Administrative enforcement of IP: Lessons of KORUS for RCEP

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Administrative enforcement of IP: Lessons of KORUS for RCEP

By Heesob Nam

Border Measures

KORUS grants a power to the customs authorities to suspend release of suspected counterfeit or pirated goods into free circulation when a right holder requests to do so with “adequate evidence”.[1] The suspension should be applied to “all points of entry to its territory” and remain applicable for at least one year.[2] While the border measures initiated upon the request of right holder control only importation, ex officio measures regulate three types of the flow of goods: importation; exportation; and in-transit shipment.[3]

Although from the language of Article 18.10:22 of KORUS it is unclear if the actions against the exportation or in-transit shipments are to be taken under the laws of the country of importation, its intention is to block international trade of suspected counterfeit or pirated goods by applying the law of countries taking the border measures. This would expand the economic interests of IP holders extraterritorially because they can exercise their rights even when goods are not infringing IPRs in the country of origin and destination. The seizure of Indian generic drugs by Dutch authorities in 2008 sparked this controversy.[4] IP rights are territorial and applicable law in private international laws is to be determined on the basis of strongest territorial link or connection to the legal issue to be decided.[5] This principle is ignored in KORUS.

The border measures of KORUS also force unequal treatment between the owners of IPRs and suspected goods. While IPR holders can request seizure of suspected goods by providing “a reasonable security or equivalent assurance”, Article 18.10:20 prohibits an importer from obtaining possession of suspected counterfeit or pirated goods in any case including when the importer posts a bond or other security.[6] While the KORUS pact was negotiated, the Korean laws applied the border measures only to goods that were suspected as infringing trademark and copyright, and permitted release of seized goods when the importer of goods requested with posting a bond or other security.

Unilateral Commitment for Combatting Book Piracy

KORUS contains an unprecedented administrative enforcement commitment targeting book piracy on university campus. In the second side letter of KORUS IPR Chapter,[7] the Korean government vows to police “book piracy on university campus”, and increases its efforts to combat illegal book printing activities pursuant to the Master Plan for IPRs of 2004.[8]

Under this unilateral commitments, Korea has to take specific actions no later than six months from the effective date of KOURS to: (1) implement policies promoting use of the legitimate materials by students, lecturers, bookstores, and photocopy shops on university campus; (2) enhance training activities on book piracy enforcement and raise the awareness among enforcement personnel; (3) reinforce enforcement activities with respect to underground book piracy operations; and (4) develop and pursue targeted public education campaign.

Combatting book piracy was one of the long wish lists of the US publishing industries. The American book publishers estimated loss of USD 39 million in 2000 due to the book piracy in Korea, a 56% increase from 1995,[9] and USTR elevated Korea to the Special 301 Priority Watch List from the Watch List in 2004.[10] Since then, IIPA has continuously complained that “massive illegal photocopying in and around university campuses and more complicated pirate offset print operations” were the chief problems facing book publishers in Korea. IIPA further requested, in March 2005, the Korean Minister of Education to encourage every university to devise action plans for reducing book piracy on campus.[11] However, the Ministry simply sent letters to universities and showed, according to IIPA, little interest since 2006, revealing no evidence of concrete implementation of the action plans or meaningful follow-up by the Ministry.[12] Therefore, IIPA views that the side letter of KORUS builds on the initiative in 2005 with the cooperation of the Ministry of Education.[13] However, given that the commitment in the side letter is purely unilateral, and book piracy was not the Korea-specific issues,[14] it would reasonable to see it as the outcome of package deal between the US and Korean negotiators.

Impact of Combatting Measures against Book Piracy

After the official signing of the KORUS pact in June 2007, Korean government dramatically reinforced its enforcement actions against book piracy. According to the leaked wire of the US Embassy to Korea, the Korean government “confiscated 17,811 pirated books in 2008, up from 10,068 in 2007” and deleted 12.16 million printed publications on-line, up from 3.23 million in 2007”.[15] Further, the Copyright Protection Center (at that time, one of the governmental organizations), the police and prosecutors engaged in a special enforcement period for 100 days between April and June 2008, confiscating 172,081 items, four times as many illegal DVDs, tapes, CDs, books and pieces of reproduction equipment as were confiscated during the same period in 2007.[16] From then on, official raid on photocopying and printing becomes annual events in and around university campuses, especially when new school semesters begin in March and September.

There are at least two problems with the side letter against book piracy: shifting public resources for the benefits of private sectors; and foreclosing the space for students’ fair use.

The problem of resource allocation affects the recognition and in turn behaviors of students who have legitimate rights to copy educational materials for either private studying or educational purposes. According to Article 25(3) of the Korean Copyright Act, which was effective during the KORUS negotiation,[17] those who receive an education at an educational institution may reproduce or make copyright works available to the public provided that it is recognized as necessary for the purpose of education.[18] The purpose of education is interpreted as broadly as to encompass after-school courses such as volunteer activities and club activities that are administered by school, supplemental curriculum and preparing exam, not only the official class curriculum. Further, the law permits students to reproduce whole work when it is inevitable in view of the character of work, the purpose and form of the use.[19]

Contrasting the use of copyright works by educational institutions themselves, the student’s use is NOT subject to a remuneration scheme. In addition, Article 30 of the Act exempts a private copying from copyright infringement when the use of work is for personal non-for-profit purpose and takes place in a limited space like the home. Therefore, the reprographic copying for private study or for the purpose of receiving education made by students themselves or by someone else on their behalf was, and still is, legitimate. The strong enforcement on book piracy not only forces students feel guilty even when their copying is legitimate, but also actually restricts the fair use of students for educational purposes.

[1] The requirement of “adequate evidence” is less strict than “prima facie evidence” of Article 51 of TRIPS.

[2] Article 18.10:19.

[3] Article 18.10:22. The ex officio measures refer to an action that “does not require a formal complaint from a private party or right holder” (footnote 31 of the Article), and for the purpose of the ex officio actions the in-transit merchandise means “goods under “Customs transit” and goods “transhipped” as defined in the International Convention on the Simplification and Harmonization of Customs Procedures (Kyoto Convention)” (footnote 31 of the Article). Note that not all the US FTAs mandate the ex officio measures against in-transit shipments: the US-Australia FTA §17.11:22 (ex officio with respect to imported merchandise); the US-Singapore FTA §16.9:19 (“goods imported into or exported out of a party’s territory”).

[4] The Dutch authorities seized the generic medicines produced in India destined to Brazil and other countries pursuant to the European Communities Council Regulation No. 1383/2003 (EC Regulation No 1383/2003) and applying the law of EC transit country. The Dutch court also found the in-transit product as infringing patents of Netherland on the grounds that the legal status of goods in transit is to be assessed as if they had been manufactured in the Netherlands (European Union and a Member State – Seizure of Generic Drugs in Transit, Request for Consultations by Brazil, WT/DS409/1, 19 May 2010, p. 3)

[5] Ruse-Khan, H. G. (2011). A trade agreement creating barriers to international trade?: ACTA border measures and goods in transit. American University International Law Review 26 no. 3 (2011): 645-726, p. 682.

[6] Comparing with ACTA Article 18 (A Party may, only in exceptional circumstances or pursuant to a judicial order, permit the defendant to obtain possession of suspect goods by posting a bond or other security). And, Article 53(2) of TRIPS permits for certain forms of alleged IP infringements, the owner/importer of the goods must have the option of posting a security in order to have the goods released (Ruse-Khan, 2011a, p. 676).

[7] Entitled by USTR “Promoting Protection and Effective Enforcement of Copyrighted Works”.

[8] The Master Plan for IPRs 2004 (original Korean title contained the term “IPRs Protection”) was prepared to deal with trade pressures from foreign countries on the arguable domestic IPRs infringements. The Plan was administered by the Prime Minister’s Office for pan-governmental actions for IPR enforcement, protection and public awareness.

[9] Choi, Y. (2003). Development of Copyright Protection in Korea: Its History, Inherent Limits, and Suggested Solutions. Brooklyn Journal of International Law 28(2), p. 665. However, it is still unknown how are reliable and objective the methodologies that the US copyright industries relied upon for the estimated loss. Later in 2013, the IIPA published methodologies to assess the impact of copyright piracy, but they included only three categories of copyright works: software (including business computer program and entertainment software); motion pictures; and records and music. See, Intellectual Property Alliance (IIPA) (2013) 2013 Special 301 Report on copyright protection and enforcement: Appendix B: Methodology.

[10] Korea was removed from the Watch List in 2009. It is interesting to note that when Korea was elevated to the Priority Watch List in 2004, Korean government’s efforts to combat piracy on university campuses was assessed as one of the positive steps and the USTR’s 2010 National Trade Estimate Report on Foreign Trade Barriers mentioned for Korea that “concerns remain with elevated levels of online piracy, corporate end-user software piracy, book piracy in universities, counterfeiting of consumer products, and a lack of coordination between Korean health and IPR authorities to prevent the issuance of marketing approvals for patent infringing products”.

[11] Intellectual Property Alliance (IIPA). (2006). 2006 Special 301 Report: South Korea. Retrieved from http://www.iipawebsite.com/pdf/IIPA_KoreaFTA_TPSCRequest_to_Testify_0306.pdf, p. 387.

[12] Intellectual Property Alliance (IIPA). (2009). 2009 Special 301 Report: South Korea, p. 293.

[13] Ibid.

[14] In the written submission of IIPA to USTR for the 2014 Special 301 Report, print piracy has been prevalent in many developing countries for several years, calling for aggressive actions by law enforcement authorities.

[15] Wikileaks Cablegate - US Embassy Seoul, 2009 Special 301 - Post Recommendation (16 March 2009).

[16] Ibid.

[17] Act No. 8101, amended on 28 December 2006, and effective on 29 June 2007.

[18] The making available exception is to ensure the legitimate use of students attending in online education.

[19] The student copying is also permitted in Japan (Article 35(1) of the Japanese Copyright Act as amended in 2003) and Australia in a limited range.