases with minimal delays between criminal and 
civil trials.  Combining all types of cases in one court 
could improve the administration and enforcement of 
non-criminal judgments and might lead to credible 
alternatives for plaintiffs who are now forced to seek 
redress in the criminal courts.  In addition, Taiwan's IP 
court must be prepared to allocate sufficient judicial 
resources to the cases that have the greatest impact on 
Taiwan's larger IP environment.  The potential for mediation, 
arbitration, pre-trial conferences and other forms of ADR to 
improve Taiwan's ability to mete out punishment to smaller 
violators should not be dismissed.  AIT plans to play a role 
in facilitating training for Taiwan's judiciary as plans for 
the IP court become more concrete.  Participants in this 
conference appeared eager to part with the burden of criminal 
trials for minor IPR infringements.  Whether prosecutors and 
members of the IT industry are willing to accept this new 
approach remains to be seen. 
PAAL