China Measures Affecting the Protection and Enforcement of Intellectual Property Rights

WT/DS362/R
Page vii

World Trade
Organization
WT/DS362/R
26 January 2009
(09-0240)
Original: English

china – measures affecting the protection and enforcement of intellectual property rights

Report of the Panel

WT/DS362/R
Page vii

TABLE OF CONTENTS

Page

I. INTRODUCTION 1

II. FACTUAL ASPECTS 1

A. Measures at Issue 1

1. Thresholds for criminal procedures and penalties 2

2. Disposal of goods confiscated by customs authorities that infringe intellectual property rights 2

3. Denial of copyright and related rights protection and enforcement to works that have not been authorized for publication or distribution within China 3

B. Procedural History 3

1. Translations 3

2. Request for factual information from the International Bureau of WIPO 4

III. PARTIES' REQUESTS FOR FINDINGS AND RECOMMENDATIONS 4

A. United States 4

B. China 5

IV. ARGUMENTS OF THE PARTIES 5

V. ARGUMENTS OF THE THIRD PARTIES 5

VI. INTERIM REVIEW 5

1. Copyright Law 5

2. Customs measures 6

3. Criminal thresholds 8

VII. findings 9

A. Copyright Law 9

1. Description of the measure at issue 9

2. Claim under Article 2(6) of the Berne Convention (1971), as incorporated by Article 9.1 of the TRIPS Agreement 9

3. Claim under Article 5(1) of the Berne Convention (1971), as incorporated by Article 9.1 of the TRIPS Agreement 11

(a) Main arguments of the parties 11

(b) Main arguments of third parties 13

(i) Construction of the measure at issue 14

(ii) Criteria for prohibited works 21

(iii) Procedure for determination that a work is prohibited for the purposes of Article 4(1) 23

(iv) Article 5(1) of the Berne Convention (1971), as incorporated by Article 9.1 of the TRIPS Agreement 27

(v) Article 17 of the Berne Convention (1971) as incorporated by Article 9.1 of the TRIPS Agreement 30

(vi) Procedural issue 33

4. Claim under Article 5(2) of the Berne Convention (1971), as incorporated by Article 9.1 of the TRIPS Agreement 34

(a) Main arguments of the parties 34

(b) Main arguments of third parties 35

5. Submission regarding Article 14 of the TRIPS Agreement 35

(a) Description of relevant provisions of the Copyright Law 35

(b) Main arguments of the parties 36

(d) Consideration by the Panel 36

6. Claim under Article 41.1 of the TRIPS Agreement 36

(a) Main arguments of the parties 36

(b) Main arguments of third parties 37

7. Claims under Article 61 of the TRIPS Agreement 40

(a) Main arguments of the parties 40

(b) Main arguments of third parties 40

8. National treatment claims 40

(a) List of relevant measures at issue 40

(b) Arguments of the parties 41

9. Conclusions with respect to the Copyright Law 41

B. Customs Measures 42

1. Description of the measures at issue 42

2. Claim under Article 59 of the TRIPS Agreement 43

(a) Main arguments of the parties 43

(b) Main arguments of third parties 45

(i) Introduction 46

(ii) Border measures 46

(iii) "infringing goods" 48

(iv) "shall have the authority" 50

(v) "the principles set out in Article 46" 55

(vi) "outside the channels of commerce in such a manner as to avoid any harm caused to the right holder" 59

(vii) Donation to social welfare bodies 61

(viii) Sale to the right holder 69

(ix) Auction and authority to order the destruction of infringing goods 69

(x) Auction and "simple removal of the trademark unlawfully affixed" 75

3. Conclusions with respect to the Customs measures 81

C. Criminal Thresholds 82

1. Description of the measures at issue 82

(a) Introduction 82

(b) Trademark provisions 82

(i) Use of a counterfeit trademark 82

(ii) Selling counterfeit trademark commodities 83

(iii) Forgery of trademarks and sale of forged trademarks 84

(i) Criminal copyright infringement 85

(ii) Selling copyright-infringing reproductions 86

(d) Crimes of infringing intellectual property rights committed by a unit 87

2. Construction of the measures at issue 87

(a) Introduction 87

(b) Normative effect of the Judicial Interpretations 87

(d) Thresholds for conviction or aggravation 89

(e) General provisions on inchoate crimes 90

(f) General provisions on joint crimes 91

(g) Specific features of the thresholds for crimes of infringing intellectual property rights 92

(i) Profit-making purpose 92

(ii) Alternative thresholds 93

(iii) Cumulative calculation over time 93

(iv) Calculation of illegal business operation volume – goods 94

(v) Calculation of illegal business operation volume – price 95

(vi) Number of goods and prices 95

(vii) Residual thresholds 96

(viii) Administrative enforcement 96

(h) Conclusion regarding construction of the measures at issue 97

3. Claim under the first sentence of Article 61 of the TRIPS Agreement 97

(a) Main arguments of the parties 97

(b) Main arguments of third parties 98

(i) Nature of the claim 100

(ii) Procedural issues 101

(iii) Nature of the obligation 102

(iv) Scope of the obligation 104

(v) "on a commercial scale" 107

(vi) Subsequent practice 116

(vii) Supplementary means of interpretation 116

(viii) Article 41.5 of the TRIPS Agreement 118

(ix) Conformity of the measures at issue with respect to the level of the thresholds 119

(x) Other indicia – physical evidence 126

(xi) Other indicia – impact on the commercial marketplace 129

(xii) Miscellaneous factors 131

(xiii) Conclusion with respect to the claim under the first sentence of Article 61 132

4. Claim under the second sentence of Article 61 of the TRIPS Agreement 132

(a) Main arguments of the parties 132

(b) Main arguments of third parties 132

5. Claim under Article 41.1 of the TRIPS Agreement 133

(a) Main arguments of the parties 133

(b) Main arguments of third parties 133

6. Conclusions with respect to the criminal thresholds 133

VIII. cONCLUSIONS AND RECOMMENDATION 134

LIST OF ANNEXES

ANNEX A

SUBMISSIONS OF THE UNITED STATES

CONTENTS / PAGE
A-1 / Executive Summary of the first written submission of the United States / A-2
A-2 / Executive Summary of the oral statement of the United States at the first substantive meeting / A-14
A-3 / Closing oral statement of the United States at the first substantive meeting / A-19
A-4 / Executive Summary of the rebuttal submission of the United States / A-22
A-5 / Executive Summary of the oral statement of the United States at the second substantive meeting / A-35
A-6 / Executive Summary of the closing oral statement of the United States at the second substantive meeting / A-40

ANNEX B

SUBMISSIONS OF CHINA

CONTENTS / PAGE
B-1 / Executive Summary of the first written submission of China / B-2
B-2 / Executive Summary of the oral statement of China at the first substantive meeting / B-16
B-3 / Closing oral statement of China at the first substantive meeting / B-21
B-4 / Executive Summary of the rebuttal submission of China / B-23
B-5 / Executive Summary of the oral statement of China at the second substantive meeting / B-39
B-6 / Closing oral statement of China at the second substantive meeting / B-44

ANNEX C

ARGUMENTS OF THE THIRD PARTIES

CONTENTS / PAGE
C-1 / Executive Summary of the third party submission by Argentina / C-2
C-2 / Executive Summary of the third party submission by Australia / C-7
C-3 / Oral statement by Australia / C-12
C-4 / Executive Summary of the third party submission by Brazil / C-13
C-5 / Oral statement by Brazil / C-18
C-6 / Executive Summary of the third party submission by Canada / C-20
C-7 / Oral statement by Canada / C-24
C-8 / Executive Summary of the third party submission by the European Communities / C-27
C-9 / Executive Summary of the oral statement by the European Communities / C-30
C-10 / Executive Summary of the third party submission by Japan / C-33
C-11 / Executive Summary of the oral statement by Japan / C-37
C-12 / Executive Summary of the third party submission by Korea / C-42
C-13 / Oral statement by Korea / C-45
C-14 / Third party submission by Mexico / C-47
C-15 / Oral statement by Mexico / C-50
C-16 / Executive Summary of the third party submission by Chinese Taipei / C-53
C-17 / Oral statement by Chinese Taipei / C-57
C-18 / Oral statement by Thailand / C-60

Annex D

Miscellaneous

CONTENTS / PAGE
D-1 / Request for the Establishment of the Panel by the United States / D-2
D-2 / Letter dated 21 April 2008 from the Panel to the International Bureau of WIPO / D-8
D-3 / Reply from the International Bureau of WIPO dated 6June2008 / D-9

TABLE OF WTO CASES CITED IN THIS REPORT

Short Title / Full Case Title and Citation /
Australia – Automotive LeatherII / Panel Report, Australia – Subsidies Provided to Producers and Exporters of Automotive Leather, WT/DS126/R, adopted 16June 1999, DSR1999:III, 951
Brazil – Retreaded Tyres / Appellate Body Report, Brazil – Measures Affecting Imports of Retreaded Tyres, WT/DS332/AB/R, adopted 17 December 2007
Brazil – Retreaded Tyres / Panel Report, Brazil – Measures Affecting Imports of Retreaded Tyres, WT/DS332/R, adopted 17 December 2007, as modified by Appellate Body Report, WT/DS332/AB/R
Canada – Pharmaceutical Patents / Panel Report, Canada – Patent Protection of Pharmaceutical Products, WT/DS114/R, adopted 7April 2000, DSR2000:V, 2289
EC – The ACP-EC Partnership Agreement II / Award of the Arbitrator, European Communities – The ACP-EC Partnership Agreement – Second Recourse to Arbitration Pursuant to the Decision of 14November 2001, WT/L/625, 27October 2005, DSR 2005:XXIII, 11703
EC – Bed Linen / Appellate Body Report, European Communities – Anti-Dumping Duties on Imports of Cotton-Type Bed Linen from India, WT/DS141/AB/R, adopted 12March 2001, DSR2001:V, 2049
EC – Chicken Cuts / Appellate Body Report, European Communities – Customs Classification of Frozen Boneless Chicken Cuts, WT/DS269/AB/R, WT/DS286/AB/R, adopted 27September 2005, DSR 2005:XIX, 9157
EC – Computer Equipment / Appellate Body Report, European Communities – Customs Classification of Certain Computer Equipment, WT/DS62/AB/R, WT/DS67/AB/R, WT/DS68/AB/R, adopted 22June 1998, DSR1998:V, 1851
EC – Trademarks and Geographical Indications (Australia) / Panel Report, European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, Complaint by Australia, WT/DS290/R, adopted 20April 2005, DSR 2005:X, 4603
EC – Trademarks and Geographical Indications (US) / Panel Report, European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, Complaint by the United States, WT/DS174/R, adopted 20April 2005, DSR 2005:VIII, 3499
India – Patents (US) / Appellate Body Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products, WT/DS50/AB/R, adopted 16January 1998, DSR1998:I, 9
Japan – Alcoholic Beverages II / Appellate Body Report, Japan – Taxes on Alcoholic Beverages, WT/DS8/AB/R, WT/DS10/AB/R, WT/DS11/AB/R, adopted 1November 1996, DSR1996:I, 97
US – Corrosion-Resistant Steel Sunset Review / Appellate Body Report, United States – Sunset Review of Anti-Dumping Duties on Corrosion-Resistant Carbon Steel Flat Products from Japan, WT/DS244/AB/R, adopted 9January 2004, DSR2004:I, 3
US – Gambling / Appellate Body Report, United States – Measures Affecting the Cross-Border Supply of Gambling and Betting Services, WT/DS285/AB/R, adopted 20April 2005, DSR 2005:XII, 5663
US – Gasoline / Panel Report, United States – Standards for Reformulated and Conventional Gasoline, WT/DS2/R, adopted 20May 1996, as modified by Appellate Body Report, WT/DS2/AB/R, DSR1996:I, 29
US – Gasoline / Appellate Body Report, United States – Standards for Reformulated and Conventional Gasoline, WT/DS2/AB/R, adopted 20May 1996, DSR1996:I, 3
US – Oil Country Tubular Goods Sunset Reviews / Appellate Body Report, United States – Sunset Reviews of Anti-Dumping Measures on Oil Country Tubular Goods from Argentina, WT/DS268/AB/R, adopted 17December 2004, DSR 2004:VII, 3257
US – Section 110(5) Copyright Act / Panel Report, United States – Section 110(5) of the US Copyright Act, WT/DS160/R, adopted 27July 2000, DSR2000:VIII, 3769
US – Section 211 Appropriations Act / Panel Report, United States – Section 211 Omnibus Appropriations Act of 1998, WT/DS176/R, adopted 1February 2002, as modified by Appellate Body Report, WT/DS176/AB/R, DSR2002:II, 683
US – Section 211 Appropriations Act / Appellate Body Report, United States – Section 211 Omnibus Appropriations Act of 1998, WT/DS176/AB/R, adopted 1February 2002, DSR2002:II, 589
US – Superfund / GATT Panel Report, United States – Taxes on Petroleum and Certain Imported Substances, L/6175, adopted 17June1987, BISD34S/136
US – Section 301 Trade Act / Panel Report, United States – Sections 301-310 of the Trade Act of 1974, WT/DS152/R, adopted 27January 2000, DSR2000:II, 815
US – Tobacco / GATT Panel Report, United States Measures Affecting the Importation, Internal Sale and Use of Tobacco, DS44/R, adopted 4October1994, BISD41S/131
US – Wool Shirts and Blouses / Appellate Body Report, United States – Measure Affecting Imports of Woven Wool Shirts and Blouses from India, WT/DS33/AB/R, adopted 23May 1997, DSR1997:I, 323
US – Zeroing (Japan) / Appellate Body Report, United States – Measures Relating to Zeroing and Sunset Reviews, WT/DS322/AB/R, adopted 23 January 2007

TABLE OF ABBREVIATIONS USED IN THIS REPORT

DSB Dispute Settlement Body

DSU Dispute Settlement Understanding

EC European Communities

MAT Mutually Agreed Translation

TRIPS Agreement on Trade-Related Aspects of Intellectual Property Rights

WIPO World Intellectual Property Organization

WTO World Trade Organization

WT/DS362/R
Page vii

I. INTRODUCTION

1.1 On 10 April 2007, the United States requested consultations with the Government of the People's Republic of China pursuant to Articles 1 and 4 of the Understanding on Rules and Procedures Governing the Settlement of Disputes ("DSU") and Article 64 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement") (to the extent that Article 64 corresponds to ArticleXXII of the General Agreement on Tariffs and Trade 1994) with respect to certain measures pertaining to the protection and enforcement of intellectual property rights in China.[1] Consultations were held on 7-8 June 2007 but did not lead to a resolution of the dispute.