I. Legislation and judicial practice of statutory compensation for intellectual property rights
In order to effectively protect the legitimate rights and interests of obligees, TRIPs Agreement and intellectual property legislation in many countries have stipulated the legal compensation system for intellectual property infringement damage. The so-called statutory compensation refers to the specific amount (or amount range) of compensation for the damage caused by illegal infringement of intellectual property rights as stipulated in the Intellectual Property Law. If the people's court cannot find out the actual loss of the victim and the profit of the infringer, or the victim directly requests compensation according to the statutory minimum compensation, the people's court shall determine the compensation amount according to law. In China, the statutory compensation for intellectual property damage is a brand-new system established by the revised Trademark Law and Copyright Law. Paragraph 2 of Article 56 of the Trademark Law stipulates that if it is difficult to determine the benefits obtained by the infringer or the losses suffered by the infringed, the people's court shall award compensation of less than 500,000 yuan according to the circumstances of the infringement. Paragraph 2 of Article 48 of the Copyright Law stipulates that if the actual loss of the obligee or the illegal income of the infringer cannot be determined, the people's court shall award compensation of less than 500,000 yuan according to the circumstances of the infringement. The Supreme People's Court's "Several Provisions on Applicable Legal Issues in the Trial of Patent Dispute Cases" also stipulates similar contents. When it is difficult to determine the loss of the obligee or the interests of the infringer, the patent license fee has no reference basis, or the patent license fee is obviously unreasonable, the amount of compensation is generally determined between 5,000 yuan and 300,000 yuan, with the maximum not exceeding 500,000 yuan.
In judicial practice, legal compensation is applied to a considerable number of cases. However, when we look through the cases of intellectual property infringement to which statutory compensation is applicable, we will find that a large number of judgments have devoted a lot of ink to the determination of infringement in the evidence analysis and reasoning, but in the part of damages, there is generally no specific analysis of discretionary factors and their role in determining the amount of compensation, and some even do not explain what factors the court has considered. The reason for this phenomenon, the author believes, is mainly due to the following reasons. First, the burden of proof for damages is really very difficult or the parties are too lazy to provide evidence, which leads to insufficient evidence for the plaintiff to lose the case in trial practice, and the evidence of the defendant's illegal income cannot be accepted. Due to various specious and vague facts, the judge can only make a judgment by applying statutory compensation. Second, because the legal provisions of statutory compensation are abstract and there is no specific and accurate amount, the judge needs to decide the reasonable amount within the statutory scope according to various factors. The determination of the amount of compensation is the result of the judge's discretion by evaluating the evidence, and this process of evaluating the evidence is difficult to express in the judgment, so I have to skip it for fear of "talking too much".
Second, some problems in the application of legal compensation for intellectual property rights
(A) statutory compensation should follow the principle of compensation
In the trial of intellectual property infringement compensation cases, when the judge determines the infringer's tort liability according to the facts ascertained in the trial, how to satisfy the obligee's claim for compensation and how to determine the amount of compensation for the infringer needs to follow certain compensation principles. China's current intellectual property law does not clearly stipulate the principle of compensation for infringement damages, which is controversial in theory and practice. Regarding the compensation principle of statutory compensation, one view holds that statutory compensation is a separate compensation principle juxtaposed with the principle of total compensation, while the other view holds that the principle of compensation for intellectual property infringement is divided into the principle of total compensation and the principle of punitive compensation, and statutory compensation is only a calculation method of total compensation. The author agrees with the latter view that the application of statutory compensation should follow the principle of full compensation. TRIPS agreement also emphasizes the principle of comprehensive compensation.
The principle of full compensation, also known as the principle of filling, refers to the infringer's full compensation to the obligee within the total loss limit. Its nature is to fill the actual loss of the obligee. The principle of total compensation has the following characteristics: ① The principle of total compensation is to compensate the victims for all their losses, that is, the amount of compensation is neither partial compensation nor excessive compensation. (2) The principle of total compensation is to compensate the victims for all losses, including direct losses and indirect losses. For example, the profits lost by the obligee, the reasonable expenses paid by the obligee to protect his rights, etc. (3) the principle of total compensation, the amount of compensation is often presumed to be the illegal interests of the infringer. Since intellectual property does not depend on a specific carrier, once it is made public, it is difficult for the obligee to actually control and possess it, and calculating the total loss of the obligee can be equal to the illegal interests of the infringer. Therefore, when we apply statutory compensation, the amount of tort compensation determined should be able to fully and fully compensate the obligee for the losses suffered by infringement. Ideally, the amount of compensation determined should not be greater than or less than the loss of the obligee. However, statutory compensation is essentially a kind of presumption of damages, which is a kind of compensation amount determined by the judge's estimation of the actual loss of the obligee according to the characteristics of the case and the facts ascertained in the trial through the request of the parties to the court when the amount is difficult to calculate. The amount so determined may exceed or be close to the actual loss, or it may not be completely equal to the actual loss of the creditor, but this presumption should still be based on the actual loss of the creditor. In countries that adopt the principle of full compensation, the estimated amount is assumed to be the actual loss.
(2) The principle of statutory liability for compensation
Regarding the liability for compensation for infringement of intellectual property rights, on the premise of affirming the principle of fault liability as a general principle, the academic and judicial circles generally advocate the adoption of the principle of dual liability, that is, supplementing other liability principles on the basis of adopting the principle of fault liability. Article 45 of TRIPS Agreement deals with the principle of imputation and private law relief of intellectual property infringement damage, which is of universal guiding significance to the relevant domestic legislation of all parties. The title of Article 45 of TRIPS Agreement is damages. Paragraph 1 of this article clearly stipulates that the premise of assuming the liability for damages is "knowing or having sufficient reasons to know", that is, subjective fault, that is to say, the compensation for intellectual property infringement is based on the fault of the infringer, which affirms that the principle of fault liability is the basic principle of compensation for intellectual property infringement. The second paragraph of this article provides an exception to the application of the principle of no-fault liability in "appropriate occasions", and excludes part of the liability for paying legal compensation to indirect infringers without fault. Applying the principle of no-fault liability in "appropriate occasions" mainly means that in some cases with particularly serious infringement damage, the infringer obtains huge benefits through infringement activities, or the infringement circumstances are quite serious, which damages the reputation of the obligee, or the court proceedings are too long, resulting in a large amount of expenses for the obligee. It can be seen that no-fault liability, as the principle of imputation, is limited to individual cases of major tort, which lacks universal value. Therefore, as a party to the TRIPS Agreement, the principle of imputation of statutory compensation for intellectual property rights in China should take fault liability as the general principle and no-fault liability as the exception.
(three) the applicable conditions of statutory compensation and the right choice of the parties
Judging from the current intellectual property legislation in China and the provisions of the Supreme People's Court judicial interpretation on the application order of compensation calculation methods, there is an application order of legal compensation and other damage compensation calculation methods in the litigation procedure. Both the Copyright Law and the Trademark Law stipulate that legal compensation can only be applied if the actual loss of the obligee and the illegal income of the infringer cannot be determined. For patent infringement, it should also meet the conditions that there is no patent license fee to refer to or the patent license fee is obviously unreasonable. You can only apply for legal compensation. In other words, legal compensation is always in reverse order. It can be seen that the application of legal compensation for intellectual property rights in China is complementary in the way of determining the amount of infringement compensation.
In the trial practice, the following problems are easy to appear: ① The obligee directly requests the court to apply legal compensation to order the infringer to pay a certain amount of compensation, and what should the people's court do; (2) If the obligee claims to take the actual loss as the calculation basis, but the evidence provided is not enough to prove its loss, and the infringer's infringement profit cannot be ascertained, can the court directly apply the statutory compensation when the obligee does not apply the statutory compensation? (3) In copyright infringement disputes, when the infringer infringes several works of the obligee, is the legal compensation amount based on one case or one infringing work?
(1) If the parties directly request the application of the statutory compensation method, I believe that in this case, the court cannot simply reject their claims on the grounds that the parties have improperly chosen the compensation method. On the one hand, it should fully reflect the right of the parties to dispose of their civil rights, that is, the obligee can make a statutory compensation request to the court, on the other hand, it should reflect the legislative spirit, that is, the obligee should explain the reasons when making a statutory compensation request. The judge shall first exercise the right of interpretation to the parties and inform the plaintiff to provide evidence on the reasons and facts for applying for statutory compensation. If the evidence provided by the plaintiff can prove the amount of loss or profit of the infringer, the amount of compensation can be determined. If it cannot be determined, the judge may determine the amount of compensation as appropriate within the statutory compensation range. If the plaintiff refuses to give evidence, it may put him at risk of losing the case.
(2) Regarding whether the court can directly apply the statutory compensation, the author thinks that if the obligee claims to use the actual loss or the infringer's profit as the basis for compensation calculation, but after the court hearing, it is found that the evidence provided by the obligee is not enough to confirm its actual loss and the infringer's infringing profit cannot be determined, at this time, the obligee should be allowed to make a statutory compensation request before the end of the court debate, if the obligee does not. The people's court may apply statutory compensation ex officio if it considers that it meets the applicable conditions of statutory compensation according to the circumstances ascertained in the trial of the case. It should be noted that the applicable conditions of statutory compensation should be strictly grasped. If the actual loss of the obligee and the infringing profit of the infringer can be basically ascertained, or the amount of compensation can be determined according to the specific circumstances of the case and sufficient evidence, the statutory compensation should not be directly applied.
(3) In the dispute of copyright infringement, when the legal compensation is applied to several works whose rights are infringed by the infringer, the author thinks that one work should be taken as the calculation unit instead of one, and each work should be treated at the discretion of less than 500,000 yuan, and then the final compensation amount should be determined by adding them.
(four) the factors that should be considered when applying statutory compensation to determine the amount of compensation.
When applying statutory compensation, judges will not make assumptions out of thin air. However, according to the actual situation of the case, we should comprehensively consider various factors to make the amount of compensation as reasonable as possible. Copyright Law, Trademark Law and relevant judicial interpretations in the Supreme People's Court all stipulate that the people's court shall determine the legal compensation amount according to the circumstances of the infringement. The author believes that judges should generally consider the following factors when applying statutory compensation.
1 In general, the obligee may suffer and the infringer may gain.
When a judge determines the amount of compensation according to the specific circumstances of a case, the most fundamental consideration should be the possible actual loss of the obligee and the possible infringement income of the infringer. By comparing the amount between the two, the compensation amount should be determined within the highest range as appropriate on the basis of the higher amount. When the actual loss of the obligee and the infringing profit of the infringer cannot be specifically determined, but the possible actual loss is obviously greater than the possible profit of the infringer, the judge should determine the maximum amount of damages based on the possible actual loss of the obligee, otherwise the compensation amount should be determined based on the possible infringing profit of the infringer. It should be noted that the reasonable expenses paid by the infringed person to stop the infringement, such as attorney's fees and notary fees, should be included in the legal compensation amount.
2 Infringement and its duration and scope of influence
In tort, the harm of direct infringement is generally greater than that of indirect infringement, and the harm of comprehensive infringement is greater than that of partial infringement. Different torts result in different losses and compensation for the obligee. For the long-lasting and wide-ranging infringement, the damage caused to the obligee is generally large, and more compensation should be given.
3 the degree of subjective fault of the infringer
Based on the imputation principle that the compensation for intellectual property infringement damages is mainly based on fault liability and no-fault liability is the exception, the subjective fault of the infringer is the main factor to determine the amount of damages. When applying statutory compensation, we should consider the degree of subjective fault of the infringer. Within the statutory compensation limit, it is also the concrete practice of most countries in the world to increase the compensation amount for those who are at fault and reduce the compensation amount for those who are not at fault.
4 consequences caused by infringement
This mainly refers to the social impact of infringement, which will inevitably have a certain adverse impact on the right holder's goodwill or reputation and spirit, and the right holder needs certain funds and energy to make up for the trauma. Therefore, when determining the amount of legal compensation, the consequences caused by infringement should also be an important factor to consider.
5. Types and values of specific infringing objects
Different types of intellectual property have different values, so do different types of intellectual property. For example, the value of well-known trademarks is generally greater than that of famous trademarks, and the value of famous trademarks is generally greater than that of general trademarks. Intellectual property rights with different values are infringed, and the loss suffered by the obligee is different, and the amount of compensation obtained is also different.
(5) Legal compensation and the burden of proof of the parties.
The application of statutory compensation does not mean that the obligee does not need to provide evidence. In fact, the obligee still has the obligation to prove the existence of infringement facts, certain infringement circumstances and the fact that the actual loss or the amount of benefit of the infringer cannot be determined due to non-self reasons. However, the burden of proof should not be too high. At the same time, for the defendant, if the plaintiff's actual loss cannot be calculated, if he does not actively prove the fact that he has benefited from the infringement, the judge can only infer the amount of compensation according to the existing facts and evidence within the statutory compensation limit. However, the application of statutory compensation may not be beneficial to the defendant, because judges generally adopt the principle of high or low according to the principle of full compensation when estimating the amount of compensation. So the defendant's proof is still very important.
It should be noted that in judicial practice, the amount of damages determined by applying statutory compensation discretion cannot be too low, otherwise it will not be conducive to protecting the legitimate rights of obligees. On the other hand, the amount of damages determined at discretion should not be too high, otherwise it will affect the enthusiasm of the obligee to claim damages, and lead the obligee to give up proof when he can claim damages in order to seek more compensation than proof. The ideal discretionary damages should strike a balance between protecting the legitimate rights of the obligee and encouraging the obligee to give evidence actively. Let the obligee who claims damages realize that when he can claim evidence of damages (the actual loss of the obligee or the infringement income of the infringer), he must actively provide evidence. If he doesn't give evidence, the expected legal compensation may be less than the damages that can be obtained by taking the initiative to give evidence.
(a) the provisions of the legal compensation system in laws and judicial interpretations should be unified.
In the current copyright law, trademark law and the Supreme People's Court's judicial interpretation on the trial of patent disputes, the applicable provisions on statutory compensation are inconsistent. The author believes that the conditions for applying statutory compensation to all kinds of intellectual property infringement damages should be basically unified. In addition, the application of statutory compensation should not be limited to three types of intellectual property infringement cases: copyright infringement, trademark infringement and patent infringement. For cases of intellectual property infringement such as unfair competition and trade secrets, if it is difficult to determine the actual loss or infringement profit by other means, the scope of compensation shall also be stipulated by law, and the amount of compensation shall be determined by the judge at his discretion. In fact, in judicial practice, judges have applied statutory compensation in other intellectual property cases such as unfair competition.
(two) clearly define the principle of statutory compensation and the principle of liability.
In view of the fact that China's current intellectual property law does not clearly stipulate the compensation principle and imputation principle of statutory compensation for infringement damage, in order to effectively standardize the application of statutory compensation and reasonably determine the amount of statutory compensation, the author suggests that legislation should clearly stipulate the principle of statutory compensation as full compensation and the imputation principle with fault liability as the main exception.
(three) clear the applicable units of statutory compensation
Whether statutory compensation is applicable to the calculation of works, trademarks, patents and cases is inconsistent and irregular in judicial practice, and the law should make clear provisions on it.
(4) Cases in which statutory compensation can be directly applied.
In order to fully protect the interests of obligees and maximize judicial justice and efficiency, the author believes that we should learn from the practices of most countries in the world. According to the nature of the case, the obligee of some infringement cases is given the right to directly choose to apply legal compensation. According to the nature of the case, the cases to which statutory compensation applies can be divided into two categories. One is because it is difficult for the parties to prove their gains and losses. After the parties have made reasonable efforts to prove it, legal compensation can only be applied to the situation that the actual loss of the obligee and the income of the infringer are still difficult to find out. Most cases of intellectual property infringement fall into this category. One is that the nature of infringement determines that the loss or gain is difficult to determine. For example, in the case of infringement of the author's personal rights, the law stipulates that the parties have the right to directly choose to apply statutory compensation.
Four. conclusion
The establishment of statutory compensation system provides a legal basis for judges to determine the amount of compensation in time when the actual loss of the obligee or the interests of the infringer are difficult to find out. However, in the application of specific cases, judges have considerable discretion on how to determine the specific amount of compensation within the statutory scope. Discretion is bound to have the judge's subjective judgment, which depends to a great extent on the judge's professional quality and professional ethics. How to prevent discretion from becoming the arbitrary discretion of law enforcers and how to obtain the legitimacy and rationality of judge's discretion is a realistic and sharp problem that we need to face when applying statutory compensation. Judicial decisions will never have inherent authority and legitimacy, because judges have the right to decide. This requires us to make necessary provisions in legislation to minimize the uncertainty when judges apply statutory compensation to calculate the amount of compensation, to maximize the arbitrariness that may be brought by judges' discretion, to reasonably determine the amount of statutory compensation, and to achieve the balance between the interests of obligees and social interests while providing effective legal protection for obligees.