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Can Copyright Counterfeits in a Non-Prosecution Criminal Case for Lacking Criminal Intention Be Confiscated?
I. Preface
Recently, because of the epidemic, a large number of goods have been imported from overseas, and so has the number of cases involving infringement of trademark right or copyright seized at the border been increasing. After the customs refers a case to a district prosecutors office, the prosecutor, in addition to considering the objective criminal act, shall also take into account whether or not the defendant has any criminal intention to commit the same. Once the prosecutor determines that there is no subjective criminal intention on the part of the defendant, he/she may then decide not to prosecute the case on the ground that the suspicion of the offence is insufficient pursuant to Article 252(10) of the Code of Criminal Procedure. In case of such occurrence, can those infringing counterfeits be confiscated?
Article 98 of the Trademark Act clearly stipulates that all articles or documents that constitute infringement of rights in trademarks, certification marks, or collective trademarks shall be confiscated, regardless of whether such articles or documents belong to the offender. Therefore, even if the prosecutor does not prosecute the case because of insufficient suspicion of offense, he/she may thereafter apply to the court for confiscation in accordance with the said provision to prevent the trademark counterfeits from entering the market again. Unlike the Trademark Act, the Copyright Act does not have any regulation regarding this absolute obligation to confiscate, thus bringing about the occurrence that recently courts repeatedly gave rulings rejecting the prosecutor's petition for confiscating copyright counterfeits. Indeed, it is necessary to review the relevant confiscation regulations and to discuss any remedial possibility, as stated briefly below:
II. In respect of the Copyright Act
Regarding the confiscation of copyright counterfeits, the provision only deals with copyright counterfeits being optical disks. According to Article 98 of the Copyright Act, in an offense set forth in Article 91-3 and Article 91bis-3, an article used in the commission of the offense, or in preparation for the commission of the offense, or an article derived from the commission of the offense, may be confiscated, regardless of whether it belongs to the offender. This provision just discusses the offense against the Copyright Act relating to optical disks, i.e. "a person who commits the offense in Article 91-2 by means of reproducing onto an optical disk with the intent to sell or rent the same" (Article 91-3 of the Copyright Act) and "a person who distributes or with intent to distribute publicly displays or possesses a copy knowing that it infringes on economic rights and the reproduced copy is an optical disk (Article 91bis-3 of the Copyright Act).
Today, fewer and fewer people are using optical disks. Should the copyright counterfeit is not an optical disk, for those offenses specified under other provisions of the Copyright Act, such as "offenses involving a violation of Article 91bis-2 of the Copyright Act and the reproduced copy is not an optical disk", the confiscation regulations therefor shall still be subject to the relevant provisions of the Criminal Code.
III. In respect of the Criminal Code and the Code of Criminal Procedure
Articles 38-1 and 38-2 of the Criminal Code stipulate, respectively, that "contraband shall be confiscated, whether it belongs to the offender or not" and "a thing used in the commission of or preparation for the commission of an offense or a thing derived from or acquired through the commission of an offense may be confiscated only if it belongs to the offender; if there are special provisions, these special provisions shall govern." Given that a copyright counterfeit is always not a contraband and the prosecutor ruled that the suspicion of offense was insufficient, the confiscation rule specified in the above-mentioned two provisions were not applicable when the prosecutor decided not to prosecute the case pursuant to Article 252(10) of the Code of Criminal Procedure.
Article 259bis of the Code of Criminal Procedure provides that for cases that have been issued for a disposition of dismissal or deferred prosecution pursuant to Article 253 or Article 253bis, the prosecutor may make a separate petition to the court for confiscation of the articles specified in Articles 38-2 and 38-3 as well as the criminal gains specified in Article 38bis-1 and 38bis-2 of the same Code. Nevertheless, this provision is specifically for cases where the seized articles may constitute an offense but are allowed to be circulated because the prosecutor rules not to prosecute the case or to defer prosecution at his/her discretion, which would impair the social benefits as well as the rights and interests of the copyright owner. However, this provision is not applicable to the offenders whose suspicion of offense is insufficient specified in Article 252(10) of the Code of Criminal Procedure. Such occurrence results in the circumstances in which "reproductions violating copyright other than optical disks" cannot be confiscated through criminal procedure. The occurrence of the above results in "copyright violated reproductions, other than optical disks" under Article 252(10) of the Code of Criminal Procedure cannot be confiscated by criminal procedure, which would substantially create a loophole by which illegal reproduced articles are allowed to flow into the market.
IV. In respect of the Customs Anti-smuggling Act
Since copyright counterfeits are seized by the customs at the border, once the criminal procedure is closed, the customs may separately examine if the importer's act violates the relevant administrative regulations. It can refer to Articles 26-1 and 26-2 of the Administrative Penalty Act, providing that " if one and single act constitutes simultaneously a criminal offense or offenses as well as a breach of duty under administrative law, it shall be punishable under the criminal law; however, an administrative penalty may be additionally imposed in the case that the act is punishable by any other types of administrative penalty or that no confiscation is pronounced by the court over the things that may be confiscated because of the act" and "in the case of an act described in the preceding paragraph over which a final decision of non-prosecution or deferred prosecution is made, or over which a final judgment of acquittal, exemption from prosecution, lack of jurisdiction, not to be put on trial, not placed under protective measures, exemption from punishment or reprieve from punishment is pronounced, penalty may be imposed under the provisions with respect to breach of duty under administrative law."
According to Article 39bis of the Customs Anti-smuggling Act, where import or export of cargoes, other than genuine goods parallel imported, that have been declared to infringe any patent right, trademark right or copyright, the importer or exporter in question shall be, except otherwise specified in other acts and regulations, imposed with a fine no more than three times the value of the cargoes, and the cargoes shall be confiscated. Therefore, in a case specified in Article 252(10) of the Code of Criminal Procedure where confiscation cannot be effected through criminal procedure, the right owner should remind the customs to impose penalties and declare for confiscation, at its discretion. In particular, if the copyright counterfeits have been transferred from the customs to the court's loot storage warehouse, it is even more important to remind the prosecutor to write a letter requesting the customs to proceed with any follow-up disposition by law when the criminal procedure for the decision of non-prosecution is closed, so as to implement the customs' duty to protect intellectual property rights at the border.