Evidence Preservation and Investigation Order Overcome the Difficulty of Providing Evidences
How Does a Job Ad Become an Evidence for Rights Protection?
Shanghai Intellectual Property Court Cracks "Three Difficulties" of Intellectual Property Protection Observation I
August 24, 2018 Jiefang Daily 01: Highlights
Editor's note: the protection of IPR is an important indicator for evaluating the business climate. In many intellectual property lawsuits, the obligee faces three problems: "the difficulty of providing evidence", "little compensation" for infringement and "long period" of trial. As one of the first intellectual property courts, over the past three years, Shanghai Intellectual Property Court has established a professional trial mechanism that complies with the characteristics of the trial of IP cases. Recently, our journalist visited Shanghai Intellectual Property Court and closely observed how it cracked the "three difficulties".
Journalist Wang Xianyue
One company placed a job ad on the internet in order to recruit several technicians who were skilled in using a certain software. It seemed to be a common job ad, but Dassault, the software developer, sensed something fishy: the number of people to be recruited exceeded that of copyrighted software purchased by the company.
Suspecting of infringement, Dassault decided to file a lawsuit to safeguard its rights but encountered a problem-it did not have any evidence on hand other than the job ad.
Evidence preservation reduces the difficulty of providing evidence
The difficulty of providing evidence is considered as the first "formidable obstacle" on the way of safeguarding rights by many insiders. It ultimately comes down to the fact that many evidences of infringement cannot be directly obtained.
Ling Zongliang, a judge of Shanghai Intellectual Property Court told the journalist that, in intellectual property infringement suits, the plaintiff may be required to provide many evidences to prove the alleged infringement, for example, to prove that the defendant installed pirated software on computers, "it is extremely difficult for the plaintiff to do so, because the pirated software are usually installed on the defendant’s office computer but it is very hard for the plaintiff to enter the office of the defendant and obtain evidences".
Shanghai Intellectual Property Court has been aware of the "difficulty" of providing evidence. In case the obligee applies for pre-trial evidence preservation according to laws and the court believes the respondent is very likely to have committed an infringement based on the preliminary evidence submitted by the applicant, the court will make a ruling on evidence preservation in a timely manner, implement the pre-trial evidence preservation and preserve related evidence. The obligee then may file a lawsuit based on the evidence preserved by the court.
This is undoubtedly great news for the obligee. "Previously, in order to safeguard our rights, we even employed third-party research companies to obtain evidence. It is both costly and risky," said a manager of Dassault. Dassault applied to Shanghai Intellectual Property Court for pre-trial evidence preservation by submitting the job ad as evidence, requesting the court to preserve the information related to the use of the involved software on the computers and other devices of the respondent. Upon investigation, the court quickly accepted the application and implemented the evidence preservation.
The journalist once followed judges to the site. The respondent provided a contract to prove that its parent company purchased several copyrighted software. Did the company only use those copies of software?
The judge found something weird about the seating plan on a desk. Before then, the company insisted that only the "L-shaped" area belonged to the company and the remaining areas was rented to other companies. However, on the seating plan, the remaining areas were marked as different departments. "You see, the "L-shaped" area belongs to the customer service department and the sales department which do not need to use the software, naturally we cannot find anything.”
Confronted with the questioning, the head of the company at first denied it but finally admitted that the whole office area covering nearly 1000 square meters all belonged to the same parent company. Upon investigation of the whole area, it turned out that the number of infringing software installed on computers exceeded that of copyrighted software purchased by the company.
According to the statistics, since it was established three years ago, Shanghai Intellectual Property Court has ruled on 638 various applications for preservation, laying a solid foundation for highly effective trial and resolution of disputes.
The investigation order gives the plaintiff more confidence in the obtaining of evidence.
For the trial of intellectual property cases, the court will judge how many profits the infringer gets from the infringement based on relevant evidence, and take it as an important basis on which the court may determine the amount of compensation.
"In intellectual property cases, the evidences of profits that the infringer gains from the infringement often are held by the defendant or a third party and are not accessible to the plaintiff. In judicial practice, we usually implement the investigation order system according to the application of the plaintiff and the specific circumstance of the cases, thus to ease the obligee’s burden of collecting evidence," said the judge Lu Fengyu.
In a case brought by Philips concerning infringement upon design patent, the court issued an investigation order to the attorney of the plaintiff according to laws, enabling the plaintiff to obtain the sales record of the defendant from Taobao and provide relevant evidence. Then the court investigated the sales of the alleged infringing product, rate of profit and relevant facts and found that the profits gained by the defendant from infringement exceeded the compensation amount claimed by the plaintiff. In the end, the court judged that the obligee shall pay the compensation amount in full.
In addition to the investigation order, the court sometimes would take the initiative to exercise their rights to investigate evidence. "We would do this in case relevant evidences are held by government bodies and the plaintiff is unable to obtain access to relevant materials objectively," said the judge Chen Yaoyao. She told about a case involving infringement upon patent for invention. In this case, Shanghai Intellectual Property Court exercised its rights to obtain the invoice the defendant issued for the infringing product from the tax bureau of a district of Ningbo, Zhejiang, in order to find out about the sales volume of the defendant.
In judicial practice, some infringer may intentionally hide information regarding its sales and production, causing difficulties in trial of cases. Therefore, during the trial, Shanghai Intellectual Property Court implements the good faith litigation and notification system and properly strengthens the litigants' obligation of truthfulness and the obligation of providing assistance, to encourage the parties concerned to actively provide evidence and provide real evidence. For those who file a lawsuit in violation of the principle of good faith, the court would impose sanctions and make an adverse ruling against them. In the case concerning the infringement upon patent for invention brought by Nanjing Ecoway Energy Technology Co., Ltd., the court made it clear to the defendant according to laws that it was obliged to provide account books to help determine the scope of infringement and the profits gained from infringement but the defendant refused to provide the same. Finally, the court supported the plaintiff’s claim for compensation based on the claims of and the evidence submitted by the plaintiff, and the defendant could do nothing but suffer the consequence.
