WIPO-SCIPS Training Program November 28, 2008 IP Disputes and Conflicts Management Sarah Theurich WIPO Arbitration and Mediation Center.
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WIPO-SCIPS Training Program November 28, 2008 IP Disputes and Conflicts Management
Sarah Theurich
WIPO Arbitration and Mediation Center
Overview
• • • • • • • •
WIPO Arbitration and Mediation Center Trends in IP Disputes - Litigation v. ADR WIPO Mediation WIPO Arbitration WIPO Expert Determination WIPO ECAF WIPO Case Experience Domain name dispute resolution Sarah Theurich, WIPO-SCIPS Training Program
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November 28, 2008
WIPO Arbitration and Mediation Center
• Established in 1994 • Provides alternative dispute resolution options for the resolution of intellectual property disputes between private parties • Time and cost effective resolution of disputes between private parties outside court (ADR) Arbitration Mediation Expert Determination Domain Name Dispute Resolution
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November 28, 2008
Trends in IP Disputes
•
Internationalization of use of IP rights & globalization of markets; need for cross-border solutions for disputes
- Different languages, cultures, geographically limited laws Need for neutrality (Avoid home-court advantage) Need for global cross-border solutions •
Growth of complex long-term relationships; strategic alliances
- Licensing, cross-licensing, patent pooling Need for mechanisms that preserve long term business relations
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November 28, 2008
Trends in IP Disputes
•
Increasingly technical and specialized nature of IP
Need for specific expertise of “neutral” •
Closely guarded relationships
Need for confidentiality •
Highly competitive areas; short product and market cycles
Need for time-efficient procedures
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November 28, 2008
Litigation
• • While the
exploitation of IP is global, IP rights
are
territorial Enforcement
basis usually made on
country-by-country
•
Different legal systems
- risk of contradictory results (e.g. Angiotech patent 2007) •
Costs
• Overview of Litigation in Different Jurisdictions Patents as an Example (Source: Patent Litigation, European Lawyer, 2006):
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Country France Germany Italy Spain UK China Japan USA Characteristic of Legal System Average Length Sarah Theurich, WIPO-SCIPS Training Program Average Cost
- Civil Law - Unified Litigation - No specialized courts - Civil Law - Bifurcated Litigation - Specialized court for invalidity - Civil Law - Unified Litigation - Specialized courts - Civil Law - Unified Litigation - Commercial Courts - Common Law - Unified Litigation - Specialized courts - Mediation promoted - Civil Law - Bifurcated Litigation - Specialized courts - Civil Law - Bifurcated Litigation - Specialized courts - Common Law - Unified Litigation - Specialized court of appeals (CAFC) - Jury trial available - Mediation promoted First Instance: 18-24 months Appeal: 18-24 months First Instance: 12 months Appeal: 15-18 months First Instance: few months – 24 months Appeal: 18-24 months First Instance: 12 months Appeal: 12-18 months First Instance: up to 24 months Appeal: 12 + months €80,000-150,000 (1 €50,000 (1 st Inst.) €70,000 (App.) €50,000-150,000 (1 €30,000-70,000 (App.) €100,000 (1 €50,000 (2 nd st Inst.) Inst.) st st Inst.) Inst.) First Instance: 12 months Court of Appeal: 12 months House of Lords: 24 months First Instance: 6 months (in law) Appeal: 3 months, no limit when foreigners litigate €750,000-1,500,000 (1 st Inst.) €150,000-1,500,000 (App.) €150,000-1,500,000 (House of Lords) USD150,000 (1 st Inst.) USD50,000 (App.) First Instance: 14 months Appeal: 9 months USD300,000 (1 st Inst.) USD100,000 (App.) Up to USD4,000,000 (1 st Inst.) USD150,000-250,000 (App.) 7
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Alternative mechanisms: Mediation, Arbitration, Expert Determination
• • •
Mediation:
a non-binding procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of a dispute. Mediator does NOT decide dispute.
Arbitration:
a procedure in which the dispute is submitted to one or more arbitrators who make(s) a final and binding decision (award) on the dispute.
Expert determination:
a procedure in which a specific matter (typically issues of technical, scientific or related business nature) is submitted to one or more expert(s) who make(s) a determination. An expert determination is binding, unless the parties agreed otherwise.
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Advantages of ADR
•
Single Procedure
Multi-jurisdictional disputes in one proceeding No jurisdictional problems • • •
Party control / autonomy / consensual Flexibility : “à la carte” Expertise
Party selection of neutrals; tailored appointment •
Neutral
Arbitrator/mediator/expert, language, law, venue •
Confidential
Existence, disclosures, result (Arbitration Rules: Art. 52, 73-76) WIPO Mediation Rules: Art. 14-17, Expert Determination Rules: Art. 15 •
Mediation: commercial solution, restore a working business relationship Sarah Theurich, WIPO-SCIPS Training Program
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WIPO Center: Options
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Routes to ADR
• •
Court Annexed (in particular mediation) Voluntary decision of the parties
Submission Agreement
ADR Clause
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WIPO Mediation Clause
Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation
in accordance with the WIPO Mediation Rules
. The
place
of mediation shall be […]. The
language
to be used in the mediation shall be […].
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November 28, 2008
WIPO Mediation Process
Commencement Appointment of Mediator Initial Conference Meetings
Request for Mediation (Art 3-5); Fees Art 21) Role of the mediator (Art 13); Appointment (Art 6-7) Conduct of the mediation (Art 9-12) Set up the first meeting; Agree on preliminary exchange of document, if any Agree on ground rules of the process; Gather information and identify issues; Explore the interests of the parties; Develop options for settlement; Evaluate options
Conclusion
73% success; duration 1-7months Sarah Theurich, WIPO-SCIPS Training Program
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November 28, 2008
WIPO List of Neutrals
•
WIPO List of Mediators, Arbitrators and Experts
+1000 Mediators, Arbitrators and Experts Patents, trademarks, copyright, IT, Domain names Industry expertise Detailed profiles
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November 28, 2008
WIPO Mediation Case Example
• Consulting contract btw. European technology consulting company (patent owner) and Asian manufacturer • Failure to negotiate patent license • WIPO Mediation Request • Appointment of mediator (patent, mediation and technology expertise) • • Two-day mediation session • Result: license, agreement on future consulting contracts
http://www.wipo.int/amc/en/mediation/scenario.html
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•
Mediation followed by Arbitration
Try mediation before arbitration, at least until
lapse of time period "Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […]” • termination
Combining the benefits
arbitration well prepared If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation,
it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. Alternatively,
if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation,
the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators] [a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with the law of […] ."
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Sarah Theurich, WIPO-SCIPS Training Program November 28, 2008
WIPO Arbitration Clause
Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of
[three arbitrators] [a sole arbitrator].
The
place of arbitration
shall be […]. The
language
to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim shall be decided in accordance with the
law of
[…].
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November 28, 2008
Problematic Arbitration Clauses
•
“Arbitration in Geneva.”
•
“WIPO Expedited Arbitration of infringement disputes, [other provider] arbitration of contractual disputes.”
•
“Any disputes shall be solved by arbitration between the parties; failing that, arbitration in the English language shall be conducted in Houston, according to the Paris Convention, which shall be final and binding upon the parties.” Sarah Theurich, WIPO-SCIPS Training Program
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WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Rules on Confidentiality
(Art. 52, 73-76)
Appointment of Arbitrator(s) Rules on technical evidence
(Art. 49-51 WIPO Arbitration Rules)
Statement of Claim (30 days) Further Written Statements and Witness Statements Interim measures
(Art. 46)
Statement of Defense (30 days) Hearings Closure of Proceedings (9 months) Arbitration: finality / enforceability of awards
- New York Convention with limited exceptions (e.g. denial of due process) “automatic” enforcement of arbitral awards 19
Final Award (3 months) Sarah Theurich, WIPO-SCIPS Training Program
WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Defense (30 days) Further Written Statements and Witness Statements Hearings Closure of Proceedings (9 months) Final Award (3 months) Sarah Theurich, WIPO-SCIPS Training Program WIPO EXPEDITED ARBITRATION Request for Arbitration and Statement of Claim Answer to Request for Arbitration and Statement of Defense (20 days) Appointment of Arbitrator Hearing (maximum 3 days) Closure of Proceedings (3 months) Final Award (1 month)
•One exchange of pleadings •Shorter time limits and hearings •Sole arbitrator •Fixed fees 20
November 28, 2008
WIPO Arbitration Case Example
• US university registers TM for email system in US, Canada, etc.
• Asian IT manufacturer registers TM for computer products in 16 countries • Opposition proceedings & litigation for 6 years • TM coexistence agreement; WIPO arbitration clause • US university’s TM application refused in Asian country, requests Asian manufacturer’s collaboration • Interim award (specific performance)
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November 28, 2008
WIPO Expert Determination
http://www.wipo.int/amc/en/expert-determination/
• Expert determination procedure intended to facilitate resolution of disputes requiring specialized expertise to determine specific issues of a technical, scientific or related business nature.
• More informal, flexible and expeditious than arbitration • Determination binding (unless parties agree otherwise) • Stand-alone procedure or may be combined with other procedures.
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• •
WIPO Electronic Case Facility (ECAF) Available for arbitration, mediation, expert determination cases under WIPO Rules
Certain exceptions: America’s Cup Jury Procedure
Main features
Web-based electronic docket Facilitation of party / neutral case management Easy, Instant, Location-independent Secure (secure card, username, pin code, password…) • •
Submission in most common formats All actors may view and search the Docket
(by submitting actor, date, subject title) •
Email alerts
communicated to all actors when new submission made •
User Information
http://www.wipo.int/amc/en/ecaf
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• • • • •
WIPO Arbitration and Mediation Case Experience
Over 70 mediations Over 100 arbitrations Parties from 18 countries (domestic & international)
Austria, Canada, China, Denmark, Finland, France, Germany, Ireland, Israel, Italy, Japan, the Netherlands, Panama, Romania, Spain, Switzerland, UK, USA.
Place of Arbitration
France, Germany, the Netherlands, Switzerland, USA
Procedures
English, French, German, Italian
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Types of Procedure
Expedited Arbitration 10% Arbitration 49% Mediation 41%
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WIPO Caseload: Subject matter
Other 18% IT 22% Copyright 9% Trademarks 5% Patent 46%
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24% Not settled
Settlement in WIPO Mediation and Arbitration Cases
3% Pending 19% Pending 54% Settled 73% Settled Mediation
Sarah Theurich, WIPO-SCIPS Training Program
27% Award Arbitration 27
November 28, 2008
Uniform Domain Name Dispute Resolution Policy (UDRP)
•
Background (WIPO advice to ICANN - 1998-1999)
Need for a procedure permitting trademark owners to resolve clear cases of abusive domain name registration (cybersquatting) without going to court • •
UDRP adopted by ICANN in 1999 Creation of an administrative procedure to settle disputes relating to domain names (all gTLDs and some ccTLDs)
Alternative to litigation •
Domain name registrants are bound to the UDRP through their registration agreement
•
Remedies - transfer or cancellation only (no costs or damages) Sarah Theurich, WIPO-SCIPS Training Program
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• • • • • •
Why the UDRP? Global Mandatory procedure – contractual basis (part of domain name reg. agreement) Directly enforceable decisions Non-profit fees (USD 1,500 for 1-5 domain names) Fast – approximately 2 months Transparent – decisions publicly available Sarah Theurich, WIPO-SCIPS Training Program
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What is Required Under the UDRP? Three Elements
•
Trademark must be identical or confusingly similar
to the domain name (UDRP Policy, s. 4.(a)(i));
and
• The registrant of the domain name must have
no rights or legitimate interests
in the domain name (UDRP Policy, s. 4.(a)(ii));
and
• The domain name must have been
registered and used in bad faith
(UDRP Policy, s. 4.(a)(iii)).
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November 28, 2008
First Element – Identical or confusingly similar to trademark
•
Two requirements:
Complainant must prove its rights in a trademark The domain name must be identical or confusingly similar to that trademark
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•
Second Element - Rights or Legitimate Interests
Examples:
use of the domain name in connection with a bona fide offering of goods or services registrant commonly known by the domain name legitimate noncommercial or fair use of the domain name (e.g., free speech website)
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November 28, 2008
Third Element - Bad Faith
• •
Examples of bad faith:
registration for purpose of selling the domain name back to the trademark holder for profit pattern of preventing trademark owners from registering domain names using the domain name to sell goods through consumer confusion
Totality of circumstances considered Sarah Theurich, WIPO-SCIPS Training Program
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The Procedure at a glance
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WIPO Resources
• • • •
WIPO Overview of Selected UDRP Questions:
http://www.wipo.int/amc/en/domains/search/over view/index.html
WIPO Legal Index of UDRP Decisions:
http://www.wipo.int/amc/en/domains/search/index .html
Filing Guidelines Model Working Documents (Complaint, Response)
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November 28, 2008
Some Examples of Disputed Domain Names
tomcruise.com telstra.org
dior.org
thewiggles.com
sydneyoperahouse.net
jpmorgan.org
uefachampionsleague.com
audi.net
microsoft.org
westfieldshopping.com
juliaroberts.com
madonna.com
findharrypotter.com
nicolekidmannude.com
jimihendrix.com
doctorswithoutborders.com
waynerooney.com
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Some facts and figures
• • •
Over 14,323 domain name cases filed since 1999 Parties have come from 147 countries
USA top filing country
Cases have been administered in 15 different languages
Chinese, Danish, Dutch, English, French, German, Italian, Japanese, Korean, Norwegian, Romanian, Russian, Portuguese, Spanish, Swedish
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November 28, 2008
WIPO ccTLD Program
•
ccTLDs – country code top level domains (e.g. “.ch”, “.fr”…)
•
56 ccTLDs using WIPO dispute resolution services
•
Advice on request
WIPO ccTLD Best Practices Avoiding conflicts through appropriate registration practices Protecting IP in ccTLDs through administrative procedures
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• • • •
Events and Information
WIPO Academy Online Course on Mediation and Arbitration
http://www.wipo.int/academy/en/courses/distance_learning/catalog/c_index.html
WIPO ADR Workshops
:
http://www.wipo.int/amc/en/events/
- WIPO Workshop for Mediators in Intellectual Property Disputes – May 28-29, 2009 - WIPO Arbitration Workshop – October 2009 - WIPO Domain Name Workshop – October 2009
Mailing list
:
http://www.wipo.int/amc/en/subscribe/index.html
Further information
: - http://www.wipo.int/amc - [email protected]
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November 28, 2008