Civil enforcement of IPR: Lessons of KORUS for RCEP
by Heesob Nam
The provisions for civil enforcement are to ensure to the maximum extent the economic interests of IP holders. For the full compensation for them, KORUS intervenes the way to calculate the amount of damages. KORUS not only guarantees the compensation of “the injury the right holder has suffered as a result of infringement”, but also presumes the profit of alleged infringer to be the amount of damages, and forces the court to consider, in determining the amount of damages, the value of infringed goods, “measured by the market price, the suggested retail price, or other legitimate measures of value submitted by the right holder”.
Pre-established or Statutory Damages
KORUS exempts the burden of IP holders to prove their actual harm that has a causal link to the infringement by introducing a pre-established or statutory damage rule. Further, KORUS defines the nature of statutory damages rule differently from that defined by the US courts.
First, it is replaceable of, rather than supplemental to the actual damages rule because right holders of copyright and trademark can choose pre-established damages “in lieu” of the primary remedies such as actual damages and presumed infringer’s profit. When choosing the statutory damages track, the right holders do not need to show the difficulty to prove the actual harm or profits.
Second, it is punitive, not compensatory given that KORUS mandates the “pre-established damages shall be in an amount sufficient to constitute a deterrent to future infringements”, and that KORUS omits exceptions for innocent or ordinary infringers.
In contrast to the punitive nature, the US Supreme Court observed that “a civil sanction that cannot be fairly to said solely to serve a remedial purpose, but rather can only be explained as also serving either retributive or deterrent purpose, is punishment”. Concerning the qualifying condition for innocent infringer, the US court can, pursuant Section 504(c)(2) of the US Copyright Act, reduce the statutory damages lower than the minima when “infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright”.
The concept of statutory damages is alien in civil law jurisdiction. The underlying principle of the damages relief is to ensure a full compensation of actual injury caused by an unlawful act. Therefore, a causal link between the unlawful act and the injury should be established, in principle, by a plaintiff, or the injured. If there is no actual and causal injury, the person who committed the unlawful act is NOT liable even when an unlawful act takes place. For this reason, at the early stage of the KORUS negotiation, the Korean negotiators were reluctant to accept the US proposal on the statutory damages rule. However, in the end, they accepted the alien rule. The KPO explained the reason was that they felt it necessary for the enhanced protection of trademark holders, and the Korean government departments jointly explained that they considered the concerns (probably of the US negotiators) that in civil litigations on copyright and trademark, right holders were difficult to prove the amount of actual injury and the amount of damages actually admitted by Korean courts were insufficiently low.
So far, the statutory damages rule had a limiting effect in Korea and there have been no awards of statutory damages which are “arbitrary, inconsistent, unprincipled, and sometimes grossly excessive”, which have been observed in the US. It is because Korea implemented it in a restrictive way by enacting only the upper limit of pre-established damages for both copyright and trademark, and it is applied only when trademark holders actually use their validly registered mark and when allegedly infringing mark and goods/services are identical to the registered mark and goods/services.
Destruction of Infringing Goods, Materials and Implements
Under KORUS, when IP holder alleges an infringement, goods, materials, implement, and, in case of trademark counterfeiting, even documents are to be seized, and when found pirated or counterfeit, the infringing goods should be destroyed, and the materials and implements used in manufacturing the infringing goods have to be destroyed or disposed of outside the channels of commerce.
This obligation reduces TRIPS flexibilities. Unlike TRIPS Article 46, the requirement of “predominant use” of materials and implements in the creation of the infringing goods is not required under KORUS, and the need for proportionality between the seriousness of infringement and remedies orders as well as the interests of third parties of TRIPS is omitted in KORUS. Further, the inclusion of all materials and implements used in the creation of the infringing goods is broader than the US domestic law. Section 503(b) of the US Copyright Act permits a court to “order the destruction or other reasonable disposition of … all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced”.
KORUS compels in an unbalanced way a provisional relief for IP holders. Article 18.10:27 provides that “[E]ach party shall act on requests for provisional measures inaudita altera parte expeditiously”.
This intentionally removes “the safeguards and limitations that TRIPS institutes around such order” such as “where any delay is likely to cause irreparable harm to the right holder” or “where there is a demonstrable risk of evidence being destroyed” in Article 50(2) of TRIPS. Further, there is no “check and balances” provided by TRIPS Articles 50.3 and 50.4 that require the right holder to provide “any reasonably available evidence … with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent” and the alleged infringer, in the inaudita intera parte measures, shall be notified of the execution of the measures and a review shall take place upon request of the defendant to deciding whether the measures shall be modified, revoked or confirmed”.
Both the US and Korea, either at the time of negotiation or during the implementation phase, had no legislations or case laws permitting, in principle, the provisional measures excluding the other party from being heard. Instead, the US courts have long granted a preliminary relief only when the plaintiff shows that (1) she is likely to succeed on the merits, (2) she will suffer irreparable harm from the defendant’s conduct, (3) less harm will result to the defendant if the preliminary injunction issues than to the plaintiff if the preliminary injunction does not issue, and (4) the public interest weighs in favor of the plaintiff.
In addition, Korean civil laws make it a rule to hold hearing joinable by the other party and permit court to render an interim injunction without hearing the other party only when such hearing makes unattainable the purpose of the injunctive relief. Concerning the need of domestic legislative change for implementing the inaudita altera parte obligation, the Korean government explains that as KORUS simply requires the Party to act expeditiously upon requests for provisional measures and does not make mandatory all provisional measures be proceeded without hearing of the alleged infringer, any legislative change is not necessary.
 Concerning the market value in calculating the ‘reasonable royalty’, some US courts require that damages be limited to the proven number of instances of actual infringement ( Yamane, H. (2011). Interpreting TRIPS: globalisation of intellectual property rights and access to medicines. Bloomsbury Publishing, p. 495).
 Article 18.10:5(a) and (b).
 Article 18.10:6.
 Austin v. United States, 509 U.S. 602, 610 (1993) (quoted in Samuelson, P. & Wheatland, T. (2009). Statutory damages in copyright law: A remedy in need of reform. William & Mary Law Review, 51, 439; UC Berkeley Public Law Research Paper No. 1375604, p. 461).
 The statutory damages rule was modeled on the US law. For the US governmental recommendations for reforming the statutory damages scheme in copyright, refer to White Paper on Remixes, First Sale, and Statutory Damages (the U.S. Patent and Trademark Office (USPTO) and the National Telecommunications and Information Administration (NTIA)), published on January 28, 2016.
 Samuelson & Wheatland, 2009, p. 441.
 For copyright infringement, the upper limit is KRW ten million per copyright work, which is quintuple for willful and for-profit infringement, and for trademark infringement, the upper limit is KRW 50 million. Unlike up to USD two million for willful counterfeit, there is no increased maxima in trademark counterfeit in Korea.
 The term “equivalent” is to reflect the definition of “counterfeit trademark goods” of KORUS: “any goods … bearing … a trademark that cannot be distinguished in its essential aspects from such a trademark” (Footnote 30 of Article 18.10:19, which aims at the border measures).
 Article 18.10:8. For the seizure under this Article, it is sufficient that the allegedly infringing goods, material, and implements have a relevance to the act of infringement.
 Article 18.10:9(a) and (b).
 Griffin, J. (2011). Inconsistencies between the TPP and U.S. Law, Public Knowledge, p. 7.
 Latin for “Without hearing the other Party” ( United Nations Conference on Trade Development &The International Centre for Trade Sustainable Development (2005). Resource Book on TRIPS and Development. (Cambridge University Press), p. 604).
 Weatherall, K. G. (2015). Section by section commentary on the TPP final IP Chapter published 5 November 2015 – Part 3 – Enforcement. Retrieved from http://works.bepress.com/kimweatherall/33/, p. 32.
 Griffin, 2011, p. 8.
 Article 304 of the Korean Civil Execution Act