John Zacharia is an attorney with deep experience with international cooperation in IP cases and is a co-author of the European Union Intellectual Property Office (EUIPO) study on the “International Judicial Cooperation in Intellectual Property Cases” issued in March of 2021 (“Study”).
In the following interview, John breaks down some of the key information contained in the 126-page Study for the benefit of the brand protection community and shares some of his own experiences with international cooperation in cases that he has litigated.
We’d like to acknowledge and celebrate here that John is also one of the newest members of The Brand Protection Professional Editorial Board, bringing with him years of service at the U.S. Department of Justice, where he served as the Assistant Deputy Chief for Litigation of the Computer Crime and Intellectual Property Section (CCIPS). Now in private practice, John counsels clients on addressing intellectual property violations, cyber threats, and represents them in domestic and international commercial litigation and administrative law actions.
Leah: We have talked about this EUIPO publication, which is stock full of information for the BP community. It aptly reminds us of the many existing cooperation tools out there that have been on the books for a while, in addition to more recently enacted tools in the form of various laws, conventions, treaties, and other legal instruments reflecting the challenges of our current cyber age.
Let’s do our best to break down important aspects of this study for practitioners, starting with what is relevant to the online space:
Which international cooperation tools can brand owners use to obtain evidence for online trademark counterfeiting cases?
John: First off, thank you Leah for the kind introduction. I’ve been a fan of the BPP for a while now, and I’m really excited to join the BPP Editorial Board and to be working with you. I am also honored to have been a member of the fantastic United Nations Interregional Crime and Justice Research Institute (UNICRI) team that produced and authored this study for EUIPO – one of the most forward-thinking IP organizations in the world. It was also a great opportunity to share some of my own experiences with international cooperation in civil and criminal cases.
To your question, U.S.-based brand owners have two primary tools they can use to obtain evidence located overseas in an online civil trademark counterfeiting case, or in any counterfeiting case for that matter.
One is a traditional “Letter of Request” – more formally called “letters rogatory” – that brand owners can use to request judicial assistance from any country to obtain evidence. This multi-step process can be time consuming because the brand owner must first send its request to a court in the U.S., then transmit the letter through diplomatic channels, and finally have the letter sent to courts of competent jurisdiction in the country where the evidence resides.
Leah: Thinking about those hurdles, and that brand owners are always looking for timeliness and efficiency, which tool would you highlight with these factors in mind?
John: As we note in the study, the more efficient tool to obtain evidence is the Hague Evidence Convention (more formally called the “Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters”). It’s been around awhile and the process runs relatively smoothly. There are 63 contracting states, including the U.S., so it can be used to request evidence from a growing list of countries. Brand owners using this tool can more easily overcome differences between our common law system and the civil law system prevalent in most of the world, including Europe, because the Convention already lays out the agreed-upon procedures for obtaining evidence. The Hague Evidence Convention also operates more efficiently than the more traditional letters rogatory process because the Convention authorizes letters of request without resorting to consular or diplomatic channels. Instead, each country designates a “central authority” to receive, review and transmit letters of request for evidence directly to a competent authority to execute the request – typically a court of law. The Convention even authorizes the electronic transmission and receipt of requests to compel production of evidence, which moves things along faster.
Leah: Let’s talk practical – how would these tools apply in civil online trademark counterfeiting cases?
John: It’s hard to overstate how important it is for brand owners to have tools to obtain evidence located overseas in a real online trademark counterfeiting case. Consider the case of an online pharmacy that is trafficking in counterfeit pharmaceuticals and whose website is hosted in a country that is a member of the Hague Evidence Convention. The trademark owner could use the Convention to compel the production of evidence from the overseas hosting provider to learn, for instance, the identity of the operators of illegal online pharmacy. If their online electronic payment processor is also hosted in a Convention country, then the Convention can also be used to compel the production of evidence of payments made to the counterfeiters using the payment processor. And, the Convention can be used to compel production of additional relevant evidence located in a Convention country that may not reside online, such as evidence of where the counterfeit pharmaceuticals were produced or where the active pharmaceutical ingredient was obtained.
Leah: For another essential member of the brand protection community, what are some of the international cooperation tools that law enforcement can use to obtain evidence in online trademark counterfeiting cases?
John: Before obtaining relevant digital evidence residing overseas, prosecutors should seek to preserve such digital evidence expeditiously because many countries (like the U.S.) do not require service providers to preserve online data. The Group of Seven (G7) 24/7 Cybercrime Network permits prosecutors in member countries to reach out to a single point of contact in any other member country, 24/7, to expeditiously ask service providers to preserve evidence stored online until the prosecutors are ready to formally obtain the evidence. Over 100 countries are members of this Network, making this preservation mechanism an effective and frequently used tool. Networks like this can also be used to facilitate informal cooperation between investigators and prosecutors from different countries to maximize the efficiency of international cooperation. If the U.S. has a Mutual Legal Assistance Treaty (MLAT) with the country where the evidence resides, then prosecutors can submit an MLAT request to obtain such evidence (both digital and physical) from that country. If the relevant evidence is in a country with which the U.S. lacks an MLAT or similar treaty, then the U.S. can submit letters rogatory – a much slower process – to obtain evidence overseas.
Leah: This is obviously a study out of the EU. For the U.S. brands, what is the EU’s record on helping the U.S. with its online IP cases?
John: It’s important to remember that the EU is made up of 27 countries that each have their own central authority. So the answer would vary by EU country. In addition, most data on international cooperation in particular cases is not publicly available, making it hard to make a true assessment. But I can say that my own experience seeking cooperation from the EU in IP cases has been very good. In fact, the study highlights several large-scale online IP cases that I prosecuted with U.S. Attorney’s Offices that involved successful cooperation with EU member countries to preserve and to obtain evidence.
Leah: What tool do you think is most important for EU brand owners to be aware of?
John: One that is particularly useful for obtaining U.S.-based evidence to support their cases located outside the U.S is set forth in U.S. federal law (28 U.S.C. § 1782). Using this statute, interested parties in a non-U.S. proceeding may obtain evidence directly from U.S. courts for use in the foreign proceeding. EU brand owners can even use this process to obtain U.S.-based evidence prior to the initiation of formal proceedings outside the U.S. Best of all, by using this tool, EU brand owners can avoid going first to a non-U.S. tribunal to obtain U.S.-based evidence, as the Hague Evidence Convention would otherwise require. As a result, U.S. federal law affords EU and other non-U.S. brand owners a particularly efficient tool to obtain U.S.-based evidence.
Leah: There were mock case studies included in the Study. What do those reveal to us?
John: The mock case studies are my favorite part of the Study because they allowed us to go beyond simply identifying which international cooperation tools are available to brand owners and law enforcement. The mock case studies illustrate how brand owners and law enforcement can actually use those tools (both civil and criminal) in complex online trademark counterfeiting and copyright cases. The Study also presents how certain international cooperation tools would apply in the mock cases alongside the explanation of the tool itself, making it even easier to associate a particular tool with its use in the mock case study. Having the mock case studies along with the real-life case studies will hopefully provide readers with a more complete picture of how international cooperation tools can be used in online trademark counterfeiting and copyright infringement cases.
Leah: Can you speak to some of the other specific cooperation tools?
John: The EU has developed additional judicial cooperation tools that EU brand owners can use to request and to obtain evidence from other EU countries. For example, the EU has a regulation that establishes a mostly EU-wide system for the transmission and execution of requests for evidence that is more efficient than the Hague Evidence Convention. The EU also has its own Mutual Legal Assistance Convention designed to facilitate efficient cooperation for EU law enforcement in obtaining evidence in criminal cases across the EU. And the EU has even developed a European Investigation Order to speed up judicial cooperation for EU law enforcement in accessing data across the EU.
Leah: Which laws/treaties/cooperation tools are the least utilized? How would you make the case for their use?
John: The Convention on the Counterfeiting of Medical Products and Similar Crimes Involving Threats to Public Health. It’s the first international treaty targeting counterfeit medical products and similar crimes involving threats to public health. Its scope is broader than counterfeit medical products because it reaches any falsification of medicines and medical devices – even if the case does not involve the use of a counterfeit trademark. This Convention can serve as the legal basis for extradition or mutual legal assistance to obtain evidence in criminal cases involving counterfeit or falsified medical products. Although it was drafted by the Council of Europe, it is open to signature and ratification by non-European countries too.
Leah: Lastly, what did you find most interesting in this study? Maybe something that you learned or that you had not thought about before being involved in this study?
John: I enjoyed learning more about the sheer number of international cooperation tools that could apply to online trademark counterfeiting and copyright infringement cases. The one that I think deserves special attention is the relatively new Medicrime Convention I mention above that was adopted by the Council of Europe in 2011. As of February, 18 countries have signed and ratified this Convention, and another 15 countries have signed the Convention but not yet ratified it. Notably, the U.S. has not signed it yet. As more countries sign and ratify the Convention, I hope it will be used more often to facilitate the prosecution of counterfeit medical product cases.
THE BRAND PROTECTION PROFESSIONAL |JUNE 2021 | VOLUME 6 NUMBER 2
2021 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES
THE BRAND PROTECTION PROFESSIONAL |DECEMBER 2017 | VOLUME 2 NUMBER 4
2017 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES