China IP Problem? Just Dial Up President Obama. Yeah, That’s The Ticket.

I just recieved the following e-mail, which I quote in its entirety:

Legal remedies now abound for companies victimized by Chinese counterfeit stores

China, widely considered the world capital of counterfeit and knock-off consumer goods, has created a buzz in recent weeks with reports that entire U.S. stores, including the iconic Apple store, Ikea, and Dairy Queen, are now being counterfeited with startling accuracy. While much has been made of this phenomenon, very little has been written about the legal remedies that U.S. companies may have against the Chinese infringers that may be damaging their brands. Mark Zolno, chair of the Customs and International Trade Practice at Katten Muchin Rosenman LLP in Chicago, notes that while at one time, partnering with an IP law firm in China to file suit against the infringer was an exercise in futility, in the last few years, Chinese courts have begin enforcing domestic IP sanctions against Chinese nationals.

“In addition to seeking remedies in Chinese courts,such conduct also violates the WTO agreement and China is a WTO member,” Mr. Zolno says. This would allow a U.S. copyright or trademark holder to file a complaint with the U.S. Trade Representative’s office under section 301 of the Trade Act. The USTR would contact the Chinese government and press it to take action the Chinese infringer to cease such activities. If the Chinese government refused to act in response to the USTR’s complaint, sanctions against Chinese exports to the U.S. could be imposed, such as additional duties or quotas on select Chinese products.  The additional duties or quantitative restrictions would be enforced by U.S. Customs and Border Protection.

Mr. Zolno is available for comment on the current counterfeiting situation in China and legal remedies available to U.S. companies. Please let me know if you would like to speak with him.

Best,
Jason

Jason Milch
Vice President, Public Reputation Services, Jaffe PR
808 Woodbine Lane, Northbrook, IL 60062

jmilch@jaffepr.com
Direct: 312-379-9406
eFax: 267-545-5679
Twitter: twitter.com/jasonmilch

I responded to Mr. Milch by asking that he remove my name from his email list and noting that the email was “deceptive bull—t.” 

It is. 

It may be great in theory, but come on.

How many times has what this email makes out to be easy ever happened? I mean really.

If your store is being copied in China, do you really think it makes economic sense for you to go to the WTO about it? Do you really think that your doing so is going to lead to the Chinese government taking prompt action against the store? Do you really think that the USTR is going to take up a cudgel on your behalf over a routine trademark or copyright infringement in China?

This email is not only unrealistic, it is either overly vague or just plain wrong on the law.

Someone with a U.S. trademark generally has no rights to that trademark in China. In other words, if I own the trademark for Brand X on water bottles in the United States and someone in China starts calling their water bottles “Brand X,” there is no law to stop that company from selling Brand X water bottles in China unless I registered “Brand X” in China or Brand X for water bottles is a well-known mark. If I were to go to my U.S. Trade Representative on this, he or she would no doubt tell me to work within the laws to protect my trademark. The odds of the U.S. government using my complaint to start a trade war are about the same of Troy McClure becoming President of the United States tomorrow.

In other words, it just ain’t gonna happen.

Wikipedia does a nice job setting out the way things really are under Section Mr. Zolno’s beloved Section 301:

Section 301 authorizes the President to take all appropriate action, including retaliation, to obtain the removal of any act, policy, or practice of a foreign government that violates an international trade agreement or is unjustified, unreasonable, or discriminatory, and that burdens or restricts U.S. commerce.  The law does not require that the U.S. government wait until it receives authorization from the World Trade Organization (WTO) to take enforcement actions, but the U.S. has committed itself to pursuing the resolution of disputes under WTO agreements through the WTO dispute settlement mechanism, which has its own timetable.

We typically handle our China IP theft matters by sending out cease and desist letters and then suing if those do not work. From now on I think I’ll just call President Obama and hand them over to him. Yeah right. That’s the ticket.

Oh, and last time I checked, Ikea was Swedish, not American, but hey, if US laws are going to rule the world, we might as well just take over all the big stores as well.

I give Jason Milch a Zilch and Mark Zolno a NoGo.

What do you think?