Exhaustion of rights system is a typical system that restricts the exclusive right of intellectual property. Its connotation and scope of application should be accurately defined, otherwise it will cause improper damage to the interests of the obligee. This paper expounds the author's understanding and views on the exhaustion system of intellectual property rights from three aspects: copyright, patent right and trademark right.
[Keywords:] exhaustion of rights, exhaustion doctrine, one-time exhaustion of distribution rights, principle of selling first.
Intellectual property is an exclusive civil right, which, like ownership, has the characteristics of exclusiveness and absoluteness. [i] But at the same time, in order to prevent this monopoly from becoming an obstacle to social progress and development, the intellectual property system, while safeguarding the exclusive rights of creators, also imposes necessary restrictions on them to coordinate the interests of creators, communicators and users representing social interests. The exhaustion system of intellectual property rights is a typical system to restrict exclusive rights.
The so-called exhaustion of rights [ii] principle (ii), also known as exhaustion principle and first sale principle, refers to intellectual property products manufactured by intellectual property owners or their authorized persons. After being put on the market for the first time, if the creditor loses further control over it within a certain geographical scope, it is deemed that the creditor's rights have been exhausted. Anyone who legally obtains the intellectual property product can dispose of the intellectual property product freely. The purpose of this system is to maintain the normal market transaction order and protect the legitimate interests of operators and general consumers on the premise of protecting the legitimate interests of patentees.
The principle of exhaustion of rights has different contents in copyright law, trademark law and patent law, but it has certain * * *. To sum up, there are the following points:
1. Exhaustes the particularity of terms.
The exhaustion of intellectual property rights refers to the exhaustion of specific rights, not the exhaustion of ownership. The first thing that is exhausted is not personal rights, but property rights; Secondly, it is not the property right, patent right or trademark right of the work itself that is exhausted, but its sub-item, that is, the specific rights related to the sale or use of the product in the right group. [iii] The exhaustion right is a specific right related to the circulation of goods and the use of buyers, which is clearly stipulated by law. In Professor Zheng's words, "exhaustion of exclusive rights" only means that the obligee has lost the exclusive right to sell his works. [4]
2. Exhausting the specificity of the object.
The so-called specificity of the object of exhaustion of rights means that exhaustion of rights is aimed at every specific product legally put into the market, not all products in the same category or series, and it will not lead to the suspension of the effectiveness of intellectual property itself. The obligee still enjoys the exclusive right to the products that have not been put on the market or illegally put on the market, and no one may copy the knowledge products without permission.
3. The particularity of exhaustion scope.
The exhaustion of intellectual property rights has regional characteristics. Generally speaking, the right holder's putting his intellectual property products in one country will not lead to the exhaustion of his products in other countries. Therefore, the obligee still has the right to prohibit others from importing products with intellectual property rights without permission. For example, the Austrian copyright law stipulates: "If the author only agrees to sell his works in a certain field, his exclusive right to further sell will only be lost in that field."
It can be seen from the above characteristics that the principle of exhaustion of rights is undoubtedly a huge restriction on the exclusiveness of intellectual property rights. In order to prevent the abuse of this principle from bringing unnecessary restrictions and damages to the obligee, it is necessary to accurately define its connotation and application scope. In the following, the author will talk about the understanding and application of it with several questions.
First, the connotation and scope of application of exhaustion of copyright rights-why not apply the principle of exhaustion of copyright rights under the network environment?
In the field of copyright, exhaustion doctrine means "exhaustion of distribution right at one time". In other words, the copyright owner has no right to control the further resale and distribution of copyrighted works that have been put on the market with the permission of the copyright owner. [v]
To understand this, we must distinguish between the disposal of works as intangible objects and the disposal of works as tangible carriers. As a buyer of works, the purpose of buying a book or a record or a CD is obviously not to obtain the book or the CD itself, but to obtain the works existing in it. However, because the works in the traditional environment must exist in the carrier, we have to buy the works by buying tangible carriers. It is also by selling the tangible carrier of the work that the author realizes the return of his creative works. In this case, the work and the carrier are inseparable, and every punishment of the carrier inevitably involves the punishment of the intangible work, so the conflict between the property rights of the legal recipient of the tangible carrier and the intellectual property rights of the owner of the work will inevitably occur in the second punishment of the work. If every transaction is subject to the consent of the owner of intangible works, then the disposal right of the owner of tangible carrier is useless, which is undoubtedly an improper interference to the legitimate interests of operators and ordinary consumers. Therefore, in this case, the law restricts the author's intellectual property rights, and makes his copyright give way to the property rights of the owner of the tangible carrier through the exhaustion of rights system, thus limiting the interference of the copyright owner in this further punishment and ensuring the free circulation of goods and market order.
From the above analysis, it can be concluded that the principle of exhaustion of copyright rights, that is, "exhaustion of distribution rights at one time", is a legal restriction on the rights of copyright owners, but it should only exist in the case that the property rights of legitimate recipients of goods conflict with the intellectual property rights contained in goods. [vi] That is to say, the transfer of tangible copies is the premise and basis for the application of "one-time exhaustion of distribution rights".
In the network era, the principle of "one-time exhaustion of distribution rights" has lost its premise and foundation. Firstly, the fuzziness of the work carrier in the network environment. Works under the network environment exist in digital form. In the pure online copyright transaction, we can't find tangible carriers such as books and CDs. The numeric code groups of 0 and 1 are the final objects of our transaction. When you buy a work from the paid database, you get a digital code consisting of 0 and 1 In this sense, the work transaction under the network environment is more pure, and we don't. [7]
But it is precisely this that breaks the foundation of exhaustion of copyright rights. Due to the disappearance of the work as a carrier in the network environment, there will be no conflict between the download owner and the owner of the work in the traditional environment, and the exhaustion of copyright rights will lose its fundamental significance.
Secondly, the fuzziness of online distribution rights. In the field of copyright, exhaustion doctrine means that the distribution right is exhausted at one time. However, in the network environment, works exist in digital form, and the essence of their transmission through the network is the transmission of data streams, and this transmission itself is the copy of binary codes, so network communication is essentially a copy, and the White Paper on Intellectual Property and National Information Infrastructure in the United States also holds the same view [viii].
Therefore, in the network environment, the distribution right and the reproduction right can no longer be clearly distinguished as in the traditional environment, and digital reproduction inevitably appears in the distribution process. Since the exhaustion of copyright is only aimed at the right of distribution, the right of reproduction will never be exhausted. Therefore, the exhaustion of rights system has lost its position in the network copyright system.
Finally, under the network environment, the distribution scope of the works is vague. Exhaustion of rights is regional. In the traditional environment, the exhaustion of distribution rights has always been within a certain geographical scope, and the copyright products issued by the right holder in one country will not lead to exhaustion doctrine in other countries. The borderless nature of the network makes the regional spread of the network disappear, and the once spread of the work will lead to widespread spread around the world. Therefore, if the application right is exhausted in the network environment, the author's interests can't be safeguarded at all.
To sum up, under the network environment, the system of exhaustion of copyright rights has lost its foundation and significance. Therefore, the design of legal system must consider the particularity of network environment and limit its application. Blindly expanding the application of the exhaustion of rights system without considering its functional value will only lead to improper damage to the exclusive rights of the obligee.
Second, the connotation and scope of application of exhaustion of patent rights-is the principle of exhaustion of rights applicable to the act of arbitrarily changing the use of products with patented designs?
As mentioned above, exhaustion of intellectual property rights means that when there is a conflict between the legal purchaser's property rights and the obligee's intellectual property rights, the latter should give way to the former, but does this mean that the purchaser of the product can use the product at will without any restrictions? This leads to a controversial issue, that is, whether the exhaustion doctrine principle is still applicable when the buyers of patented designs change the original use mode of patented products and conduct profit-making production.
The author recently saw a patent infringement dispute case tried by the Intermediate People's Court and the High Court. This case reflects the judge's different understanding of the principle of exhaustion of patent rights in practice.
The facts of this case are as follows: Plaintiff Ju owns the patent right of design with patent number ZL96323288.6, and the product name using this design is wine bottle. The plaintiff licensed the exclusive use of the patent by Yinhe Winery with an annual royalty of 6.5438+0.5 million yuan.
Without permission, the defendant recycled a large number of old wine bottles of liquor products put on the market by Yinhe Winery, cleaned and disinfected them by himself, filled and packaged them to produce another independently sold "Gubei Chuntouqu" and put it on the market.
The plaintiff Jumou believed that the defendant used his patented product of design for profit without his permission, which infringed his patented product of design, so he appealed to the Jinan Intermediate People's Court. The defendant believes that the ownership of the "patented products" sold by the plaintiff-wine bottles, wine and packaging has changed, and no longer belongs to the plaintiff, but to the defendant as the buyer. The plaintiff's patented products have been put on the market by exhaustion, and its use of the patented products (wine bottles) sold by the plaintiff does not constitute patent infringement, which is a legal act.
The Jinan Intermediate People's Court, the court of first instance in this case, held that the plaintiff's design patent was legal and valid and should be protected by law. Without the permission of the patentee, no one may manufacture or sell the patented product for the purpose of production and operation. Without permission, the defendant used the old wine bottle with the same or similar design as the plaintiff to manufacture and sell "Gubeichun Touqu" for the purpose of production and operation, which infringed the plaintiff's patent right of appearance design. The plaintiff's request to order the defendant to stop the infringement should be supported.
The Higher People's Court of Shandong Province held that the plaintiff enjoyed the patent right of bottle design and was protected by law. When the plaintiff licensed the exclusive implementation of Yinhe Winery, and Yinhe Winery used the patented design bottle to produce, sell and sell liquor, the plaintiff and Yinhe Winery had already made a profit, reflecting that the patent right of the bottle had been exhausted. According to the principle of exhaustion of patent rights, the buyer's use or resale does not constitute an infringement of his patent rights. The defendant used the recycled old wine bottle to produce and sell Gubeichun Touqu. Because the patent right on the old wine bottle has been exhausted, it does not constitute an infringement of the plaintiff's patent right of design.
As can be seen from the facts ascertained by the court, since the defendant admitted that his wine bottle was patented by the plaintiff, there was no disagreement between the two sides on whether the defendant's products belonged to the plaintiff's patent scope, so the focus of the dispute in this case was whether the plaintiff's patented products had been in exhaustion doctrine.
Looking at the completely different judgment results of the first instance and the second instance, it reflects the great differences in the understanding of this principle by judges. The author believes that the industrial application value of the patented product "wine bottle" in this case lies in that it is put into the market as a packaging of wine. Therefore, when the patent right is exhausted, it should be that after the patentee legally puts the alcoholic products with the design on the market and sells them, it is legal for the buyer to use or resell the alcoholic products himself, and the obligee has no right to interfere.
But does the exhaustion of alcoholic products here mean that the owner can use and dispose of the "wine bottle" as part of the product at will? The judges of the first instance and the second instance parted ways on this point. The judge of second instance held that the patent right on the old wine bottle had been exhausted, so the defendant's recycling behavior did not constitute an infringement of the plaintiff's design patent right.
The judge of first instance held that the reuse of wine bottles for the purpose of production and operation has broken through the connotation of the legal purchaser of patented products, and it is an act of manufacturing patented products of design in disguise. Therefore, the defendant's defense of the principle of exhaustion of the patentee cannot be established and should bear tort liability.
The author thinks that the view of the first-instance judge is more desirable, and the connotation of the exhaustion doctrine principle is more accurately grasped. The principle of patent exhaustion is embodied in the first paragraph of Article 63 of China's Patent Law: "If a patentee uses, promises to sell or sells a patented product that he has licensed to manufacture or import or a product obtained directly by patented method after sales, it does not constitute infringement."
From its legislative purpose, this principle aims at protecting the legitimate interests of patentees, maintaining the normal market transaction order and protecting the legitimate interests of operators and ordinary consumers. Its system function is to solve the right conflict between the patentee's patent right and the ownership of the patented product purchaser. Therefore, the exhaustion of rights at this time means that wine and bottles should be put on the market as a whole in the exhaustion doctrine, that is, anyone can freely use and resell the wine product without the permission of the patentee. However, in this case, recycling old wine bottles and producing other products for the purpose of production and operation obviously exceeded the patentee's purpose of selling patented products and broke through the connotation of legal purchasers of patented products. At this time, the commercial use of patented products and the use of alcoholic products themselves are already two different behaviors.
The principle of patent exhaustion allows buyers to dispose of wine products freely, which does not mean that they are allowed to manufacture and sell patented products with other types of wine or drinks. This behavior of changing the use of patented products has obviously gone beyond the connotation of exhaustion doctrine, and its essence is an act of implementing patents in disguise. In my opinion, for the patentee and the licensee, there is no essential difference between recycling old wine bottles and the defendant's own production of wine bottles containing patented technology. Therefore, the defendant's defense of the principle of exhaustion of the patentee cannot be established and should bear the corresponding tort liability.
The judge of second instance came to this conclusion because he didn't correctly understand exhaustion doctrine's legislative intention. The purpose of creating this system by law is to maintain the normal market transaction order and protect the legitimate interests of operators and ordinary consumers. If this so-called "legal" use of old wine bottles is allowed, consumers may first be deceived because of the similar appearance of products, thus endangering the market trading order. Secondly, it is very unfair to the licensed users of patented products. Combined with this case, Yinhe Winery obtained the exclusive license of the patent with an annual use fee of 6.5438+0.5 million yuan. Now the defendant can use the patented product [x] with exclusive license aboveboard for a few cents, which is unreasonable under any circumstances. Furthermore, the patentee and the licensee signed an exclusive license contract, which means that not only others can't exploit the patent, but even the patentee himself can't exploit the patent. Now the judge makes the patented product "exhausted" in this sense and allows the defendant to legally use the patented product for copying, which is undoubtedly a complete denial of the exclusive license. If the quality of the bottle put on the market by the plaintiff is good enough, the judgment of the judge of second instance means that other subjects can recycle it again and use it in combination with other products, so that a fool will spend hundreds of thousands to buy an exclusive license and wait for someone else's patented product to be used.
From this case, we can draw a conclusion that the object of design patent protection is intellectual achievements and intangible assets that reflect the design of a specific product. The transfer of ownership of "wine bottle" as the carrier of patent right should be strictly distinguished from the transfer of patent right of design. Exhaustion of rights should only occur in the same product, when the property rights of the legal winner of the product conflict with the intellectual property rights contained in the product. In this case, the intellectual property owner cannot prohibit certain specific behaviors of the relevant property owner. But the use of goods beyond this connotation should not lead to the exhaustion of patent rights. If we arbitrarily expand the application scope of the principle of exhaustion of patent rights, it will bring unnecessary damage to the obligee and patent licensee.
Third, the connotation of exhaustion of trademark rights-exhaustion of label rights or exhaustion of commodity rights?
Turning to the field of trademark rights, this problem is easier to understand. The basic function of a trademark is to distinguish goods and services produced or distributed by different enterprises. [xi] Then the purpose of the right holder to mark the goods is obviously to identify the goods or the services they provide. Therefore, the connotation of exhaustion of trademark rights is that when there is a conflict between trademark rights and the ownership of trademark goods sold, the former gives way to the latter and is exhausted. That is to say, the exhaustion of trademark rights means that the trademark owner loses control of the further punishment of the goods he puts on the market, rather than the exhaustion of the trademark itself as a thing.
As far as the author is concerned, the act of purchasing goods can be understood as the buyer's own purchase of tangible goods and the right to use the trademark to identify the goods in future transactions. Therefore, the buyer of a commodity with a trademark can continue to use the trademark to identify the commodity in future trade activities, but he has not obtained the right to use the trademark itself at will. In this sense, if a trademark is accidentally damaged, he can continue to mark the goods with the same trademark, which does not infringe the exclusive right of the trademark owner. However, if he tore off the trademark on the goods he bought and marked other goods, it would no longer be the exhaustion of trademark rights, but a typical trademark infringement.
However, if the third party replaces the outer packaging of the trademark product instead of the trademark, does the exhaustion doctrine principle apply to the trademark product? This is the case of Hoffman-La Roche v. Centrafarm in Germany. In this case, the defendant repackaged the plaintiff's trademark products in a large box popular in the German market, reprinted the trademark of the plaintiff Roche Company on the box, and added some information of himself. In the trial, the court reiterated that the "main function" of trademarks is to identify products to consumers or end users, distinguish products from different sources and prevent any confusion. And put forward three Roche elements to test whether repackaging is infringement: (1) repackaging does not affect the original state of the product; (2) The sub-packer has fulfilled the obligation of notification; (3) Packaging clearly indicates who is responsible for repackaging.
The author thinks that this problem cannot be generalized, and Roche's above three elements give us a good enlightenment. If repackaging leads to confusion or misunderstanding of the origin of the product, and the "main function" of the trademark is destroyed, the trademark product should not be exhausted, and the trademark owner may prohibit the further circulation of the repackaged product. However, if this repackaging behavior is recognized by the trademark owner, or does not hinder consumers' identification of commodity producers, then the exhaustion doctrine principle and the spirit of free trade should still play a role, and the trademark owner has no right to prohibit the further circulation of repackaged trademark products.