On June 21, 2019, Mr. Bisheng SHI, partner of Zhong Lun Law Firm, attended and gave a speech at the Intellectual Property Symposium on Cross Border Ecommerce organized by Peking University.
Attendees of the Symposium included TAO Jun, Presiding Judge of the IP tribunal of the Beijing High People's Court, Judge JIANG Ying, Vice President of the Beijing Internet Court, YI Jiming, Professor of Peking University Law School, and LI Shunde, Researcher of Chinese Academy of Social Sciences Law Institute, etc.
The attendees gave speeches on IP issues in cross border ecommerce, covering the Requirements in China and U.S. on IP Protection of Cross Border Ecommerce, Theoretical and Practical Issues in Parallel Importation, and Interpretation and Application of Ecommerce-related Rules in Ecommerce Law and Tort Law.
Mr. SHI Bisheng delivered a speech on Interpretation and Application of Ecommerce-related Rules in E-Commerce Law and Tort Law. Mr. SHI said that it is reasonable to apply Article 36 of the Tort Law to determine the tort liability of an internet service provider (“ISP”) for the IP infringement in the ecommerce platform.
First, pursuant to Article 36 of the Tort Law, an ISP is liable only when it knew the IP infringement. In some situations, the ecommerce platform as an ISP did not reasonably realize the IP infringement before being notified, and accordingly the rule of “Notice and Take Down” shall be applied in such situation.
Second, the “know” in Article 36 of the Tort Law means “clearly know” or “ought to know”. Whether the ecommerce platform as an ISP clearly knew the IP infringement depends on the evidence, while whether it ought to know the IP infringement is typically in the discretion of judges, depending on the duty of care on the ecommerce platform. Before the Ecommerce Law was promulgated, Beijing High People’s Court released a Q&A concerning the IP infringement in ecommerce. Pursuant to this Q&A, if there is a high likelihood of “ought to know” for the ecommerce platform, the ecommerce platform will be found to be in the “ought to know” status and thus has the obligation to take measures to prevent further infringement.
Mr. SHI concluded that Article 36 of the Tort Law is more reasonable than Paragraph 2 of Article 42 of the Ecommerce Law in respect of the rule of “Notice and Take Down”. Therefore, for the fourth revision to Patent Law, the relevant rules should follow the legal spirit of Article 36 of the Tort Law.