UNDERSTANDING BETWEEN THE
COORDINATION COUNCIL FOR NORTH AMERICAN AFFAIRS
AND THE AMERICAN INSTITUTE IN TAIWAN
The Coordination Council for North American
Affairs (CCNAA) and the American Institute in Taiwan (AIT) in order to
promote extensive, close and friendly commercial, cultural, and other
relations and desiring to facilitate the expansion of commerce on a
non-discriminatory basis, have established this Understanding to
ensure the adequate and effective protection of intellectual property
rights in the territory represented by CCNAA without impairing any
benefits or protection enjoyed by virtue of any prior agreements or
other arrangements.
Article 1
The authorities represented by CCNAA prepared on
April 15, 1992, an Action Plan, specifying in it various actions and
measures for strengthening the protection of intellectual property
rights. The authorities represented by CCNAA hereby affirm and
undertake to implement fully the following provisions of the Action
Plan, as amplified and clarified by this Understanding, and which are
incorporated by reference into this Understanding;
Sections V.J.(ii)(B); V.I.(iii); V.2.(i);
V.2.(iii);
V.2.(iv); V.2.(Vi)(B),(C) and (D); V.2;(viii); V.3.(i).;
V.3.(ii); V.3.(iii)(A)(B) and (D); V.3.(iv); V.3.(v);
V.4.(i); V.4.(ii); V.4.(iii) and V.4.(iv).
Article 2
1. The authorities represented by CCNAA agree to
undertake the following further commitments and to improve the
protection and enforcement of intellectual property rights in their
territory.
2. The authorities represented by CCNAA will
promptly promulgate the new Copyright Law so that it will enter into
force no later than thirty (30) days after its passage by the
Legislature Yuan (LY) and issue implementing rules for Article 5 of
the Copyright Law within thirty (30) days after the Law is effective.
All other implementing rules for the Copyright Law except for those
relating to Organization Rules for Copyright Intermediary Bodies and
minimum compensation will be issued with ninety (90) days after the
Copyright Law is effective. The implementing rules for the Copyright
Law shall not degogate from the provisions of the Bilateral Copyright
Agreement Between CCNAA and AIT.
3. The authorities represented by CCNAA commit
to use best efforts to work with the LY for the passage of the
AIT-CCNAA Bilateral Copyright Agreement as early as possible, but not
later than the LY session ending January 31, 1993. CCNAA will sign the
Agreement immediately upon its approval by the LY.
4. a. The authorities represented by AIT take
note of the passage of the new Copyright Law by the LY, but have
expressed concerns about several Articles. The authorities represented
by CCNA.A take note of these concerns and agree to consult with the
authorities represented by AIT with a view to determining whether
further measures are necessary and if so, what measures should be
taken to resolve such concerns.
b. The authorities represented by AIT are also
concerned about other Articles, including, for example, Articles 4, 5,
17, 21, 36, 51, 74, 75, 82, 88, and 109, which, in the view of the
authorities represented by AIT, may raise questions about the
effectiveness of protection provided under the new Copyright Law. The
authorities represented by CCNAA agree to consult with the authorities
represented by AIT about such concerns and to clarify, as may be
necessary, these Articles through implementing rules or letters of
interpretation for the Copyright Law.
5. a. The authorities represented by CCNAA
commit to use best efforts to work with the LY for the passage of the
Cable TV Law, as early as possible, but not later than by the end of
the LY session ending January 31, 1993. The authorities represented by
CCNAA take note of the following amendments to the Cable TV Law
proposed by persons signing a petition as "Motion Picture
Business People in Taiwan":
i. Amending Article 46 to provide the basis for
punishment of violators under the Cable TV Law;
ii. Amending Article 54 to provide for the
award of damages against infringers under this law;
iii. Adding a new Article 61-1 to make
violation of Article 46 a public offense punishable by a sentence of
at least 6 months, a fine not to exceed NT$ 500 thousand, and
suspension of the license to broadcast; and
iv. Amending Article 65 to criminalize the
illegal operation of a cable TV system with a sentence of not less
than 6 months nor more than 5 years, and a fine of no less than NT$
300 thousand nor more than NT$ one million.
Should any of these amendment be proposed in
the Legislature Yuan, the GIO's representative, upon enquiries from
the lawmakers, would make a statement to the effect that the GIO would
respect the lawmakers' view and their decision. In addition, GIO will
use its best efforts, in appropriate circumstances, to support such
amendments.
b. The EY will coordinate with the LY for a
clause to the following effect to be added to the bill on the Cable TV
Law:
"When a cable TV station has in a period
of twelve (12) consecutive months committed three (3) separate
copyright infringements, the license to operate the cable TV station
shall be revoked when the convictions in all three (3) infringement
cases become final."
6. With regard to cable TV systems:
a. The GIO will immediately and systematically
raid unlicensed cable TV systems and will seize all equipment from
such systems, including cables, video recorders, boosters,
transformers, satellite receivers and frequency mixers. GIO will
continue these raids following passage of the Cable TV Law and will
seek imposition of the maximum penalties under the law for unlicensed
cable TV systems.
b. The GIO will file complaints with the
Prosecutor's office regarding cable TV system operators or channel
operators which GIO has reason to suspect of infringing copyright as
part of their usual business for prosecution under Article 94 of the
Copyright Law and the Criminal Procedure Code. No additional complaint
from the copyright owner whose work is allegedly infringed will be
required.
c. In response to copyright infringement
complaints, the police will aggressively and expeditiously investigate
the cable TV stations specified in the complaints, and will seize
infringing products and all equipment for use to commit an offense.
d. Prosecutors will immediately commence
criminal investigations under the law upon being presented with
evidence of criminal copyright infringement by cable TV stations and,
if the investigation confirms evidence of infringement, will
aggressively prosecute under the law all such cable systems and their
owners.
7. Upon passage by the LY, the Cable TV Law
shall take effect upon the lapse of three (3) days after its
promulgation. All cable TV operations shall thereupon be subject to
and regulated by the Cable TV Law. The GIO shall prepare and
promulgate implementing rules for the Law within three (3) months
after the Cable TV Law takes effect and the licensing process shall be
completed within twelve (12) months after the expiry of such 3-month
period.
8. The authorities represented by CCNAA will:
a. Submit amendments to the Patent and
Trademark Laws to ensure that these laws fully comply with the
standards and requirements established in the December 20, 1991 draft
text on Trade-Related Aspects of Intellectual Property (TRIPS text) to
the LY by December 31, 1992. The authorities represented by CCNAA
commit to use best efforts to work with the LY for the passage of the
amendments to the Patent and Trademark Laws as early as possible, but
not later than the LY session ending July 1993.
b. Include in the official legislature
explanatory notes to revised Patent Law, an explanation that the two
to five year experimental and testing extension period provided for in
Article 51 shall be understood to include experimental and testing
periods required for the purpose of obtaining marketing approval by
the competent authorities of the territory represented by CCNAA and/or
such other territories whose experiments and testing are accepted by
the competent authorities represented by CCNAA; and
c. Include amendments to the Patent Law so that
impartation of the patented product or the produat directly resulting
from the use of a patented process, in each situation authorized by
the right holder, will satisfy any requirement in the law to work a
patent in the territory represented by CCNAA.
9. The authorities represented by AIT and the
authorities represented by CCNAA agree to consult on administrative
protection for pharmaceuticals and agricultural chemicals no later
than August 31, 1992. CCNAA will examine seriously AIT's proposal to
provide such protection for products which:
a. were not subject to patent protection prior
to the revision of the Patent Law to extend such protection in the
territory represented by CCNAA;
b. are subject to patent protection in their
territory of origin; and
c. have not been marketed as of the effective
date of this Understanding in the territory represented by CCNAA.
10. The authorities represented by CCNAA will
ensure that the industrial design, semiconductor chip protection and
trade secret laws meet the standards and requirements of the TRIPS
text. The authorities represented by CCNAA commit to use best efforts
to work with the LY for the passage of the industrial design law, the
semiconductor chip protection law, and, if necessary, the trade secret
law, as early as possible, but not later than the LY session ending
July 1994.
11. The authorities represented by CCNAA will
ensure that, in implementing the provisions of the Action Plan
applicable to MTVS, the police will seize all equipment for use to
commit an offense, including video recorders and televisions, in
response to copyright infringement complaints. In addition, GIO will
cancel the operating license of any MTV which is found by GIO for the
third time in a twelve-month period to be in possession of
audio-visual works not authorized for public performance.
12. Effective immediately, when implementing the
provisions of the Action Plan in respect of licensing the export of
Compact Discs (CDs):
a. Before the issuance of the "Written
Consent to Export", the GIO shall require production for GIO's
review either the copyright owner's authorization or IFPI's
certification that the applicant is authorized to export the
copyrighted work. In the event that IFPI has not given such
certification, the GIO shall insist on (1) the production of the
licensing agreement substantiating the authority to export the
copyrighted work, or (2) confirmation of the authorization from the
copyright owner, or (3) production of other pertinent documentation
satisfactory to GIO.
b. If GIO has any doubt regarding the validity
of the documentation submitted by an applicant, the GIO shall notify
the IFPI and inquire whether there is any further information for GIO
to consider in determining whether to grant the "Written Consent
to Export". If the GIO determines that the export-applicant has
given false information or forged documentation, the GIO shall refer
the case to the prosecutor for appropriate action.
c. The Public Prosecutor shall promptly
investigate for prosecution under the law individuals (including
owners and other persons responsible under the law) who have either
submitted fraudulent documentation (including not properly identifying
a shipment of CDs as CDs), or attempted to export CDs without having
obtained a proper license.
d. Customs shall:
i. Check 30 to 50 percent of all exports of CDs to any destination to
determine whether the CDs match the description in the export license
and the "Written Consent to Export" issued by the GIO.
ii. Check all exports to any destination from
companies known to be or to hae been engaged in the unauthorized
reproduction or export of CDs, even if such shipment are not labeled
as CDs, in order to avoid circumvention of the export licensing
system. If, for a period of twelve (12) months, such companies have
not been found by the relevant authorities to have engaged in the
unauthorized reproduction or export of CDs, then the exports shall be
subject to customs inspection procedures provided in the preceding
subparagraph d.i. upon the expiry of such twelve-month period.
13. In implementing the export licensing systems
for computer sof tware programs:
a. BOFT shall:
i. By public announcement invite copyright owners or their designees
to deposit with the BOFT that information regarding a copyrighted
computer software program which permits inspection of the computer
software programs prior to exportation.
ii. Establish a computer data base for the
storage of information submitted by a copyright owner or his designee
concerning copyrighted computer software programs. When the
information is provided, the data base shall maintain a list of
authorized licensees and manufacturers of copyrighted works as made
available by the copyright owner or his designee. The BOFT examiners
shall check this data base before an export permit is issued and BCIQ
inspectors shall check this data base before pre-shipment inspection
is completed.
iii. Promptly notify the copyright owner or his
designee if there is any doubt as to whether an applicant has the
authorization to export the product stated in his application.
iv. Effective immediately, begin examining the
export permit applications for computer software programs to insure
that the number, type, and other specifications of packaged computer
software programs stated in the export license application match the
information on the purchase order or.other documents required for
exportation.
v. Issue export permits for computer software :
programs installed, residing, or incorporated in semiconductor chips
which are assembled onto printed circuit boards intended for
computers, printers, or video games by November 1, 1992.
vi. Issue export permits for computer software
programs installed, residing, or incorporated in video games by
November 1, 1992.
vii. Issue export permits for computer software
programs installed, residing, or incorporated in a computer or printer
by December 1, 1992.
viii. Issue export permits for computer
software programs installed, residing, or incorporated in
semiconductor chips (which are neither assembled onto printed circuit
boards nor assembled in a computer, printer or video game) but are
intended for computers, printers, or video games or printed circuit
boards for such items, by January 1, 1993.
ix. Issue export permits for computer software
programs installed, residing, or incorporated in semiconductor chips
(assembled or unassembled) intended for devices not specified above as
warranted by discovery of a material volume of infringement in these
devices.
x. Refer applications to the public prosecutor
for investigation and appropriate legal action if fraud is suspected.
b. BCIQ shall:
i. Establish methods and criteria for
conducting pre-exportation computer software program inspections.
Pre-shipment inspection shall be conducted in accordance with the
Commodity Inspection Law.
ii. Have acquired sufficient equipment to
conduct inspections required under this paragraph and have trained
sufficient personnel for the task of pre-export inspection and
examination (by way of comparison under paragraph b.iii.) of
copyrighted computer software programs by September 1, 1992.
iii. Inspect, by comparing computer software
programs requiring export licences deposited in the computer data
base, provided by the owner or his designee, to determine if there is
infringement of :
a. computer software programs installed,
residing, or incorporated in semiconductor chips which are assembled
onto printed circuit boards intended for computer, printers or video
games by November 1, 1992.
b. computer software programs installed
residing or incorporated in video games by November 1, 1992.
c. computer software programs installed,
residing, or incorporated in a computer or printer by December 1,
1992.
d. computer software programs installed
residing or incorporated in semiconductor chips (which are neithr
assembled onto printed circuit board nor assembled in a computer
printer or video game) but which are intended for computers, printers,
or video games or printed circuit boards for such items, by January 1,
1993.
e. computer software programs installed
residing, or incorporated in semiconductor chips (assembled or
unassembled) intended for devices not specified above as warranted by
discovery of a material volume of infringement in these devices.
iv. Prior to exportation BCIQ shall inspect at
random thirty to fifty (30-50) percent of percent of computer software
programs to ensure that the products that have been certified by BCIQ
as having passed the pre-exportation inspection have since not been
improperly handled.
c. Customs shall:
i. Effective immediately begin examing computer software programs to
insure that the number, type, and other specifications of packaged
computer software programs match the information on the export permit,
invoice, packing list or other documents required for exportation.
ii. Check a thirty to fifty (30-50) percent
random sample of all exports of software to any destination to
determine whether the software matches the description in the export
license and the export inspection certification issued by BCIQ.
iii. Check all exports to any destination from
companies known to be or to have been engaged in the unauthorized
reproduction or export of computer software programs, even if such
shipments are not-labelled as computer software programs, to avoid
circumvention of the export licensing system. If for a period of
twelve (12) months, such companies have not been found by the relevant
authorities to have engaged in the unauthorized reproduction or export
of any such product, then exports of such products shall be subject to
the customs inspection procedure provided in the preceding
subparagraph c.ii.
iv. Not permit the exportation of merchandise
suspected of infringing a copyright, unless the exporter presents to
customs information which eliminates the suspicion of infringement. If
right owners have obtained a final judgment of a court confirming the
infringement of copyright, custom shall confiscate such products, if
they are still within customs' custody.
d. The Public Prosecutor shall promptly
investigate for prosecution individuals (including owners and other
responsible persons under the law), who have either submitted
fraudulent documentation (including not properly identifying a
shipment of software as software), or attempted to export software
without having obtained a proper license.
14. The authorities represented by CCNAA commit
to obtain, under the law, effective criminal remedies sufficient to
deter infringement of intellectual& property rights in their
territory and to this end:
a. The Ministry of Justice has given directions
to the public prosecutors to the following effect:
i. When prosecuting an IPR infringer,
prosecutors should consider the adverse impact of counterfeiting
activities on the economy and international image of the territory
represented by CCNAA, and request a stiff penalty. If the crime
committed is of a serious nature, prosecutors should ask the court to
impose the heaviest penalty.
ii. In cases where the sentence is deemed by
the public prosecutor to be too lenient the public prosecutor shall
promptly consider appropriate appellate review of such sentence.
iii. When prosecuting an IPR infringer, the
public prosecutor shall take into consideration the undue profit
gained by the infringer, and ask the court for concurrent imposition
of a fine in addition to imprisonment, in accordance with Article 58
of the Penal Code.
iv. When an order is issued by a judge to
convert the jail sentence to a fine, the public prosecutor should, in
accordance with Article 41 of the Penal Code, closely scrutinize the
documentation of proof presented. Only when the physical, educational,
occupation, or family conditions of the offender will make the
execution of the jail term impossible should conversion to a fine be
granted.
v. When the police apply for a search warrant,
the public prosecutor shall act promptly to issue the warrant, once
all the legal requirements are met if the venue for conducting the
search falls within multiple jurisdictions, the original prosecutor
may request the prosecutor at the place where a search is to be
conducted to issue such a warrant; or, in case of emergency, he may
issue the search warrant himself to preserve evidence.
b. Pursuant to the authority of the Chief
Public Prosecutor of each District Prosecutor's Office to conduct
oversight of prosecutor's compliance with these directions, the
Ministry of Justice shall review compliance and implementation of
these directions on a quarterly basis and take appropriate
administrative action at year-end reviews.
c. The authorities represented by CCNAA will
issue further directions to public prosecutors stating that: i. the
public prosecutor will aggressively prosecute intellectual property
right infringement cases under the law; ii. when requesting that a
certain penalty be imposed, the public prosecutor shall consider all
aspects of damage to the owner of the intellectual property right,
including the level of economic harm and damage to the intellectual
property owner's reputation and request sentence under the law
commensurate with the serious- ness of the offense and adequate to
deter further infringements.
d. CCNAA agrees to provide quarterly statistics
on final decisions in IPR infringement cases detailing:
i. the past convictions of the defendant;
ii. the articles searched and seized;
iii. the sentence sought by the prosecutor;
iv. the facts of the offense as found by the
court in its final judgement;
v. the final judgement of the courts, including
the actual sentence imposed by the court; and
vi. whether a conversion to a fine was granted.
e. CCNAA agree to provide monthly statistics on
the overall level of enforcement of intellectual property rights in
the territory it represents. These statistics shall include:
i. the total number raids conducted;
ii. the number of searches and seizures of
infringing articles and other evidence;
iii. the number of arrests;
iv. the number of convictions obtained; and
v. actual sentences imposed including any
period of imprisonment and/ or fine.
15. The authorities represented by CCNAA commit
to use best efforts to work with the LY for passage of an amendment,
as early as cossible, but not later than the end of the LY session
ending January 1993, to raise the current level at which each day's
imprisonment may be converted to a fine. Under this amendment each
day's imprisonment shall be convertible to a fine of NT$ 300, NT$ 60
Article 3
1. AIT agrees that the authorities that it
represents will use their best efforts to cooperate in the
implementation of the export licensing system set forth in paragraph
13 of Article 2 of this Understanding. To accomplish this objective,
the authorities represented by AIT will establish a contact point in
the relevant agency to receive inquiries and to provide a response,
information or assistance subject to the limitations of U.S. law.
2. The authorities represented by AIT and the
authorities represented by CCNAA agree to consult on a quarterly basis
or at the request of either Party. Such consultations will cover,
inter alia:
a. the interpretation, implementation, or
operation of the Understanding; and
b. whether modification should be made to the
measures in the Understanding
i. to improve the protection and enforecement of
intellectual property rights; or
ii. to prevent such measures from becoming
barriers to legitimate trade, i.e., the licensing and inspection
system provided for in paragraph 13 of Article 2 having the effect of
imposing unjustifiable delays or barriers to the exports of authorized
products from the territory represented by CCNAA.
Article 4
In consideration of the foregoing commitments
and in the expectation that they will be fully implemented, the
authorities represented by AIT agree to revoke the identification of
the territory represented by CCNAA as a "priority foreign country"
under the "special 301" provisions of U.S. trade law and
terminate the investigation initiated pursuant to "special 301"
These actions will be effective as of the date of signature of this
Understanding.
Signed in Washington, D.C., this fifth day of
June, one thousand nine hundred ninety-two.
____________________
For the Coordination Council
for North American Affairs
Chief Negotiator
_______________________
For the American Institute
In Taiwan
Chief Negotiator