William Kirtley Discusses Intellectual Property Arbitration Law

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How to Resolve International Intellectual Property Disputes

Three Methods:

Resolving international intellectual property disputes is difficult. Foremost, intellectual property rights are “territorial,” meaning that they are granted by national governments.The United States government, for example, can give you trademark rights only for use in the United States. If someone in a foreign country copies your trademark, then you typically can’t sue unless you have registered your trademark in that country. Generally, you must register your intellectual property in every country where you want to stop violations. Furthermore, there is no “world court” where you can file a lawsuit. Instead, you need to get the defendant to consent to being sued in your home country, or you can file a lawsuit in the foreign country.


Sending a Cease and Desist Letter

  1. Identify the violation of your intellectual property rights.You can try to resolve the dispute by sending a letter to the violator and warning them to stop the violation. Someone can violate your intellectual property (IP) rights in a variety of ways. You should gather information about the violation before sitting down to draft your cease and desist letter.
    • For example, someone might be counterfeiting goods and using your trademark on them. Try to get samples of the counterfeit goods.
    • Alternately, someone could be selling bootleg copies of your music or literary creation. Get copies or print off the website pages where the copies are being sold.
    • Someone also might have taken your patent and used the specifications included in your patent application to manufacture the product. If so, get samples of the product.
  2. Format the cease and desist letter.You should format the letter like a regular business letter. Set the font to a readable size and style. Times New Roman 12-point works for most people.
    • Always remember to include the date on your letter.If you end up in court, you want to establish when the defendant had notice of the infringement.
  3. Identify yourself in the first paragraph.You can write, “I am writing on behalf of AmeriStyle Corporations, located in Raleigh, North Carolina. AmeriStyle provides specialty clothing for men and women as well as children.”
  4. Identify your intellectual property rights.Explain to the recipient that you have the IP rights.You should specifically mention if you have registered the intellectual property and where. Also include registration numbers.
    • For example, you could write, “I currently hold the trademark to the ‘AmeriStyle’ name as well as to our logos, copies of which I have attached. We have registered the trademarks in your country on August 31, 2008. Our registration numbers are…”
  5. Explain how the recipient is violating your IP rights.Tell the violator in as much detail as possible how he or she has violated your IP rights.Be sure to explain how you became aware of the violation.
    • For example, you could write, “Recently, I became aware of your use of the ‘AmeriStyle’ trademark. I received complaints from consumers in your country that they had bought goods which were substandard. However, we do not sell our goods in your country. When we reached out to the consumers, they forwarded samples of the goods. These goods are counterfeit and use our trademark in an unauthorized manner.”
  6. Include a request to cease all violations.Be clear, although you should avoid being rude. Make sure that you include a threat to bring a lawsuit if the person doesn’t stop using your intellectual property.
    • For example, you could write, “I request that you cease all continuing or future use of my trademarks. If you do not immediately cease, then I will instruct my lawyer to take appropriate legal action to protect my intellectual property rights. Any continued infringement from the date of receiving this letter will be considered willful.”
  7. Deliver the cease and desist letter.You will probably have to mail the letter to a foreign country. Try to use a mail service that provides for tracking or for a signed receipt. You will want some kind of evidence that the letter was actually delivered.
    • If you have the email address for the violator, then send the cease and desist letter as an email as well.

Resolving the Dispute outside of Court

  1. Consider negotiation.If you have been accused of violating someone’s IP rights, then you might want to try and negotiate a settlement. Alternately, if you are the IP rights holder, then you might want to settle the dispute as well. Settlement has many advantages:
    • You can avoid a trial. Lawsuits are lengthy and expensive. They are also stressful. You can avoid all of these problems if you settle.
    • You control the result. Negotiation is voluntary. At trial, a jury or judge will issue an award, which could be smaller than you hoped or much larger than you feared. With negotiation, you can come to a final resolution to the case that you can live with.
  2. Negotiate effectively.An international dispute has many challenges. For example, you might not be able to negotiate in person because it costs money to fly and get a hotel during the negotiations. Instead, you would have to negotiate over the phone or through letters. Regardless of the method of negotiation, remember the following:
    • Pay attention to cultural differences. Negotiators can approach the bargaining table with either a “win-win” or “win-lose” attitude. The former may be more open to reaching creative solutions that benefit both parties, whereas the latter might drive a hard bargain. According to research, most Japanese approach negotiation with a “win-win” attitude whereas most Spaniards approach negotiation with a “win-lose” attitude.
    • Walk away if the other side cannot meet your absolute minimum. You are not required to come to a settlement.
  3. Sign a settlement agreement.If you do reach an agreement, then each side should sign a settlement agreement. A settlement agreement is a contract between the two parties.
    • Make sure that the settlement agreement includes a “full waiver and release” of all claims. By signing this agreement, the person who owns the IP promises not to continue with any lawsuit or to file a lawsuit in the future based on the current dispute.
    • The settlement agreement should also include a dispute resolution provision. For example, either party might not follow its promises made in the settlement agreement. In this situation, you will need to go into arbitration or court to settle the dispute.
  4. Consider arbitration.Arbitration is like a trial, except evidence is presented to private individuals called “arbitrators” and not to judges. Arbitration is generally more flexible than lawsuits. For example, both parties can decide the rules of evidence, which will determine which kinds of evidence is admissible.
    • Arbitration is also generally cheaper and faster than a trial.
    • Parties must agree to arbitrate. Typically, they include arbitration clauses in their contracts or they sign a mutual agreement to arbitrate. You cannot force a party to arbitrate.
  5. File a Request for Arbitration.You can start an arbitration by filing a Request for Arbitration with an arbitration association. The World Intellectual Property Organization (WIPO), for example, provides arbitration services for international intellectual property disputes. To submit a Request for Arbitration, you should include the following information:
    • a request that your dispute be referred to arbitration under WIPO’s Arbitration Rules
    • the names and contact information for both parties and their attorneys
    • a copy of your agreement to arbitrate
    • a brief description of the circumstances that gave rise to the lawsuit, including a description of the rights and property involved
    • what relief you want the arbitration panel to give you
    • the number of arbitrators you want and their expected qualifications

Resolving the Dispute with a Lawsuit

  1. Check that your intellectual property has been registered.IP rights are primarily national.For example, if you registered your patent in the United States, then you have patent rights only in the United States, not other nations. The same is true of trademarks.
    • The situation is a little more complicated with copyright. Your country may have an agreement with another country to honor each other’s copyrights. In this situation, you might not need to register the copyright in the country where the infringement has happened. You should check with your nation’s intellectual property office.
    • Make sure that you have registered your IP in the country where the violation is occurring. If you need to register the IP before filing your lawsuit, you should contact the intellectual property office in the country where the violations are occurring. Alternately, you could contact your own country’s intellectual property office, which can inform you about ways of registering your intellectual property in multiple countries at one time.
  2. Hire a lawyer.You should probably hire a lawyer to represent you in the lawsuit. A lawyer is especially necessary if you need to sue someone in a foreign country. If you work for a large business, then the law firm you normally use could have offices in the country where the violator is located.
    • You can get a referral by contacting someone who has sued for intellectual property violations before and asking if they would recommend their lawyer. Also, you can get a referral by contacting your local or state bar association. Once you have a name, you can call and schedule a half hour consultation.
    • At your consultation, you should discuss whether suing is even worthwhile. The expense might be so great that a lawsuit is not feasible. In this situation, you simply have to suffer the loss.
  3. Determine where you can sue.A court doesn’t have power over everyone in the world. Instead, it only has power over a person in certain situations. For example, a person could consent to being sued in a court. Also, a court might have “jurisdiction” (power) over the defendant because the defendant lives in the state.
    • If a large multinational corporation infringes your IP rights, then you can probably sue in your home country. These corporations often have offices in your home country. Although the infringement might have happened in a different country, you could still sue in your home state because the court has power over a company doing business within its borders.
    • However, it is more likely that your IP is being infringed by an individual or small company with no presence in your home country. In this situation, you may not be able to sue in your home country because a court cannot assert jurisdiction over the person. Instead, you might have to sue in the infringer’s home country.
  4. File a complaint.You will start the lawsuit by filing a complaint. This document identifies you as the “plaintiff” (the person bringing the lawsuit) and it identifies the person infringing on your IP rights as the “defendant” (who is being sued). In your complaint, you also identify the violations of your IP rights and make a request for compensation.
    • Your lawyer should draft the complaint for you. Make sure that you receive a copy.
  5. Serve notice on the defendant.You can notify the defendant of the lawsuit by serving a copy of your complaint and a summons on the defendant. You can get the summons from the court clerk.
    • Each court has its own rules about proper service of process. Ask the court clerk about acceptable methods and make sure to follow them. If you use an improper method, then the defendant could get the case dismissed.
    • Generally, you can provide service by hand delivering the papers on the defendant. You cannot deliver them yourself; instead, you typically hire a private process server for a small fee.
  6. Read the defendant’s answer.The defendant can contest the lawsuit by filing an “answer.” In the answer, the defendant will respond to each allegation, by either admitting or denying it. The defendant can also raise counterclaims in the answer.
  7. Prepare for trial.A lawsuit for international intellectual property violations shouldn’t be much different than a lawsuit for domestic violations. In the United States, for example, the parties will answer questions under oath and exchange documents in a process called “discovery.” The purpose of discovery is to gather helpful information for your trial.
    • You will also have many pre-trial hearings, where you will tell the judge the status of the case and also try to come to agreement on as many facts as possible before trial.
    • Either side can also file motions. For example, the defendant might file a motion for “summary judgment.” In this motion, the defendant argues that there shouldn’t be a trial because there are no issues in dispute for a jury to resolve. Your lawyer will try to defeat this motion by pointing out facts that are in dispute.
  8. Attend trial.Your lawyer will handle the trial, so there isn’t much that you will have to do. You may have to testify. If so, then your lawyer can prepare you. The exact trial process might differ slightly depending on the country where you are bringing the lawsuit. In the United States, for example, an intellectual property trial will involve the following:
    • Jury selection. If you can have a jury, then you will select one on the first day of trial. Generally, the judge asks jurors questions and excludes jurors who may be biased. Lawyers are often given a certain number of “peremptory challenges,” which they can use to exclude any juror without giving a reason.
    • Opening statements. Each lawyer will give the jury a roadmap of what evidence they will present.
    • Presentation of evidence. The person bringing the lawsuit will go first. Evidence is usually presented in the form of witness testimony and documents. Each side is able to cross-examine the other side’s witnesses.
    • Closing arguments. During closing, the lawyers sum up the evidence, explaining how each piece fits and supports their position.
    • Delivery of the verdict.
  9. Enforce your judgment.Winning a lawsuit is only half the battle. The other half involves actually getting money out of the defendant. A court will not collect the money for you. Nevertheless, you have options for getting money out of the defendant.
    • For example, you might be able to put liens on the defendant’s property and possibly even foreclose on the property. You then can take the sales proceeds.

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Date: 13.12.2018, 11:57 / Views: 84551