WP In the News
Winkler Partners Listed as One of Taiwan’s Top IP Firms
Winkler Partners was listed as one of Taiwan’s leading intellectual property firms in the latest print issue of Asian Legal Business (Issue 10.2) in the feature article “IP: The ultimate intangible.” The Web version of the article can be found here.
Feature
Partner Peter Dernbach Recognized as IP Leader in Taiwan
Partner Peter J. Dernbach is recognized as one of the leading intellectual property law attorneys in Taiwan in the Chambers Asia 2010 directory. Leading lawyer candidates are assessed on qualities such as legal ability, professionalism, service, and client commitment, and Chambers base their rankings on interviews with both lawyers and clients. Chambers Asia 2009 described Dernbach as "a great bridge for global users–he can explain problems and solutions in a way that everyone can understand", adding that "he has a good grasp of what U.S. users expect". Winkler Partners was described as "...very helpful–the lawyers are fluent in Chinese and can understand the U.S. perspective as well as the Taiwanese courts system”.
Tags: IP , Peter Dernbach
Update
Taiwan-China Financial Market Liberalization Raises Data Protection Concerns
Taiwanese and Chinese regulatory authorities signed memoranda last November expanding mutual access to and the supervision of banking, insurance, and securities sectors. The memorandum became effective on January 16, 2010, and reflects planned financial market liberalizations between Taiwan and China. The memorandum—the latest in a series of unprecedented cross-strait deals brokered by Taiwan’s new administration paving the way for a binding Economic Cooperation Framework Agreement (ECFA) to lower long-standing barriers on a wide range of goods and services—should see a substantial increase in the collection and cross-border transfer of personal client data between the two countries.
Concerns have been raised over whether the personal data shared by Taiwanese banking, insurance, and securities firms with their Chinese counterparts will be adequately safeguarded from unauthorized disclosure and misuse. Part of this concern likely arises from the fact that trade and ECFA negotiations have been conducted behind closed doors and a substantive review of the financial and other sector-specific pacts therein by the public have not been possible to date. And part of the concern likely arises simply from the increased scrutiny afforded the issue of personal data protection over the last ten years. It will, however, be in the interests of both Taiwanese and Chinese companies to ensure that any personal data exchanged has been well protected.
Banking, insurance, and securities firms established in Taiwan fall under the Computer Processed Personal Data Protection Act - the fundamental legal framework for data protection in Taiwan. These firms must be licensed by Financial Supervisory Commission (FSC) to collect, process, and transfer personal data by computer. Approval must be obtained for the cross-border transmission of data - any cross-boarder transmission of the data through telecommunications systems (networks) including cable, terrestrial, optical or other electromagnetic communication networks. The application for the license must identify any cross-border transmission that will occur and who the direct recipient of that data will be. It must also set out a security and maintenance plan for the safety of personal data and provide a host of other required information. Firms currently licensed will, therefore, need to apply to amend their current registrations. And the FSC will have the opportunity to ensure adequate measures have been put in place to protect local consumers. The FSC may also restrict the cross-border transfer where major national interests are involved; where an international treaty or agreement specifies otherwise; where the nation receiving personal data lacks laws which fairly protect the rights and interests of the principal, thereby causing injury to the principal; or where international transmission and utilization of personal data are made through a circuitous means in order to evade the provisions of the Act. It would be very unlikely though to see the cross-border transmission to China be refused on these grounds at this stage.
Liability under the Act would fall on the entity governed by the Act and thus Taiwanese entities licensed under the Act will be liable for any unauthorized disclosure and misuse that occurs including that subsequent to a licensed cross-border transmission. Firms also face the prospect of potential criminal and civil liability under Taiwan’s Criminal Code and Civil Code.
The current Act, however, applies only to the collection, processing, and transfer personal data by computer and only to specified industries. A bill has been introduced whereby the Act would cover all data collection by any entity or individual. The amendments, however, have been stalled for several years at the Legislative Yuan. The main sticking point in the passage of the amendments has been just how severely violations of the Act should be punished and whether civil liability should be capped or not (it presently is).
The penalties under the current Act have been seen as inadequate, and likely are. The amendments seem unlikely to pass before the personal data of Taiwanese banking, insurance, and securities consumers starts flowing. Protection will, however, likely come from the fact that the liberalization of trade and closer political ties between Taiwan and China has come under increasing scrutiny from an ever-wary Taiwanese public. Parties on both sides of the Strait have a vested interest in ensuring that this next stage of closer commercial relations proceeds without giving the public cause to further question the proposed continued liberalization of trade and closer political ties.
A version of this article appears in the Computer Law and Security Review. For more information about this topic, please contact K. Mark Brown.
Feature
Towers Watson 2010 Employment Terms and Conditions Published
2010 Employment Terms and Conditions – Asia Pacific, published by Towers Watson Data Services, contains comprehensive coverage of employment- and labor-related laws and regulations for legal or human resources professionals. The Taiwan chapter includes updated information on the island's retirement laws, strikes, and short-term leave, among other items. Winkler Partners is pleased to present a sample of the Taiwan chapter. The report in its entirety can be purchased from Towers Watson Publications.
For legal guidance on employment law in Taiwan, please contact Christine Chen.
For help obtaining work permits and resident status for foreigners and PRC nationals, please contact Lloyd Roberts.
Update
Implementing Regulations for ISP Safe Harbor Amendments Announced
The Taiwan Intellectual Property Office (TIPO) announced the Regulations Governing Implementation of Limitations on the Liability of Internet Service Providers on September 7, 2009. The regulations address amendments to the Copyright Act establishing safe harbor provisions for Internet Service Providers (ISPs) that came into force earlier in 2009. The regulations have been based on the outcome of discussions with interested parties during the drafting of the amendments to the Copyright Act and public hearings this past summer. Interested parties had until September 17 to submit comments on the regulations. Absent significant opposition, the TIPO anticipates that the regulations will come into force in November 2009.
Notifications and Counter-notifications
Article 3 of the Regulations sets out the requirements for notifications sent to ISPs by rights holders under the Copyright Act. Notification may be made in writing sent by mail or fax or via electronic signature document sent by e-mail. The rights holder or its authorized representative must sign or chop the notification. ISPs may provide alternate means of receiving notification from rights holders. The notification must include:
i. Identity of the rights holder’s name along with their address, phone number, fax number, or e-mail;
ii. Identity of the infringed copyright;
iii. Request to the ISP to remove or deny user access to the infringing content;
iv. Adequate information and access routing information on the infringing content;
v. A statement that the rights holder has a good faith belief that the content cited is unauthorized or violates the Copyright Act; and
vi. A statement that the rights holder will assume liability if third parties incur damages as a result of false notification.
If multiple infringements will be alleged then these may be cited in a single notification.
Article 4 requires that an ISP notify a rights holder of any required amendments to a notification within five working days of the day following receipt of the notification. And a rights holder then has five working days to submit an amended notification. A notification shall be void if the rights holder fails to comply within the five-day period. Notification that does not meet the requirements and that has not been amended within the prescribed time to comply with the requirements shall not constitute evidence that an ISP has knowledge or awareness of the alleged infringement. That is to say, improper notice shall be deemed no notice.
The Copyright Act provides users of information storage service providers with a mechanism to challenge an infringement notification. Users of other types of ISP do not enjoy this right. A user of an information storage service provider who believes he or she has been wrongly accused of infringement by a rights holder may submit counter-notification to the information storage service provider requesting restoration of the alleged infringing content. Article 5 of the regulations provides that a counter-notification must be signed or chopped by the user (or representative) and include:
i. Identity of the user and contact information;
ii. Request to restore deleted content or access to the same;
iii. Adequate information on the content;
iv. A statement that the user has a good faith belief that he or she has legal authorization to use the content in question and that the deletion or denial of access to content is result of a false claim by the rights holder;
v. Consent to the information storage service provider to forward the counter-notification to rights holder; and
vi. A statement that the user will assume liability if third parties incur damages as a result of false counter-notification.
A representative making counter-notification must at same time state that he/she is doing so on behalf of the user.
Article 6 requires that an ISP notify a user of any required amendments to the counter-notification within five working days of the day following receipt of the notification. And a user then has five working days to submit the amended counter-notification. A counter-notification shall be void if the rights holder fails to comply within the five-day period and an ISP will not be required to restore access to the content.
Three-Strikes Rule
The Copyright Act provides that an ISP must to avail itself of the safe harbor protections inform its users that their service shall be terminated in whole or in part in the event that a user has been involved with three incidents of infringement. The Copyright Act does not, however, expressly require that the ISP terminate service. And the regulations do not address the "three-strikes" provision of the amendments at all though its absence from the regulations had been expected as users of connection ISP had not been provided with a means within the Copyright Act to challenge a notification. The amendments to the Copyright Act and the regulations appear to have been carefully thought through to appease those parties lobbying for the inclusion of a "three-strikes" mechanism while ensuring that the ISP and individual users of connection services have a degree of protection.
Observations on the 'Safe Harbor' Regime
There has, first, been no actual obligation imposed by the Copyright Act or the regulations on an ISP to terminate service, throttle, or restrict a user’s connection after the occurrence of "three-strikes". And where, for example, a user of a connection ISP has not been provided with any means within the notification system to challenge a notification then making it in fact a contractual issue between the ISP and user limits the likelihood of the law being challenged.
A rights holder has no right to know what action an ISP has taken against a connection service user and additional laws and regulations prevent the disclosure of such information absent a court order. There would be little current incentive for an ISP frequently trying to upsell consumers to more expensive and faster connections to actually enforce the "three-strikes" rule as a notification only contains an allegation of infringement–and given some of the cases reported in other jurisdictions and the use of automated notification systems that troll for infringement based on key words rather than actual content, an ISP would be correct to be wary. An ISP could face liability but this would require that a rights holder litigate first against a connection user. Which would in turn require sufficient evidence to support a court order to disclose the identity of the user.
The amendments also impose civil liability on any party who files a false notification of infringement. The regulations further require that a notification include both a statement by the rights holder that it has a good faith belief that the content cited is unauthorized or violates the Copyright Act and that the rights holder will assume liability if third parties incur damages as a result of fraudulent notification. Where, for example, a user of a connection ISP has received a false notification then the only redress to avoid "the strike" would be to bring legal action against the rights holder, and that user would have statements by the rights holder contained in the notification on which to base the action. The prospect of civil liability should serve to somewhat check the over-enthusiastic use of automated infringement notification systems sometimes seen in other jurisdictions as a rights holder should have sufficient and actual evidence of infringement at the time that the notification had been issued.
A version of this article appears in the Computer Law and Security Review. For more information about this topic, please contact K. Mark Brown.
Tags: copyright , IP , Mark Brown
Feature
Getting the Deal Through - Trademarks 2010 Published
Getting the Deal Through recently published its most recent edition of Trademarks,* a volume in its series of annual reports designed to help general counsel, government agencies and businesses stay informed about increasingly complex trademark laws. Partner Peter J. Dernbach contributed to the Taiwan chapter, which includes information on Taiwan's year-old IP Court and the Taiwan Intellectual Property Office's proposed amendments to the Trademark Act.
For more information on trademark issues in Taiwan, please contact Peter Dernbach at +886.2.2311.2345 ext. 222.
*Reproduced with permission from Law Business Research. This article was first published in Getting the Deal Through - Trademarks 2010 (published in October 2009; contributing editors Joseph F Nicholson and Stuart J Sinder, Kenyon & Kenyon LLP). For further information please visit www.GettingTheDealThrough.com.
Tags: IP , Peter Dernbach , trademark
Update
CLA Tackles Abusive Penalty Clauses in Labor Contracts
The Taiwanese media reported earlier this month that the Council of Labor Affairs (CLA) was drafting amendments to the Labor Standards Act to prevent abuse of penalty clauses in labor contracts. The CLA says it has received many complaints of attempts to enforce unfair, abusive penalty clauses to which employees have agreed in order to find employment during the current economic downturn.
It should be noted that penalty clauses for breach of contract can and are enforced under Taiwanese law. Labor contracts are no exception. The CLA distinguishes between penalty clauses and what it terms "punitive penalty clauses", which are essentially liquidated damages. Punitive penalty clauses are most common in the aviation industry and are widely used in employment contracts with pilots. An example of a punitive penalty would be if an employer and employee agreed to fixed damages for early resignation at 30 months salary.
According to the CLA, penalty clauses first became common in Taiwan's technology industry. Typically, the employee agrees that if he or she resigns before having completed two to three years of employment, he or she will pay the employer a penalty equivalent to two or three months of salary. The penalty clause for early resignation is often accompanied by a non-compete clause where the employee agrees to pay the employer a penalty if he or she accepts employment with a competitor after resignation from the original employer within a certain period of time. The employee usually agrees to wait for six months or up to two years before accepting employment at a competitor.
During the recent recession, both ordinary penalty clauses and punitive penalty clauses have spread to other industries. The CLA is now proposing to prohibit all punitive penalty clauses. Nonetheless, the CLA argues that ordinary penalty clauses should still be enforceable on the public policy grounds that if an employer intensively trains an employee such that the employee's job skills are improved during the course of employment, the employee should repay the employer through service or in money. To protect employees, the CLA wants to create an exception to the enforceability of ordinary penalty clauses where acts of the employer caused the employee to terminate the employment relation. Under this exception, even an ordinary penalty clause will be void if the employer has violated the terms of the employment contract, labor laws, or failed to pay wages and the employee terminates the employment.
The CLA will now need to draft its proposed legislation and hold public hearings before submitting its draft to the Executive Yuan for approval, after which the Legislature will take up the bill.
For legal guidance on employment law in Taiwan, please contact Christine Chen.
Tags: Christine Chen , employment , labor
Feature
Taiwan Chapter of The Mergers & Acquisitions Review Published
Partner Steven J. Hanley has contributed to the Taiwan chapter of the Mergers & Acquisitions Review, published annually by Law Business Research, Ltd. The chapter can be downloaded here.
Tags: commercial , investment , Steve Hanley
Feature
Winkler Partners Contributes to Taiwan Chapter of Enforcement of Money Judgments
Winkler Partners associate Liu Yen-ling recently contributed to the Taiwan chapter of the latest edition of Juris Publishing's Enforcement of Money Judgments. The chapter provides a comprehensive and current overview of enforcing a foreign money judgment in Taiwan.
For more information about this topic, please contact Liu Yen-ling at ext. 543.
Tags: Liu Yen-ling
Update
ISP 'Safe Harbor' Loopholes Panned
Criticism has been leveled at the “Internet Service Provider Liability Limitation” amendments to Taiwan’s Copyright Act that came into effect in May 2009. The amendments resemble the ISP liability limitation regime set out in the 1998 US Digital Millennium Copyright Act (DMCA) Title II and provide for a notice-takedown-counter notice mechanism as well as a controversial “three strikes” rule whereby alleged offenders face termination of services in whole or in part.
The amendments have been justified as necessary to reduce online copyright infringement in Taiwan while setting limitations on the liability of an ISP for acts of infringement committed by users. To avail themselves of the “safe harbor” protections from civil and criminal liability, ISPs must remove or disable allegedly infringing material upon notification from a rights holder. ISPs, however, need not make a substantive determination as to whether the activity cited in a notification constitutes infringement.
Although the amendments to the Act include mechanisms to discourage the sending of false notifications, concerns remain that an ISP may be compelled to remove material or terminate user access on the basis of an allegation of infringement. Individual users of connection services do not even have the option of providing a counter-notification in the event that the ISP warns the user that a notice has been received. Receipt of three notices should lead to the termination of a user’s access to the internet by the ISP in whole or in part. An individual user’s only real recourse would be to take legal action against party issuing the notice(s).
