Recent Federal Decisions and Emerging Trends in U.S. Defend Trade Secrets Act Litigation

I. Introduction

  The enactment of the Defend Trade Secrets Act of 2016[1] (the “DTSA”) marks a milestone in the recent development of trade secret law in the United States (“U.S.”).[2] Recent federal decisions and emerging trends in DTSA litigation regarding the following issues deserve the attention of Taiwanese companies who might be involved in DTSA litigation in U.S. federal courts (“federal courts”): (1) whether the DTSA displaces any other civil remedies provided by the existing trade secret laws; (2) whether a plaintiff should pay attention to any pleading standard when bringing a DTSA claim in federal court; (3) whether a federal court will easily grant an ex parte application for seizure order under the DTSA (an “ex parte seizure order”); and (4) whether the DTSA applies to trade secret misappropriations that occurred before the DTSA came into effect. This article provides insights into these developments and trends, and concludes with their implications at the end.

II. The DTSA does not displace any other civil remedies provided by the existing trade secret laws, and federal courts may nonetheless turn to pre-DTSA laws and decisions for guidance

  The DTSA states that it does not “preempt” or “displace” any other civil remedies provided by other federal and state laws for trade secret misappropriation.[3] Prior to the enactment of the DTSA, the civil protection and remedies of trade secrets in the U.S. have traditionally been provided under state laws.[4] The DTSA provides federal courts with original jurisdiction[5] over civil actions brought under the DTSA, giving trade secret owners an option to litigate trade secret claims in federal courts.[6] As a result, the DTSA adds a layer of protection for trade secrets and creates a federal path for plaintiffs to pursue civil remedies.[7]

  Some commentators point out that federal courts, when hearing DTSA claims, construing DTSA provisions or analyzing DTSA claims, oftentimes turn to state laws and decisions existing prior to the enactment of the DTSA for guidance.[8] Various decisions show that federal courts tend to look to local state laws and pre-DTSA decisions when hearing DTSA claims or making decisions.[9] This suggests that pre-DTSA trade secret laws and prior decisions remain an indispensable reference for federal courts.

III. A plaintiff should pay careful attention to the plausibility pleading standard when bringing a DTSA claim in federal court

  A plaintiff's pleading in his complaint must satisfy the plausibility pleading standard when the plaintiff brings a DTSA claim in federal court.[10] Otherwise, the plaintiff's complaint may be dismissed by the federal court.[11] Filing a motion requesting dismissal of the plaintiff's complaint[12] on the grounds of the plaintiff's failure of stating plausible claims for relief is thus a defense that a defendant may employ to defeat the plaintiff's claim in the early stage.[13]

  The DTSA opens the door of federal courts to trade secret plaintiffs to pursue civil remedies,[14] but the DTSA does not “guarantee unfettered access to the federal courts.”[15] When filing a DTSA lawsuit in federal court, a plaintiff must state “the grounds for the court's jurisdiction,” the plaintiff's claims (entitlement to relief), and the plaintiff's “demand for the relief sought” in his complaint.[16] The claim and statement pled by the plaintiff in his complaint must meet the “plausibility” threshold.[17] In other words, at the pleading stage, a plaintiff should plead facts sufficiently demonstrating that all prerequisites of his claim (e.g., jurisdiction and venue,[18] elements of a claim required by the DTSA,[19] etc.) are satisfied when bringing a DTSA claim in federal court.[20] For instance, in addition to claiming the existence of his trade secret, a plaintiff should state how his trade secret was misappropriated through improper means.[21] However, in the context of trade secrets, the plausibility pleading standard can be challenging to a plaintiff because it is never easy to balance between “satisfying the required pleading standard” and “avoiding disclosing too much information about the trade secret in a pleading.”[22]

  Let's take pleading the existence of a trade secret as an example. Under the plausibility pleading regime, a plaintiff is required to plead all relevant facts of trade secret (elements)[23] defined by the DTSA to affirmatively prove the existence of his trade secret.[24] In other words, a plaintiff needs to state sufficient facts indicating that the information in dispute has economic value while not being known to the public, and reasonable steps have been taken to maintain the secrecy of that information,[25] all of which plausibly suggest that the information in dispute qualifies as a trade secret.[26] Federal courts do not require a plaintiff to disclose his trade secret in detail in his complaint.[27] Nevertheless, a plaintiff should be able to provide the “general contour” of the alleged trade secret that he seeks to protect.[28] Federal courts would be reluctant to see that a plaintiff, merely “identify[ing] a kind of technology” or “point[ing] to broad areas of technology,” or barely asserting that the misappropriated information is confidential, then “invit[ing] the court to hunt through the details in search of items meeting the statutory definition.”[29] Instead of simply alleging that the subject matter at issue involves a trade secret, a plaintiff's complaint should contain descriptions identifying the plaintiff's trade secret.[30] For instance, in his pleading, a plaintiff has to tell what information is involved and what efforts have been made to maintain the confidentiality of such information.[31] For further example, a plaintiff should provide documents or information constituting the alleged trade secret rather than merely listing general topics or categories of information.[32]

IV. Obtaining a DTSA ex parte seizure order is challenging as federal courts tend to take a conservative approach to prevent abuse of this ex parte seizure remedy

  Since the DTSA came into effect, federal courts rarely grant an ex parte application for seizure order under the DTSA.[33] The provision for ex parte seizure orders is a controversial part of the DTSA[34] as it allows a court, upon ex parte application and if all DTSA requirements are met, to issue a civil order “for the seizure of property necessary to prevent the propagation or dissemination of the trade secret.”[35] So far federal courts have been hesitant to order DTSA ex parte seizures and are giving great deference to the statutory text of the DTSA seizure order provision.[36] Only when a federal court finds it “clearly appears from specific facts” that certain requirements are met[37] and only in “extraordinary circumstances”[38] may a federal court issue an ex parte seizure order.[39] When being confronted with an ex parte application for seizure order under the DTSA, federal courts tend to favor a conservative approach to prevent the abuse of this ex parte seizure remedy.[40] If any alternative equitable relief is available to achieve the same purpose, federal courts will likely find it unnecessary to issue an ex parte seizure order.[41] In addition, a plaintiff's mere assertion that the defendant, if given notice, would destroy evidence or evade a court order, but without showing that the defendant “had concealed evidence or disregarded court orders in the past,” will likely be insufficient to persuade the court to issue an ex parte seizure order.[42] Furthermore, federal courts will decline to order an ex parte seizure if a plaintiff fails to meet his burden demonstrating that the information in dispute constitutes a trade secret.[43] All of the foregoing suggests that one will likely face an uphill struggle in federal court when seeking to obtain an ex parte seizure order under the DTSA.[44]

  Though federal courts sparingly order DTSA ex parte seizures, to date at least one federal court did issue a published DTSA ex parte seizure order, which appeared in Mission Capital Advisors, LLC v. Romaka.[45] In Romaka, the defendant allegedly downloaded the plaintiff's client and contact lists to the defendant's personal computer without the plaintiff's authorization; the plaintiff filed an ex parte motion seeking to seize some properties containing the plaintiff's trade secrets or enjoin the defendant from disclosing that information.[46] During the trial, the defendant neither acknowledged receipt of the court's prior orders[47] nor appeared before the court as ordered,[48] all of which together with other facts in Romaka convinced the court that other forms of equitable relief would be inadequate and the defendant would likely evade or otherwise disobey the court order.[49] After reviewing the facts of this case along with DTSA requirements item by item, the Romaka court found it clearly appears from specific facts that all requirements for an ex parte seizure order under the DTSA are met,[50] and thus, issued a said seizure order as requested by the plaintiff.[51] Romaka gives us some hints about what circumstances would cause a federal court to order a DTSA ex parte seizure.[52] This case tells us that evading or disregarding court-mandated actions is likely demonstrating to the court a propensity to disobey a future court order and may probably increase the likelihood of meriting a DTSA ex parte seizure order.[53] Moreover, echoing other decisions rendered by federal courts, Romaka reveals that federal courts tend to approach ex parte seizure order applications in a gingerly way.[54]

  Federal courts take a conservative approach toward ex parte seizure order to curtail abuse of such order[55] does not mean that no injunctive relief is available to victims of trade secret misappropriation. Injunctive relief provided by other federal laws or state laws[56] is nonetheless available to those victims.[57] As long as the facts of the case before the court meet all elements required for injunctive relief, it is not rare for federal courts to grant injunctive relief other than an ex parte seizure order.[58]

V. The DTSA might apply to a pre-DTSA trade secret misappropriation that continues after the DTSA became effective

  The DTSA expressly states that it applies to any trade secret misappropriation that “occurs on or after the date of the enactment” of the DTSA.[59] Therefore, the DTSA does not apply to trade secret misappropriations that began and ended before the effective date of DTSA.[60] In practice, it is possible that a federal court will dismiss a plaintiff's DTSA claim if the plaintiff fails to state that the alleged trade secret misappropriations (either in whole or in part) took place after the DTSA came into effect.[61]

  Federal courts have begun addressing or recognizing that the DTSA might apply to trade secret misappropriations that occurred prior to and continued after the enactment date of the DTSA.[62] However, a plaintiff should “plausibly” and “sufficiently” plead in his claim that some parts of the alleged continuing misappropriation of trade secrets occurred after the DTSA became effective.[63] Some critics opine that, in the case of a continuing trade secret misappropriation that took place before and continued after the DTSA was enacted, the available recovery shall be limited to “post-DTSA misappropriation.”[64]

  By being mindful of the foregoing, maybe someday a plaintiff will bring a DTSA claim for a pre-DTSA misappropriation of trade secrets that continues after the DTSA is in effect.[65] In this kind of litigation, one should pay attention to whether the plaintiff has plausibly and sufficiently alleged the part of misappropriation that occurred after the enactment date of the DTSA.[66] When a plaintiff fails to plausibly and sufficiently alleges the post-DTSA misappropriation part, the defendant stands a chance to convince the court to dismiss the plaintiff's claim.[67]

VI. Conclusion

  To sum up, recent federal decisions and emerging trends in DTSA litigation provide the following implications to Taiwanese companies who might be involved in DTSA litigation in federal court:

1. The DTSA does not preempt or displace any other civil remedies provided by other federal laws and state laws.[68] Rather, the DTSA adds a layer of protection for trade secrets and creates a federal path for plaintiffs to pursue civil remedies.[69] Federal courts tend to turn to local state laws and pre-DTSA decisions for guidance when hearing DTSA claims or making decisions.[70] Do not ignore pre-DTSA trade secret laws or prior decisions as they remain an indispensable reference for federal court.

2. A plaintiff's pleading must satisfy the plausibility pleading standard when the plaintiff brings a DTSA claim in federal court.[71] Whether the plaintiff's pleading satisfies the plausibility pleading standard is likely one of the hard-fought battles between the parties in the early stage of the litigation. The plausibility pleading regime does not require a plaintiff to disclose his trade secrets in detail in his complaint.[72] However, a plaintiff should be able to describe and identify his trade secrets.[73]

3. Seeking to secure a DTSA ex parte seizure order in federal court will likely face an uphill battle.[74] Obtaining alternative injunctive relief would be easier than obtaining a DTSA ex parte seizure. When being confronted with an ex parte application for seizure order under the DTSA, federal courts tend to favor a conservative approach to prevent the abuse of this ex parte seizure remedy.[75] Notwithstanding the foregoing, as long as the facts of the case before the court meet all elements required for injunctive relief, it is not rare for federal courts to grant injunctive relief other than an ex parte seizure order.[76]

4. The DTSA might apply to trade secret misappropriations that occurred prior to and continued after the enactment date of the DTSA.[77] When a DTSA litigation involves this kind of continuing misappropriation, one of those hard-fought battles between the parties during litigation will likely be whether the plaintiff has plausibly and sufficiently stated the part of misappropriation that occurred after the DTSA came into effect.[78] When a plaintiff fails to plausibly and sufficiently alleges the post-DTSA misappropriation part, the defendant stands a chance to convince the court to dismiss the plaintiff's claim.[79]


[1] The Defend Trade Secrets Act of 2016, Pub. L. No. 114-153, 130 Stat. 376 (May 11, 2016) (mostly codified in scattered sections of 18 U.S.C. §§1836-1839 [hereinafter the “DTSA”].

[2] Mark L. Krotoski, Greta L. Burkholder, Jenny Harrison & Corey R. Houmand, The Landmark Defend Trade Secrets Act of 2016, at 3 (May 2016); Bradford K. Newman, Jessica Mendelson & MiRi Song, The Defend Trade Secret Act: One Year Later, 2017-Apr Bus. L. Today 1, 1 (2017).

[3] 18 U.S.C. §1838.

[4] S. Rep. No. 114-220, at 2 (2016) [hereinafter “S. Rep.”]; Kaylee Beauchamp, The Failures of Federalizing Trade Secrets: Why the Defend Trade Secrets Act of 2016 Should Preempt State Law, 86 Miss. L.J. 1031, 1033, 1045 (2017); Zoe Argento, Killing the Golden Goose: The Dangers of Strengthening Domestic Trade Secret Rights in Response to Cyber-Misappropriation, 16 Yale J. L. & Tech. 172, 177 (2014); James Pooley, The Myth of the Trade Secret Troll: Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 Geo. Mason L. Rev. 1045, 1045 (2016); John Conley, New Federal Trade Secret Act and Its Impact on Life Sciences, Genomics L. Rep. (Aug. 12, 2016), https://www.genomicslawreport.com/index.php/2016/08/12/new-federal-trade-secret-act-and-its-impact-on-life-sciences/; Newman, Mendelson & Song, supra note 2, at 1.

[5] 18 U.S.C. §1836(c).

[6] Krotoski, Burkholder, Harrison & Houmand, supra note 2, at 7; Beauchamp, supra note 4, at 1033, 1045, 1072; Lily Li & Andrea W. Paris, Help! What Are My (Immediate) Defenses to a Federal Trade Secret Claim?, 58-Sep Orange County Law. 52, 52 (2016); Newman, Mendelson & Song, supra note 2, at 1.

[7] Conley, supra note 4.

[8] William M. Hensley, Post-Enactment Case Law Developments under the Defend Trade Secrets Act, 59-Jul Orange County Law. 42, 44 (2017); Robert B. Milligan & Daniel Joshua Salinas, Emerging Issues In the Defend Trade Secrets Act's Second Year, Seyfarth Shaw LLP: Trading Secrets (June 14, 2017), https://www.tradesecretslaw.com/2017/06/articles/dtsa/emerging-issues-in-the-defend-trade-secrets-acts-second-year/; Jeffrey S. Boxer, John M. Griem, Jr., Alexander G. Malyshev & Dylan L. Ruffi, The Defend Trade Secrets Act – 2016 In Review, Carter Ledyard & Milburn LLP (Jan. 19, 2017), http://www.clm.com/publication.cfm?ID=5579; Rajiv Dharnidharka, Andrew D. Day & Deborah E. McCrimmon, The Defend Trade Secrets Act One Year In – Four Things We've Learned, DLA Piper (May 30, 2017), https://www.dlapiper.com/en/us/insights/publications/2017/05/defend-trade-secrets-act-four-things-learned/; Joshua R. Rich, The DTSA After One Year: Has the Federal Trade Secrets Law Met Expectations?, McDonnell Boehnen Hulbert & Berghoff LLP, Vol. 15 Issue 3 Snippets 6, 7 (Summer 2017).

[9] HealthBanc International, LLC v. Synergy Worldwide, 208 F.Supp.3d 1193, 1201 (D.Utah 2016); Phyllis Schlafly Revocable Trust v. Cori, No. 4:16CV01631 JAR, 2016 WL 6611133, at *2-5 (E.D. Mo. Nov. 9, 2016); Panera, LLC v. Nettles, No. 4:16-cv-1181-JAR, 2016 WL 4124114, at *4 fn.2 (E.D. Mo. Aug. 3, 2016); Henry Schein, Inc. v. Cook, 191 F.Supp.3d 1072, 1077, 1079-1080 (N.D.Cal. 2016); Engility Corp. v. Daniels, No. 16-cv-2473-WJM-MEH, 2016 WL 7034976, at *8-10 (D. Colo. Dec. 2, 2016); M.C. Dean, Inc. v. City of Miami Beach, Florida, 199 F. Supp. 3d 1349, 1353-1357 (S.D. Fla. 2016); GTO Access Systems, LLC v. Ghost Controls, LLC, No. 4:16cv355-WS/CAS, 2016 WL 4059706, at *1 fn.1, *2-4 (N.D. Fla. June 20, 2016); Earthbound Corp. v. MiTek USA, Inc., No. C16-1150 RSM, 2016 WL 4418013, at *9-10 (W.D. Wash. Aug. 19, 2016); Kuryakyn Holdings, LLC v. Ciro, LLC, 242 F.Supp.3d 789, 797-800 (W.D. Wisc. 2017).

[10] Michelle Evans, Plausibility under the Defend Trade Secrets Act, 16 J. Marshall Rev. Intell. Prop. L. 188, 190 (2017); Eric J. Fues, Maximilienne Giannelli & Jon T. Self, Practice Tips for the Trade Secret Holder: Preparing a Complaint Under the Defend Trade Secrets Act, Inside Counsel (June 14, 2017), https://www.finnegan.com/en/insights/practice-tips-for-the-trade-secret-holder-preparing-a-complaint.html; David R. Fertig & Michael A. Betts, The Defend Trade Secrets Act: Jurisdictional Considerations—Part I, 29 No. 7 Intell. Prop. & Tech. L.J. 3, 3-5 (2017) [hereinafter “Considerations—Part I”].

[11] M.C. Dean, 199 F. Supp. 3d at 1357; Chatterplug, Inc. v. Digital Intent, LLC, No. 1:16-cv-4056, 2016 WL 6395409, at *3 (N.D. Ill. Oct. 28, 2016); Raben Tire Co. v. McFarland, No. 5:16-CV-00141-TBR, 2017 WL 741569, at *2-3 (W.D. Ky. Feb. 24, 2017).

[12] Fed. R. Civ. P. 12(b).

[13] Jessica Engler, The Defend Trade Secrets Act at Year One, 12 No. 4 In-House Def. Q. 20, 22 (2017).

[14] Conley, supra note 4.

[15] Fertig & Betts, Considerations—Part I, supra note 10, at 3.

[16] Pleading the grounds for the court's jurisdiction, the plaintiff's claim (entitlement to relief), and the plaintiff's demand for the relief sought are requirements for the pleading under Article 8 of the Federal Rules of Civil Procedure (the “FRCP”). Fed. R. Civ. P. 8(a). The FRCP applies to “all civil actions and proceedings in the United States district courts.” Fed. R. Civ. P. 1. Thus, the FRCP requirements also apply to DTSA civil actions brought in federal courts. Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-4.

[17] In Bell Atlantic Corporation v. Twombly, the U.S. Supreme Court interpreted Article 8(a) of the FRCP, introduced the concept of “plausibility pleading,” and established the plausibility pleading standard. Bell Atlantic Corporation v. Twombly, 550 U.S. 544, 547, 570 (2007). Under the plausibility pleading standard, a plaintiff is not required to provide “detailed factual allegations” in his complaint, but he needs to state the grounds of his claim (entitlement to relief), which should be “more than labels and conclusions.” Id. at 555, 570. At least, the plaintiff's complaint should contain enough facts showing that the plaintiff's claim is “plausible on its face.” Id. Two years after Twombly, in Ashcroft v. Iqbal the U.S. Supreme Court expressly affirmed that the plausibility pleading standard established in Twombly applies to “all civil actions.” Ashcroft v. Iqbal, 556 U.S. 662, 684 (2009). Accordingly, the plausibility pleading standard applies to all DTSA claims brought in federal courts. Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-5. It is worth mentioning that some commentators are of the opinion that federal pleading stands are often higher than those required under state laws. Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.

[18] Gold Medal Prods. Co. v. Bell Flavors & Fragrances, Inc., No. 1:16-CV-00365, 2017 WL 1365798, at *5-8 (S.D. Ohio, Apr. 14, 2017). See also Fertig & Betts, Considerations—Part I, supra note 10, at 4; David R. Fertig & Michael A. Betts, The Defend Trade Secrets Act: Jurisdictional Considerations—Part II, 29 No. 8 Intell. Prop. & Tech. L.J. 12, 12 (2017) [hereinafter “Considerations—Part II”].

[19] McFarland, 2017 WL 741569, at *2-3; M.C. Dean, 199 F. Supp. 3d at 1357; Digital Intent, 2016 WL 6395409, at *3. See also Fertig & Betts, Considerations—Part I, supra note 10, at 3-5.

[20] Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 5; Fertig & Betts, Considerations—Part II, supra note 18, at 13-14.

[21] Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.

[22] Id.

[23] 18 U.S.C. §1839(3).

[24] McFarland, 2017 WL 741569, at *2.

[25] Fues, Giannelli & Self, supra note 10.

[26] Engler, supra note 13, at 21-22. Providing help in identifying the trade secret in question by requesting as much detail as possible is a common point shared by the plausibility pleading standard in the U.S., and the “Case Detail Explanation Form” (to be filled out by the complainant or the victim) attached to Article 6 of the “Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority” in Taiwan. However, they apply to different circumstances:

1. The plausibility pleading standard in the U.S. sets forth the threshold requirements to be met by a plaintiff in his pleading when the plaintiff brings a civil claim in federal court and applies to all federal civil actions. On the other hand, the aforementioned Case Detail Explanation Form in Taiwan is a form to be filled out by the complainant or the complainant's agent. This Form provides a reference to prosecutors for the investigation of major trade secret cases (criminal cases), but it does not serve as the basis for a prosecutor to determine whether to prosecute a case.

2. The plausibility pleading standard is not only followed by those bringing a federal civil action but also adopted by federal courts when hearing civil cases. Contrarily, the aforementioned Case Detail Explanation Form in Taiwan is provided to prosecutors as a reference for investigation. A prosecutor is not bound to prosecute a case simply based on the information provided in this Form. Likewise, this Form and the information provided therein are not binding on any court in Taiwan.

A commentator noted that the Ministry of Justice in Taiwan referred to the “Prosecuting Intellectual Property Crimes (Manual)” of the U.S. Department of Justice when adopting the “Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority” on April 19, 2016. “Article 6 indicates that the complainant or the victim should first fill out the Case Detail Explanation Form, which would help the prosecution authority not only figures out whether the allegedly misappropriated trade secret meets the elements of secrecy, economic value, and secrecy measures under law, but also evaluates whether it is necessary to resort to compulsive measures”. Ti-Chu Chen (陳砥柱), Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority, Louis & Charles Attorneys at Law (遠東萬佳法律事務所) (July 14, 2016), http://www.louisilf.com/zh-tw/posts/2016-07-14 (last visited Dec. 31, 2017). See also Prosecuting Intellectual Property Crimes (Manual) (4th ed. 2013), available at: https://www.justice.gov/sites/default/files/criminal-ccips/legacy/2015/03/26/prosecuting_ip_crimes_manual_2013.pdf. However, the cover of the “Prosecuting Intellectual Property Crimes (Manual)” expressly states that its contents are provided as “internal suggestion to Department of Justice attorneys.” Id. Therefore, the contents of this manual theoretically are not binding on any federal court.

[27] Mission Measurement Corp. v. Blackbaud, Inc, 216 F.Supp.3d 915, 921 (N.D.Ill. 2016).

[28] Digital Intent, 2016 WL 6395409, at *3.

[29] McFarland, 2017 WL 741569, at *2; Blackbaud, 216 F.Supp.3d at 921; Ciro, 242 F.Supp.3d at 798.

[30] Evans, supra note 10, at 191. Some federal court decisions show that requesting the plaintiff to provide sufficient facts describing the trade secret in question is not something newly developed following the enactment of the DTSA. Rather, it has been the position held by federal courts before the DTSA came into effect. AWP, Inc. v. Commonwealth Excavating, Inc., Civil Action No. 5:13cv031., 2013 WL 3830500, at *5 (W.D. Va. July 24, 2013); Events Media Network, Inc. v. Weather Channel Interactive, Inc., Civil No. 1:13–03 (RBK/AMD), 2013 WL 3658823, at *3 (D. N.J. July 12, 2013); Council for Educational Travel, USA v. Czopek, Civil No. 1:11–CV–00672, 2011 WL 3882474, at *4 (M.D. Pa. Sept. 2, 2011); DLC DermaCare LLC v. Castillo, No. CV–10–333–PHX–DGC, 2010 WL 5148073, at *4 (D. Ariz. Dec. 14, 2010).

[31] Blackbaud, 216 F.Supp.3d at 921.

[32] Ciro, 242 F.Supp.3d at 800.

[33] Engler, supra note 13, at 21; Hensley, supra note 8, at 44.

[34] Hensley, supra note 8, at 44; Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Engler, supra note 13, at 20.

[35] 18 U.S.C. §1836(b)(2)(A).

[36] Newman, Mendelson & Song, supra note 2, at 3.

[37] Under the DTSA, a court may, only in “extraordinary circumstances,” issue an ex parte seizure order when “find[ing] that it clearly appears from specific facts that”: (1) “an order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or another form of equitable relief would be inadequate to achieve the purpose of this paragraph because the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order;” (2) “an immediate and irreparable injury will occur if such seizure order is not issued;” (3) “the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application and substantially outweighs the harm to any third parties who may be harmed by such seizure;” (4) “the applicant is likely to succeed in showing that the information is a trade secret and the person against whom seizure would be ordered misappropriated the trade secret of the applicant by improper means or conspired to use improper means to misappropriate the trade secret of the applicant;” (5) “the person against whom seizure would be ordered has actual possession of the trade secret and any property to be seized;” (6) “the application describes with reasonably particularity the matter to be seized and, to the extent reasonable under the circumstances, identifies the location where the matter is to be seized;” (7) “the person against whom seizure would be ordered, or persons acting in concert with such person would destroy, move, hide, or otherwise make such matter inaccessible to the court, if the applicant were to proceed on notice to such person;” and (8) “the applicant has not publicized the requested seizure”. 18 U.S.C. §1836(b)(2)(A)(ii).

[38] 18 U.S.C. §1836(b)(2)(A)(i).

[39] Engler, supra note 13, at 21; Michael T. Renaud & Nick Armington, DTSA and Ex Parte Seizure – Lessons from the First Ex Parte Seizure Under The DTSA, Mintz Levin Cohn Ferris Glovsky and Popeo PC (Aug. 21, 2017), https://www.globalipmatters.com/2017/08/21/dtsa-and-ex-parte-seizure-lessons-from-the-first-ex-parte-seizure-under-the-dtsa; Matthew Werdegar & Warren Braunig, One Year On: the Federal Defend Trade Secrets Act, Daily J. (Apr. 26, 2017), available at: https://www.keker.com/Templates/media/files/Articles/Keker%20(DJ-4_26_17).pdf.

[40] Newman, Mendelson & Song, supra note 2, at 3; Dharnidharka, Day & McCrimmon, supra note 8; Werdegar & Braunig, supra note 39.

[41] OOO Brunswick Rail Mgmt. v. Sultanov, No. 5:17-cv-00017, 2017 WL 67119, *2 (N.D. Cal., Jan. 6, 2017); Magnesita Refractories Company v. Mishra, CAUSE NO. 2:16-CV-524-PPS-JEM, 2017 WL 365619, at *2 (N.D. Ind. Jan. 25, 2017).

[42] Baleriz Carribean Ltd. Corp. v. Calvo, Case 1:16-cv-23300-KMW, at 7 (S.D.Fla. Aug. 5, 2016). See also Renaud & Armington, supra note 39. A commentator opines that federal courts are reluctant to issue an ex parte seizure order against someone who has never concealed evidence or disregarded court orders before. Engler, supra note 13, at 21.

[43] Digital Assurance Certification, LLC v. Pendolino, Case No: 6:17-cv-72-Orl-31TBS, at *1-2 (M.D.Fla. Jan. 23, 2017).

[44] Engler, supra note 13, at 21; Dharnidharka, Day & McCrimmon, supra note 8.

[45] Mission Capital Advisors, LLC v. Romaka, No. 16-cv-05878-LLS (S.D.N.Y. July 29, 2016). Some commentators consider Romaka the very first case in which a federal court ordered a DTSA ex parte seizure after the DTSA became effective. Renaud & Armington, supra note 39.

[46] Romaka, No. 16-cv-05878-LLS, at 1-3.

[47] Id. at 2.

[48] Id.

[49] Id.

[50] In Romaka, the federal district court found the followings after reviewing the facts of this case along with the requirements under the DTSA: (1) “[a]n order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or another form of equitable relief would be inadequate because [the defendant] would evade, avoid, or otherwise not comply with such an order;” (2) “[a]n immediate and irreparable injury to [the plaintiff] would occur if such seizure is not ordered;” (3) “[t]he harm to [the plaintiff] of denying the application outweighs the harm to the legitimate interests of [the defendant];” (4) “[the plaintiff] is likely to succeed in showing that the information at issue is a trade secret based on [the plaintiff's] averments;” (5) “[the plaintiff] is likely to succeed in showing that [the defendant] has misappropriated [the plaintiff's trade secret] by improper means;” (6) “[the plaintiff] is likely to succeed in showing that the [defendant] has actual possession of the [plaintiff's trade secrets]; (7) “[d]espit the risk that [the defendant] would make the [plaintiff's trade secret] inaccessible to the court, or retain unauthorized copies, [the plaintiff] is proceeding on notice;” and (8) “[the plaintiff] is likely to succeed in showing, and has represented, that it has not publicized the requested seizure.” Id. at 2-4.

[51] Id. at 4. In Romaka, the plaintiff also applied for the seizure of its proprietary information other than its client and contact lists. However, the Romaka court denied the plaintiff's request for the seizure of other proprietary information because the plaintiff failed to describe “with sufficient particularity” such information and related facts, such as “confidentiality and irreparable harm.” Id.

[52] Renaud & Armington, supra note 39.

[53] Id.

[54] Newman, Mendelson & Song, supra note 2, at 3; Engler, supra note 13, at 21; Renaud & Armington, supra note 39.

[55] Newman, Mendelson & Song, supra note 2, at 3.

[56] For instance, the injunctive remedies available under the DTSA. 18 U.S.C. §1836(b)(3). For further example, a preliminary injunction or a temporary restraining order available under the FRCP. Fed. R. Civ. P. 65(a), (b).

[57] As stated above, the DTSA does not preempt or displace any other remedies provided by other federal laws and state laws for trade secret misappropriation. 18 U.S.C. §1838.

[58] Cook, 191 F.Supp.3d at 1077, 1076-1077, 1079; Daniels, 2016 WL 7034976, at *10-11, 14; Nettles, 2016 WL 4124114, at *4. See also Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.

[59] DTSA §2(e), Pub. L. No. 114-153, 130 Stat. 376, 381-382.

[60] Werdegar & Braunig, supra note 39; Krotoski, Burkholder, Harrison & Houmand, supra note 2, at 14; Engler, supra note 13, at 21.

[61] Avago Technologies U.S. Inc. v. Nanoprecision Products, Inc., Case No. 16-cv-03737-JCS, 2017 WL 412524, at *9 (N.D.Cal. Jan. 31, 2017); Cave Consulting Group, Inc. v. Truven Health Analytics Inc., Case No. 15-cv-02177-SI, 2017 WL 1436044, at *5 (N.D. Cal. Apr. 24, 2017); Physician's Surrogacy, Inc. v. German, Case No.: 17CV0718-MMA (WVG), 2017 WL 3622329, at *8-9 (S.D. Cal. Aug. 23, 2017). See also Tara C. Clancy, April Boyer & Michael R. Creta, Emerging Trends in Defend Trade Secrets Act Litigation, National Law Review (Sept. 26, 2017), https://www.natlawreview.com/article/emerging-trends-defend-trade-secrets-act-litigation; Milligan & Salinas, supra note 8.

[62] Cook, 191 F.Supp.3d at 1076-1079; Allstate Insurance Company v. Rote, No. 3:16-cv-01432-HZ, 2016 WL 4191015, at *1-5 (D. Or. Aug. 7, 2016); Syntel Sterling Best Shores Mauritius Limited v. Trizetto Group, Inc., 15-CV-211 (LGS) (RLE), 2016 WL 5338550, at *6 (S.D.N.Y. Sept. 23, 2016); Adams Arms, LLC v. Unified Weapon Systems, Inc., Case No. 8:16-cv-1503-T-33AEP, 2016 WL 5391394, at *6 (M.D. Fla. Sept. 27, 2016); Brand Energy & Infrastructure Services, Inc. v. Irex Contracting Group, CIVIL ACTION NO. 16-2499, 2017 WL 1105648, at *3-8 (E.D. Pa. Mar. 24, 2017); Sleekez, LLC v. Horton, CV 16–09–BLG–SPW–TJC, 2017 WL 1906957, at *5-6 (D. Mont. Apr. 21, 2017). See also Rich, supra note 8, at 8.

[63] Unified Weapon Systems, 2016 WL 5391394, at *6; Horton, 2017 WL 1906957, at *5-6. See also Milligan & Salinas, supra note 8; Werdegar & Braunig, supra note 39. A recent federal court decision reveals that federal courts will likely dismiss a DTSA claim if a plaintiff makes no specific allegations other than a “conclusory allegation” of the continuing trade secret misappropriation. Hydrogen Master Rights, Ltd. v. Weston, 228 F.Supp.3d 320, 338 (D.Del. 2017). See also Engler, supra note 13, at 23.

[64] Unified Weapon Systems, 2016 WL 5391394, at *6. See also Rich, supra note 8, at 8.

[65] Engler, supra note 13, at 23.

[66] Milligan & Salinas, supra note 8.

[67] Engler, supra note 13, at 23.

[68] 18 U.S.C. § 1838.

[69] Conley, supra note 4.

[70] Synergy Worldwide, 208 F.Supp.3d at 1201; Cori, 2016 WL 6611133, at *2-5; Nettles, 2016 WL 4124114, at *4 fn.2; Cook, 191 F.Supp.3d at 1077, 1079-1080; Daniels, 2016 WL 7034976, at *8-10; M.C. Dean, 199 F. Supp. 3d at 1353-1357; Ghost Controls, 2016 WL 4059706, at *1 fn.1, *2-4; MiTek USA, 2016 WL 4418013, at *9-10; Ciro, 242 F.Supp.3d at 797-800.

[71] Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-5.

[72] Blackbaud, 216 F.Supp.3d at 921.

[73] Digital Intent, 2016 WL 6395409, at *3. See also Evans, supra note 10, at 191.

[74] Engler, supra note 13, at 21; Dharnidharka, Day & McCrimmon, supra note 8.

[75] Sultanov, 2017 WL 67119, at *2; Mishra, 2017 WL 365619, at *2; Calvo, Case 1:16-cv-23300-KMW, at 7; Pendolino, 2017 WL 320830, at *1-2. See also Newman, Mendelson & Song, supra note 2, at 3; Engler, supra note 13, at 21; Renaud & Armington, supra note 39; Werdegar & Braunig, supra note 39.

[76] Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.

[77] Cook, 191 F.Supp.3d at 1076-1079; Rote, 2016 WL 4191015, at *1-5; Trizetto Group, 2016 WL 5338550, at *6; Unified Weapon Systems, 2016 WL 5391394, at *6; Irex Contracting Group, 2017 WL 1105648, at *3-8; Horton, 2017 WL 1906957, at *5-6. See also Rich, supra note 8, at 8.

[78] Milligan & Salinas, supra note 8.

[79] Engler, supra note 13, at 23.

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Intellectual Property Management Standards of Taiwan: Development and the Status Quo

Oct/30/2006 I. Intellectual Property Management among Taiwanese Firms: Status Quo and Problems 1. Current status of management of intellectual properties among Taiwan-based enterprises Way from Taiwan's participation into World Trade Organization (WTO) effective January 1st, 2002, huge impacts have been brought upon our domestic enterprises, since, apart from competition coming from giant international manufacturers, they have to meet challenges coming from elsewhere in the world. Besides, the arrival of a time when knowledge became an integral part of the economy in which we find ourselves, profits realizable to an enterprise depends largely on the control of market and on R&D of key technology, such that intellectual property alone is a sure key to the earning of profits and growth of modern enterprises to which admirable economical worth may be created commensurably. Intellectual properties owned by the enterprise should make it such that corporate know-how is thereby transformed into marketable commodities to stand in a viable position among competitors. An overall observation of the management system in our domestic enterprises or organizations indicated that management of intellectual properties is scattered among Education or Training units, R&D units, Legal Service Units, rather than detitle with collectively or through flow control. Management of intellectual property as such by and large would fail to produce immediate or admirable benefits to the enterprise, serving at most to avoid occasioning of losses, in fact and indeed it is but through strategic exploitation of an intellectual property management system would it be possible to pursue a share of the market or to realize licensed proceeds. 2. Problems facing domestic enterprises with respect to management of intellectual properties Renowned firms based in Taiwan and active in the prosecution of management of intellectual properties do so primarily because their executive realized how grave a loss could be incurred to corporate assets and corporate operation due to infringement charges, Taking the infringement charge by an alien firm against a certain domestic firm early January, 2006, for example, to reach a compromise a payment amounting to approx, US$85,000,000 was necessary, and that claiming a share of 10% of the Company's annual revenue, that lesson has taught the Company to pour mass resources in the establishment and execution of intellectual management system. In the Knowledge-based Economy of today, no top management of any enterprise or organization would deny the importance of the management of intellectual properties, understanding alone, however, would not suffice to push the Company getting to work forthwith, because the buildup of an intellectual property management system will of necessity incur a lot of costs, seeing the want of possibility to obtain any investment return all at once, most enterprises or organizations would have their intellectual property management systems designed essential to prevent infringement upon other part's intellectual properties. Notwithstanding that our local manufacturers have gradually come to their senses as regards the importance of intellectual properties, larger scale ones, confronted with cutthroat pricing competition in the global market, is largely harassed with litigation on infringement of intellectual properties; whereas the medium and small businesses, owing to inadequate manpower and funding resources, were largely unable to go for in-depth development of intellectual properties, still, a key to consistent development of our local industries lies in a sound planning of the intellectual property management system, amid the current of the Knowledge-based Economy featuring the 2lst century, the creation and protection of intellectual property rights is a critical index to the upholding of our national competition. So top issues on the agenda for competent authorities in charge of industrial sectors include; assisting local businesses or organizations to implement systematic management of intellectual properties, to retain, accumulate intellectual properties produced by its employees and convert same into intellectual assets, to thereby upgrade their competitive margin, this chain of efforts must be formed in a grand cycle encompassing all the staff, to stand firm and last. II. Formation and orientation of Taiwan's standards on management of intellectual properties 1. The origin of Taiwan's regulation of the standards on management of intellectual properties Impacts brought to local industries in the wake of Taiwan's participation in WTO have taught both the Administration and the Industry to realize, in the long run, that protection of intellectual strength and exploitation of intangible assets can redound much to build up competitive margin, Now that our nationwide economic and trade activities have entered global, international scale, the number one issue is to emphasize protection of intellectual properties if only it accounts to move further into transnational frontier and let our national competition be felt there, what's more, protection of intellectual properties is an obligation laden upon all the member states of WTO, and that consistent with our national interests Yet protection of intellectual properties is a comprehensive, integrally interrelated task demanding nationwide consensus, calling for unreserved cooperation across governmental, civil, administrative and legislative channels, if only any effect to be expected accounts, yes indeed it is but through an environment propitious to the safeguarding of intellectual properties can R&D tank go deeply rooted in this country, therein lies rightly a sure key to permanent survival of our nation at large. The buildup of a convenient, effective and low-cost intellectual property management system in lieu of discrete controls seen traditionally in our local enterprises or organizations, will help the enterprises to effectively control and safeguard their intellectual properties, and that sub serving to protect their proper interests, reduce risks of theft, and restraint from encroaching upon the intellectual properties of third parties, besides, roytitleies through licensing arrangement will redound to corporate revenue, that paralleled with boosted marketing competition, intellectual properties protected and exploited as such will mark a resounding foundation for lasting development in our times where know-how alone is the king. The foreground being recited above, in 2003 and 2004 the Intellectual Property Office, a department of the Ministry of Economic Affairs (IPO for short), appointed Science and Technology Law Center, a unit under Institute for Information Industry (STLC for short), to establish an intellectual property management system suitable for local enterprises (Then known as “Intellectual Property Management System Standard”, in the hope that by the implementation of standardized intellectual property management procedure and promotion of same, local enterprises may remain less likely to getting involved in infringement charges, among other benefits foreseeable with exploitation of properly owned intellectual property rights. 2. Orientation of Taiwan's intellectual rights standards On December 9, 2004, the Ministry of Economic Affairs held a Conference on “Deliberation on the instituting and promotion of standards for the management of intellectual properties of Taiwan”, whereat a resolution was reached to work for Taiwan Intellectual Property Management System basing on the Intellectual Property Management System Standard proposed by STLC under trust for Intellectual Property Office, eventually it is hoped that through national standard certifying processing said Intellectual Property Management System Standard be instituted as our National Standard, to build up a nationally acknowledged credibility. Enterprises would then be encouraged to introduce for themselves a certifying mark once entitled through certification, and efforts will follow to see that the Intellectual Property Protection System be instilled in day-to-day realities, the whole system would by then be promoted internationally so that the image of our nation as an active protector of intellectual properties will one day be known to the world at large. However, as it will take years to have a national standard institutionalized, moreover, the enterprises at large are not sufficiently informed with the notion of the management of intellectual properties, the first step might well be to build up an Intellectual Property Management System Rating Scheme, to be followed with specification of supplemental procedures, and the same on completion, be recommended to the industry circle, and progression to applying for national standard would begin only if extensive consensus is obtained in the first place, paralleled with correlation with international realities, After the task was transferred to the Industrial Development Bureau of the Ministry of Economic Affairs (IDB for short), in 2005, it was reoriented to the positioning of industrial specification, that anyway helps local enterprises or organizations to build up a wholesome intellectual property management system. To adapt to industrial convention respecting specifications, the Intellectual Property Management System deliberate herein is named “Taiwan Intellectual Property Management System” (TIPS for short). The TIPS which is in the charge of the IDB is indicated for autonomous introduction by individual enterprises or organizations, in the hope that a systematic model for the management of intellectual properties would help correlate existent hardware facilities with ad hoc Intellectual Property Management so that a convenient, effective and low-cost management system be easier founded for the enterprise or organization concerned, in place of traditional trivial, random management practices 3. Process of formation of Taiwan intellectual property management standards While the establishment of Intellectual Property Management Standard was still in progress for the STLC, there was already lots of matured management standard system among international communities for consultation, including, for example, the ISO Quality Management System. So eventually in 2003, 2004, the Intellectual Bureau encrusted the STLC to analyze the ISO9001:2000 Quality Management System in terms of its spirits and structures, and to look into the possibilities for combination with Intellectual Property Management as well, so that, in the affirmative case, what needs be done is to work out an Intellectual Property Management Standard to which all kinds of business and industry may fit, and that will help to achieve procedural flow, efficiency and standardization all at the same time. The ISO9001:2000 Quality Management System is a standard established by ISO (International Organization for Standardization), and which is currently a Quality Management System running around the world. In the year 2000 ISO combined through amendments of ISO9001, ISO9002 and ISO9003 published titleogether in 1994, to form ISO 9001:2000. ISO 9001:2000 since replaces all the previous standards and stands as the only and sole standard for certification, featuring emphasis on the consolidated functioning of Quality Management Systems and the target for comprehensive Quality Management. The ISO 9001:2000 based the entire system structure on PDCA Management Cycle (Plan-Do-Check-Action), way up from the Management Level, setting corporate quality policies and targets as dictated by customer needs, whereby planning of corporate resources is decisive in production and service outputs, what with measuring and monitor mechanism to persistently improve functioning of the entire quality system. With respect to various operational procedures in an enterprise or organization, a four-step PDCA comprising: (1) Plan, whereby quality policy is formulated; (2) Do; (3) Check, as to the outcome of what has been done; and (4) Action, corrective and preventive by nature; will intervene to help resolve problems as they arise and hence, achieve the targets. Abiding by aforementioned PDCA model, the STLC will firstly incorporate the Intellectual Property Management Standard into ISO 9001:2000 Quality Control System, thence consult the ISO system structure to split into 0 to 8 units: General Description, Scope of Application, Reference Standards, Definitions, Intellectual Property Management System, Management Commitment, Resource Management, Procurement, of Intellectual Proprieties, efforts as such should help the enterprises to promptly set up hard environments necessary to the management of corporate intellectual properties, and make the STLC easier in lending a hand to facilitate substantive functioning of corporate intellectual property management systems. Intellectual Property Management Standards incorporated to ISO system will prove more structurally effective, and help the enterprise to rapidly lay a foundation for the management of their intellectual properties, so that hopefully they may more effectively manage, make use of their intellectual properties, whereby to fortify their competitive margin, so that in the long run the overall international competitive margin of our industries is upgraded. A common goal for the design and setup of intellectual property, management standards lies in searching for the maximum possible assent from the industrial society so that an auditing or certification platform be created to benefit the intellectual property management system that is working for any enterprise or organization in this country, in order for such systems one by one will necessarily conform to prescribed standards, minimum requirements from given organizations or stipulated in statutes inclusive, not to mention the ultimate goal of better protection and exploitation of intellectual properties, in a lawful and satisfying manner. However, as yet no consensus has been reached as regards the establishment of a national standard respecting management of intellectual properties, yet there is still a need for management of intellectual property rights among local enterprises or organizations, to offer the utmost assistance possible to them all, the Ministry of Economic Affairs has taken the initiative to revise what was once Intellectual Property Management Standard into Intellectual Property Management Specifications, and such is positioned as an industrial specification. By instructive posture, subjects considered suitable to accept said Intellectual Property Management Specifications include all kinds of organizations irrespective of their category, scale, products or services offered. Even units or ad hoc groups in a given organization may qualify for inclusion, including, for example, a company in its entirety, or a specific division of that company, a laboratory or production program. 4. Anticipated Benefits That the IDB is sparing no effort in the preparation of Intellectual Property Management Specifications is underlined with multiple objects, to offer a unified structure for the management of measurable intellectual properties, to help enterprises simplify their procedures of management of intellectual properties, to enlighten the object enterprises or organizations with the understanding and what to expect from an Intellectual Property Management System. If only management of intellectual properties is incorporated into routine operation of an enterprise whatsoever, and that concept spread afar internationally, that would certainly help to build our national image as a country that is brave enough to initiate protection of intellectual properties. In the mean while, with ever increasing demand for the setup of intellectual property management systems, a reality as such in the foreground, a good chance is struck to enlarge the service market or intellectual property management services emanation from Taiwan, and that sub serving to the development of know-how service industry, a surplus for the service industry by any rate. An enterprise or organization by the establishment of intellectual property management system may expect the following benefits; Increased competitive strength and creation of additional value. Once an Intellectual Property Management System is there, the facilitation to maximize intellectual properties will redound to corporate competition, while help creation more of additional value. Taking our sports implements industry or the vehicle lights manufacturers in Taichung area for example, intellectual properties are present in the products and in the production process as well, to make available diversified options for the purchasing parties, thereby greatly enhancing additional value to the products, interpreted to mean more profits realizable over pure OEMs. Avoidance of vicious cycle, increased will to placement of purchasing order. If only optimum use is made of intellectual properties such that they are represented in the products, in the process or even in the technology itself, Taiwanese manufacturers who are basically OEMs may avoid the painful dilemma of vicious competition, and may even make it may avoid the painful dilemma of vicious competition, and cay even make it for overseas buyers to be core willing to place orders, Taking again as an example a TIPS induced manufacturer, 2005, the Universal Scientific Industrial Co., Ltd., after the USI has built internal intellectual property management system pursuant to TIPS specifications, alien clients on the point of placing orders may very soon be adequately informed with the model the USI takes respecting their management of intellectual properties, satisfied that the products being purchased are largely safe from infringement of other's proprietary rights, the alien buyer may be willing to place more and greater orders. Reduced management costs, creation of greater profits. Most Taiwan-based medium and small businesses are far from being able to input mass manpower or material resources simply to build up systematically structured intellectual property management system. The meaning of introducing TIPS specifications lies simply in the close embodiment of existent hard equipments with management of intellectual properties for any intending enterprise whatsoever, so that a full set of convenient, effective and low-cost management may come into being in lieu of random and discrete management practice which has been the case for years or even for generations. Obvious benefits with such an arrangement include protection of proper interests, preclusion of encroachment upon the proprietary rights of third parties, and perhaps the possibility of granting licensing arrangements to earn roytitleies for the company. III. Implementation of Taiwan Intellectual Property Management Standards: History and Current Situation From 2006, the way to promoting the Intellectual Property Management System is prosecuted in the form of specifications submitted to industries in the hope that industries would establish their own intellectual property management systems using such specifications, through systematic flows, efforts as such should help to boost corporate competition, and the keynote has therefore shifted from once where it was, that was, verifying if a given industry had introduced and honestly follow specified Intellectual Property Management System against given standards. What follows below is a phase-wise account of the history of implementation of Taiwan's Intellectual Property Management Standards: 1. Trial Phase Emphasis placed on Intellectual Properties following Taiwan participation in WTO has driven the IPO to appoint the STLC to formulate a full set of standards for the management of intellectual properties based on a structure and morale embodying ISO 9001:2000 Quality Control Systems, and the same intended for trial introduction into local industries in addition to personnel training and promotion purposes. In this phase important businesses on the agenda include: To launch the institution, the intellectual property management standard will be firstly introduced into three manufacturers beginning in 2004, whereby manufacturer's comments collected in the counseling process will turn to account for reference for amendment considerations respecting said Intellectual Property Management Standard, with outcome of the introduction serving as a model for other manufacturers. As regards promotion, suitable promotion scheme will be put into effect to introduce Intellectual property Management Standard to enterprises or organizations to which predecessor experiences will be supplied as well, whose newly gained experiences would be shared among other enterprises for reference in Outcome Sharing Party activities. As regards counseling input, there have been 3 manufacturers in 2004, Asia Optical Co., Inc., Cheng Uei (Foxlink) Precision Industry Co., Ltd. and HiTRUST Inc., receiving trial introduction of Intellectual Property Management Standard whereby each has had their own Intellectual Property Management System established. As regards personnel training, seeds have been chosen who, after having received training on relevant curriculums, betook themselves to assisting enterprises or organizations introducing Intellectual Property Management Standards, this in turn benefits the seeds with on-job experiences such that they turned out better prepared to demonstrate counseling, assessment capabilities in the face of future promotion tasks, As regards R&D tasks, consistent brainstorming for the working of supplemental or operating procedures necessary for the promotion of Intellectual Property Management Standards, prepping up comprehensive implementation programs based on experiences accumulated over practical and personal involvements. 2. Demonstrative Introduction Phase Since promotion task is passed to the IDB in 2005, efforts to institute Intellectual Property Management Standard switched to introducing Intellectual Property Management Specifications where the top concern is to be helpful for the industries concerned. On the basis of as is Intellectual Property Management Specifications and prep up verification mechanism; Seen in the result of institutional promotion, out of stipulations and regulations conditioning the promotion of intellectual property management system that is persistently deliberated by the STLC on behalf of the IDB, a total of 11 documents nave been released pertinent to supplemental procedures and relevant date, plus up to 10 errands comprising reviewing of statutory provisions and effecting of major amendments. As regards promotion efforts; done are printing of notes on application of counseling services, brief introduction of Intellectual Property Management System, Specification of Intellectual property Management System, Paragon of Management Handbook and Guide to Assessors. Promotion efforts were consummated in 3 promotion seminars which took place in the north, central and southern part of Taiwan respectively, also done is an outcome share party where the protagonist is paragon manufacturer introducing the system in question; cooperation has been an event with Economic Daily News which has given an in-depth coverage on paragon counsel case. Forum on the media Economic Daily News whereat reputed scholars on intellectual property issues and experts in practice, such as Professor Ming-Yan Shieh of National Taiwan University, Professor Chung-Jen Cheng of Shih Hsin University, have been attending. As regards counseling for introduction, a total of 8 middle or smaller businesses have been successfully counseled into introduction for exemplification purposes in 2005, they are: Yulon-Nissan, Asia Optical Co., Inc., Advanced Connectek Inc. (ACON), Meifu Technologies, Universal Scientific Industrial Co., Ltd. (USI), Cycling & Hetitleh Tech Industry R&D Center (CHC), Apex Nanotechnology Corporation, and AURORA Office Automation Corp. 4 counsel execution meetings have been held, plus one Pre-assessment Seminar, on-the-spot written evaluation has been conducted with respect to 8 exemplary induced manufacturers. As regards personnel training, a total of 98 person-rounds have benefited under training programs encompassing: induction seeds, internal auditors, exemplary counselors, reserved seeds. 3. The Weighted Promotion Phase Following conclusion of infrastructural consolidation in 2005, diagnostic service was given to have a close check on existent intellectual property management system that was working in enterprises and organizations, this effort in concert with experiences accumulated through exemplary inducement, in 2006, in order to find out actual needs against differentials in place for promotion and rectification of the specifications in use of the management of intellectual properties: Institutionally, way from 2006 the unified designation “Taiwan Intellectual Property Management System” (TIPS) will apply as a common technical specification in sectors including: industry, government, schools, R&D interests, Follow-up promotion tasks will continue in the form of a team comprising interested scholars, experts invited by the grace of the Industry Bureau, in charge of strategic planning, execution, supervision, and literature screening. As regards promotion and propagation, in 2006 it is largely through self-assessment and evaluation, to which participation is on a voluntary basis with notices served on induced enterprises of organizations, To spread afar the inducement movement so that more and more people are adequately enlightened with what is all about TIPS, a total of 3 instruction seminars have been sponsored in the north, central and south to go pursuant to the inducement experience concluded in 2005, plus several occasions of manufacturers’ conceptual exchange meetings. As regards counseled inducements, a total of 30 manufacturers have benefits under the TIPS diagnostic service as offered, they are: Tatung Co., Taiwan Design Center (TDC), King Car Industrial Co., Ltd., Systex Corporation, National Nano Device Laboratories (NDL), National Center for High-Performance Computing (NCHC), Chi Mei Frozen Food Co., Ltd., Eastech Electronics (Taiwan) Inc., Lee Chi Enterprise Co., Ltd., WisTek, PRIT Biotech Co., Ltd, Intech Taiwan Corporation, Yeastern Biotech Co., Ltd., Yangsen Biotechnology Co., Ltd., Apex Biotechnology Corp. (ApexBio), Taiwan Electric Voice Co., Ltd. (TEV), Gewise Industrial Inc., SportsArt Industrial Co., Chien Yuan Food Chemicals Co., Ltd., Unicare Biotechnology Corp., Tek Maker Corporation, Chi Lin Technology Co., Ltd., Ihetitleh Co., Ltd., A3000 System Co., Ltd., Standard Chem. & Pharm. Co., Ltd., Jwo Ruey Technical Co., Ltd., Omni Hetitleh Group, Alinc Taiwan Co., Ltd., Marie International Co., Ltd., S.Z.S. Co., Ltd., each of them outstanding and highly revered in their respective field of avocation. From them 5 manufacturers have been chosen to account for exemplary TIPS inducement cases, these are: TDC, King Car Industrial Co., Ltd, Systex Corporation, Yeastern Biotech Co., Ltd., SportsArt Industrial Co., to demonstrate how the recommended Intellectual Property Management Specification works in reality, As regards personnel training services: one round of Tips inducement trainee course and one round of TIPS self-assessment trainee course have been sponsored to benefit a total of 91 person-rounds 16 professionals have been entered on registration as counselors, one round of assessment commissioner pre-task seminar has been sponsored. IV. Outlook of Future Planning Based on the consensus reached in “Conference to Work for the Instituting and Promotion of Taiwan Intellectual Property Management Standard” sponsored by the Ministry of Economic Affairs, universal promotion of the intellectual property management system will be implemented continually in phases so that same may be introduced to industries different in scale or fields of interest with more flexibilities, comprising both enterprises and organizations: Institutionally, specifications will adapt to the scale and classification of the industry concerned, with possibilities to allow for the planning of simplified versions and industry-specific versions, besides, the introducing of TIPS specifications will inevitably incur the necessity of integrality with existent ISO systems, owing to limited timing allowed for counseling intervention, the Industry Bureau will firstly strive for the buildup of TIPS with as many as possible manufacturers. Embodiment of ISO with TIPS is a precondition to introducing the latter, since ISO is an internationally recognized standard, in so far as TIPS fails to be combined with ISO, to target industries the inducement task is always a mission impossible, As regards promotion and propagation, the government is planning to qualify industries to which the suggested intellectual property management system has been introduced successfully as eligible for extra score when they go applying for benefit under Creative R&D Counsel Plan, or for favorable terms in closing same plan, this as an incentive to induce more manufacturers, Being considered is the editing of Inducement Manual which would include introduction of exemplary cases, exemplary inducement procedures, to help build up interchange of inducement experiences among manufacturers, More concrete encouragement means will be offered to pilot manufacturers who are willing to set themselves as paragon in the inducement movement, and manuals disclosing governmental resources relevant to the issue of intellectual properties will be compiled for manufacturers' reference; sponsoring promotion seminars addressed to specific group of manufacturers, whereat pilot manufacturers will give an account of their own initiation experiences. As regards inducement counseling, a review of the background of manufacturers to which TIPS has been introduced will yield the notion that most of our traditional industries or medium and small technique R&D oriented concerns fell short of the manpower and experience necessary for management of intellectual properties, so they very much need and wish that the government assist them to build their own Intellectual Property Management System. To alleviate cost burden on the intending enterprises or organizations, being envisioned is enlargement of scope of reach of services in coordination with e-mail dominant autonomous verification system, phase-wise inducement mode may be introduced eventually to help reinforce the autonomous verification software capabilities, and to assist induced plants in operation. Currently the target is set at reaching titleogether 300 manufacturers who are able to run autonomous verifications under TIPS by the year 2008, meanwhile 50 rounds of TIPS external assessments are completed for the manufacturers and titleogether 120 clients having received TIPS diagnostic services. As to personnel training, being continually sponsored are training courses, under planning are certifying training agency buildup programs so that the training service may spread wide afar, by the year 2008 a total of 280 TIPS professionals will have been turned out due to training efforts; it is believed that more individuals would be attracted by appealing on the importance of intellectual properties with respect to corporations and individuals alike, so as to prolong and spread benefits by reason of resource input. As regards R&D progressions, as incessant improvements, researching efforts are indispensable to the buildup of impeccable intellectual property management system; current status of intellectual property management among local industries will be surveyed persistently in parallel with studying of present status of intellectual property managements around the world. It is hoped that through personnel training, what with publication, exchange and transmission of experiences accumulated with intellectual property management system or institutions, incessant improvement of intellectual property management system, setup of evaluation scheme respecting and so as to make more wholesome intellectual property management systems, the day will come sooner for “Wholesale and universal institutionalization of generalized intellectual property management systems across the manufacturers, legal persons, consortium in particular, researching institute throughout Taiwan” to come true. V. Conclusions: A Reliable statistic source in 2006 claimed that the percentage of commercialization by local manufacturers to whom patent rights have been granted against application is merely 0.3%, which figure is 10 times behind the corresponding average in international communities, the latter being 3% It is advisable for our manufacturers to realize that innovation and intellectual property management are independent of capital resources, management subsequent to the acquisition of patent privileges must never go slow or put aside. The prime object of implementation of TIPS by the government is to push for universal buildup of intellectual property management system so that local manufacturers whose interests are associated therewith may best exploit as well as protect their properly owned intellectual privileges thanks to subsequent relevant planning, that they be alerted to application of patented rights once granted to them. For any enterprise or organization to establish their own intellectual property management system after TIPS, they will have to understand in the first place their own strengths and weaknesses and orientation for future operations, they will then fix defined policy and corporate objective, and that supported by the top management level, the next step, is to decide as to whether an ad hoc unit be installed by taking into consideration corporate scale and resources, or if it is more desirable to commission intellectual property management to outside concerns. Creation of intellectual property depends upon the character of corporate products, the setup of an intellectual property management system is meant to manage the creation, up keeping and application of intellectual properties, the training mechanism functions to promote conceptions about intellectual property by instilling same among corporate employees, concrete safety guarding measures are required to physically protect intellectual properties. Safeguarding operations to provide protection of intellectual properties must be checked periodically, the PDCA model will intervene to appropriately amend both policy directive and systems of intellectual properties so that the system may best achieve its intended purposes by incorporating the auditing, accounting and financial management of intellectual properties at the same time. Fair and just verification scheme will be built to verify what happens to an industry to which the system has been introduced for some time, so that the industry may remain alert as to where it stands in the system; the need for counseling services arising as a result of corporate aspiration to pass evaluation will help create a market of counseling service addressed to service industries intending to offer systematic management services to needy clients, Then corporations or organizations will sooner pay more attention to the management of intellectual properties, while knowledge service industry will develop and prosper in like measure, the causes interacting with each other to bid birth to more innovation and growth, and Taiwan is brought closer and closer to fulfilling its affectionately nicknamed designation: Intelligence Island.

The Development of Non-Drama TV Programs in Taiwan and the Protection of Intellectual Property Rights

The Development of Non-Drama TV Programs in Taiwan and the Protection of Intellectual Property Rights   With the advancement of an era of digital content, the industrial structure of the audio-visual content industry has gradually changed. The production and sales channels of audio-visual content have appeared to trend toward diversification. Emerging content channels or new media have replaced traditional TV stations. The transmission speed of digitized content is faster than the traditional media, which has become an output opportunity for the content of Taiwan in the international market. In the field of drama programs, there have been cases of successful global output, and international cooperation and export models have been gradually discovered. By contrast, non-drama TV programs of Taiwan still remain in the traditional production mode in lack of creation of new content or funds, as well as talents for production and international marketing, which leads to a vicious circle of industrial stagnation or even regression. 1. Problems with domestic non-drama TV programs   Funding is the first issue that needs to be resolved. "Due to the lack of money, the only thing that can be done is producing programs that no one wants to watch." Such a condition exists day after day that causes the entire non-drama programs to be depressed, and few people are willing to invest. By contrast, in China or South Korea, the linkage of its variety shows brings about the development of the content industry, and the benefits are amazing. The willingness to spend money on the investment at its initial stage is an essential element of success. However, if there is no successful case, it may not be easy to solely rely on Taiwanese private funds.   As far as the technical level of TV program production is concerned, it is particularly important to modelize TV programs if they are to be exported. The market transaction of international TV program formats has existed for many years, but the object of the transaction is the core content and production process of TV programs, that is, the TV program bible. For non-drama TV programs of our country, if it needs to sum up the core of the program in one sentence, it is not impossible to achieve. However, it still lacks the core content such as the famous tv show "THE Voice" that is sufficient to attract people. In addition, in terms of production, how to edit as well as integrate the stage and supporting design into the shooting so to present attractive programs is the relatively lacking part in TV programs of our country.   As for the cultivation of talents, Taiwan has yet rarely relevant talents who are able to research, develop, and independently write the TV program bible, as well as do marketing. By contrast, China has achieved remarkable results in TV programs in recent years. They have some consultant companies that specialize in writing a TV program bible for production companies. Their R&D personnel record details by following and observing the directors, producers, and photographers, of which the records gradually become a TV program bible. Some talents in China have mastered the art of writing TV program formats. They can even directly disassemble well-known foreign formats and rewrite them as Chinese versions for production, which has achieved success. 2. Overview of international TV program formats   Taking a broad view of the status of foreign TV program formats, it is found that the output of creative development is not in the countries with big entertainment industries such as the United States, the United Kingdom, and France, but in small European countries such as the Netherlands and Israel, which have a large number of output of TV program formats. The Netherlands and Israel are not countries where the television industry is prosperous. However, their TV program output occupies an important position in the global market. Some programs have even produced more than 1,000 episodes in the world, with the output to countries including the United States, China and others. Similar to Taiwan, Netherlandish and Israeli TV programs are also faced with great limitations in production funds due to the small domestic market. However, many TV programs have been created by relying on the novel program content and taking full account of the needs of the international market.   In the international trade market of TV program formats, if you intend to successfully output a program, it not only contains a novel main idea, but also covers production and viewing. The output carrier of TV program formats is the "TV Format Bible". Its content includes various links of program rundown, personnel settings, camera lenses, sound effects and lighting, etc. As long as the program has a fixed existing model, no matter who plays the roles in the program, the quality of the program can be kept stable. This kind of production of non-drama TV programs according to the TV Format Bible is called TV Format. 3. Protection of huge business opportunities of formats: preservation and authorization management of intellectual property rights   The core value of formats often lies in the creative part of the content. How to effectively preserve the creativity and at the same time to claim the rights are of the most concern by ideators, and the carrier of modelizing creation is the "TV Format Bible".   The writing of the "TV Format Bible" is based on the thinking of TV Format structure. At the creative stage, the core content will be integrated into the production level, including how to set up the lighting and the arrangement of the camera to achieve the entertainment effect of the creative core content and other details. However, the value of the "TV Format Bible" comes from the ideation of ​​creativity, and whether creativity is to be protected by law has been controversial since always. Judging from the results of the current judgments on disputed cases concerning the TV Format, the more specific the TV Program Bible is written, the higher chance it has to be protected.   A successful variety show not only can bring about the domestic and foreign income from the show itself, but associated derivatives such as music, tourism, and peripheral products may also be able to obtain huge business opportunities due to the broadcast of the program. Therefore, although the TV Program Format is centered on its content, it actually involves issues of industrial management such as human resources, labor relations, corporate governance, taxation, fundraising, bankruptcy procedures, economic systems, and professional ethics. In addition, in aspects of commerce, marketing and management aspects, matters such as the establishment of the production team, the production process management, the acquisition and use of creation funds, and valuation are all covered in the operation of formats.

Korea “Strategies for an Intellectual Property Powerhouse to Realize a Creative Economy” Overview

Background Since 1990, many countries like United States, Japan and EU understand that intellectual properties create higher value added than tangible assets do so these countries respectively transformed their economic types to knowledge-based economy so as to boost economic growth and competitiveness. For example, Japan has legislated “Intellectual Property Basic Act” in 2002 and established “the Intellectual Property Strategy Headquarters” in 2003. United States legislated “Prioritizing Resources and Organization for Intellectual Property Act (PRO-IP Act)” in 2008. China also announced “National Intellectual Property Strategic Principles” in June, 2008. Following the above international tendency of protecting intellectual properties, Korea government has promoted intellectual property related policies and legislated related acts since 2000, such as “Technology Transfer Promotion Act” in 2000, policy of supporting patent disputes settlements and shortened the length of patent examination procedure in 2004. Besides, on June 27, 2006, the Presidential Advisory Council on Education, Science and Technology (PACEST) announced “Strategy for Intellectual Property System Constructing Plan.” However, these policies or acts mainly focus on the protection and application of patent rights, not relate to other kinds of intellectual property rights such as trademark right, copyright etc. Until 2008, in order to advance the ability of national competition, Lee Myung-bak government had established “Presidential Council on National Competitiveness (PCNC)”. For the vision of transforming to the intellectual property based economy, the PCNC held its 15th meeting on July 29, 2009. The meeting, held at the Blue House, was attended by the president, the Chairman, and members of the Council. One of the agenda of the meeting is strategies for an intellectual property (IP) powerhouse to realize a creative economy. Three goals of the strategies includes being IP Top 5 nations (U.S., Japan, EU, Korea and China), improving technology balance of payments deficits, and enhancing the scale of copyright industry. Next, this study will introduce details of Korea IP related strategies for our nation’s reference. Introduction Korea IP strategy consists of 3 aspects (creation and application, law and regulation, infrastructure) and 11 missions. And the contents of 11 missions cover the creation, protection and application of intellectual property rights (patent, copyright, trademark, plant variety etc), namely the whole life cycle of intellectual property rights. Through announcement of IP Strategies, Korea hopes to protect intellectual property rights from every aspect and makes IP as essential driving force for national economic growth. 1. Creation and Application Aspect First, although the quantity of intellectual property rights (IPRs) of Korea is rapidly increased in recent years, the quality of intellectual property rights is not increased equally. Also, most of researchers do not receive appropriate rewards from R&D institutions, and then it might reduce further innovation. As above reasons, Korea IP strategy indicated that the government will raise “invention capital” to exploit, buy researchers’ new ideas, and make those ideas get legal protection. That is, the government will set up non-practicing entities (NPEs) with private business. The NPEs would buy intellectual properties from R&D institutions or researchers, and then license to enterprises who have need. After licensing, NPEs will share royalty which obtained from enterprises (licensees) with researchers appropriately. Besides, in order to encourage university, public R&D institutions to set up “technology holdings”, Korea government had amended “Industry Education and Corporation of Industry, Academic and Research Promotion Act”. The amendments are loosening establishment conditions of technology holdings, such as minimum portion of investment in technology has been lowered from 50% to 30%, and broadening the scope of business of technology holdings. 2. Law and Regulation Aspect Secondly, in aspect of law and regulation, in addition to encouraging creation of good quality of IP, Korea considers that intellectual property rights are needed to be protected legally. Therefore, the IP strategy especially pointed out that Korea would follow the example of Japan to legislate their own “Intellectual Property Basic Act”. According to Korea “Intellectual Property Basic Act”, it should establish a “Presidential Council on Intellectual Property”. The main work of this Council is planning and promoting intellectual property related policies. There are 5 chapters and 41 articles in Korea “Intellectual Property Basic Act”. The Act like Korea IP strategy is divided into three parts, that is, “creation and application”, “protection” and “infrastructure”. In fact, the legislation of Korea “Intellectual Property Basic Act” embodies the policies of IP strategy. Further, according to Korea “Intellectual Property Basic Act”, “Presidential Council on Intellectual Property” is to integrate IP related affairs of the administrations into one action plan and promote it. Moreover, according to Korea “Intellectual Property Basic Act”, the government should make medium-term and long-term policies and basic plans for the promotion of intellectual properties every 5 years and adjusts policies and plans periodically as well. Through framing, enacting and adjusting policies and plans, Korea expects to create a well-living environment for the development of intellectual property. 3. Infrastructure Aspect Thirdly, even if good laws and regulations are already made and more government budget and human resource are invested, Korea is still deficient in well-prepared social infrastructure and leads to the situation that any promoting means of intellectual properties will be in vain. With regard to one of visions of Korea IP strategy,” being IP Top 5 power (U.S., Japan, EU, Korea and China)”, on the one hand, Korea domestic patent system should harmonize with international intellectual property regulations that includes loosening the conditions of application and renewal of patent and trademark. On the other hand, the procedure of patent application conforms to the international standard, that is, the written form of USA patent application becomes similar to the forms of world IP Top 3 power (U.S., Japan and EU) and member states of Paten Law Treaty (PLT). At the same time, Korea would join “Patent Prosecution Highway (PPH)” to enable Korea enterprises to acquire protection of patent rights around the world more rapidly. In addition, about the investigation of infringement of intellectual property rights, Korea IP strategy stated that it would strengthen control measures on nation border and broaden IP protection scope from only patent to trademark, copyright and geographical indications. Besides, Korea uses network technology to develop a 24-hour online monitoring system to track fakes and illegal copies. In addition to domestic IP protection, Korea enterprises may face IP infringement at overseas market, thus Korea government has provided supports for intellectual property rights disputes. For this sake, Korea choose overseas market such as Southeast Asia, China, and North America etc to establish “IP Desk” and “Copyright Center” for providing IP legal consultation, support of dispute-resolving expenses and information services for Korea enterprises. Korea IP strategy partially emphasizes on the copyright trading system As mentioned above, one of visions of Korea IP strategy is “enhancing the development of copyright industry”. It’s well-known that Korea culture industries like music, movie, TV, online game industries are vigorous in recent years. Those culture industries are closely connected to copyright, so development of copyright industry is set as priority policy of Korea. In order to enhance the development of Korea copyright industry, a well-trading environment or platform is necessary so as to make more copyrighted works to be exploited. Therefore, Korea Copyright Commission has developed “Integrated Copyright Number (ICN)” that is identification number for digital copyrighted work. Author or copyright owners register copyright related information on “Copyright Integrated Management System (CIMS)” which manages information of copyrighted works provided by the authors or copyright owners, and CIMS would give an ICN number for the copyrighted work, so that users could through the ICN get license easily on “Copyright License Management System (CLMS)” which makes transactions between licensors and licensees. By distributing ICN to copyrighted works, not only the licensee knows whom the copyright belongs to, but the CLMS would preserve license contracts to ensure legality of the licensee’s copyright. After copyright licensing, because of characteristic of digital and Internet, it makes illegal reproductions of copyrighted works easily and copyright owners are subject to significant damages. For this reason, Korea Ministry of Culture, Sports and Tourism (MCST) and Korea Intellectual property Office (KIPO) have respectively developed online intellectual property (copyright and trademark) monitoring system. The main purpose of these two systems is assisting copyright and trademark owners to protect their interests by collecting and analyzing infringement data, and then handing over these data to the judiciary. Conclusion Korea IP strategy has covered all types of intellectual properties clearly. The strategy does not emphasize only on patent, it also includes copyright, trademark etc. If Taiwan wants to transform the economic type to IP-based economy, like Korea, offering protection to other intellectual property rights should not be ignored, too. As Taiwan intends to promote cultural and creative industry and shows soft power of Taiwan around the world, the IP strategy of Taiwan should be planned more comprehensively in the future. In addition to protecting copyrights by laws and regulations, for cultural and creative industry, trading of copyrights is equally important. The remarkable part of Korea IP strategy is the construction of copyright online trading platform. Accordingly, Taiwan should establish our own copyright online trading platform combining copyright registration and source identification system, and seriously consider the feasibility of giving registered copyright legal effects. A well-trading platform integrating registration and source identification system might decrease risks during the process of licensing the copyright. At the same time, many infringements of copyrights are caused because of the nature of the modern network technology. In order to track illegal copies on the internet, Taiwan also should develop online monitoring system to help copyright owners to collect and preserve infringement evidences. In sum, a copyright trading system (including ICN and online intellectual property monitoring system) could reinforce soft power of Taiwan cultural and creative industry well.

A Preliminary Study on The Legal Effect of the Blockchain-Generated Data in Taiwan

A Preliminary Study on The Legal Effect of the Blockchain-Generated Data in Taiwan I. Preface   Governments around the world have set various regulations and guidelines to deal with the increasing application of blockchain technology, trying to keep the law up to date with technological development and the latest trends. Among them, the application of blockchain technology to regulations has become a hot topic. Because of its features, such as immutable, easy to verify and transparently disclosed, it can improve the efficiency of law enforcement and reduce cost. Moreover, decentralization and the verification mechanism generated by mathematical computation can avoid the disputes arising from the existing system, in which the mechanism is set up and controlled by independent institutions, and thus the credibility could be universal. The international trend also shows the importance attached to the application of blockchain technology in the legal field. In 2017, the “Legal Services Innovation Index”, a study conducted by the Michigan State University College of Law and Google evaluated the level of innovation of law firms according to the search data on innovation indicators of the world’s major law firms. Blockchain has the highest number of clicks among all indices, and the average number of clicks of blockchain is more than twice that of AI.[1] In addition, there are international cases regarding the connection between the blockchain technology and legal provisions as well as the real cases that used blockchain technology to handle legal matters.[2] An organization, such as the Global Legal Blockchain Consortium (GLBC), work with enterprises, law firms, software development units, and schools to study the standards formulation and application methods of the application of blockchain technology to law-related matters. [3] This article will first discuss the legal enforceability of data generated by the blockchain technology through international cases, then review Taiwan’s current status and the legal enforceability of the data generated by the blockchain technology and to explore possible direction for regulatory adjustment if the government intends to ease the restriction on the application of blockchain in the fields of evidence authentication and deposition. II. International cases 1. US case: adjust the existing regulations and recognize the enforceability of blockchain technology   The amendment HB2417[4] to the Arizona Electronic Transactions Act (AETA) signed by Arizona in April 2017 defines the blockchain technology and smart contracts and recognizes their legal effect on signatures, records and smart contracts. HB2417 defines “blockchain technology” as a “distributed, decentralized, shared and replicated ledger, which may be public or private, permissioned or permissionless, or driven by “tokenized crypto economics or tokenless” and provides that the “data on the ledger” is protected with cryptography, is immutable and auditable and provides an uncensored truth.” It’s worth noting that although, by definition, the data is true, it is uncensored truth in nature, which emphasizes the originality of the data. A “smart contract” is an “event driven program, with state, that runs on a distributed, decentralized, shared and replicated ledger that can take custody over and instruct transfer of assets on that ledger.” Under the original AETA regulations, records or signatures in electronic form cannot be deprived of legal validity and enforceability merely because they are in electronic form. To eliminate the legal uncertainty of any blockchain related transactions and smart contracts related to digital assets, HB 2417 states that a signature that is secured through blockchain technology is considered to be in an electronic form and to be an electronic signature, and a record or contract that is secured through blockchain technology is considered to be in an electronic form and to be an electronic record. The statute also provides that smart contracts may exist in business, and a contract relating to a transaction may not be denied legal effect, validity or enforceability solely because that contract contains a “smart contract term.” This makes the enforceability of electronic signing and electronic transactions made by Arizona’s blockchain technology equivalent to that of the signature and contract made by the traditional written format. In the following year, the Ohio governor signed the amendment SB220[5] to the Uniform Electronic Transactions Act (UETA) in August 2018, which took effect from November. The focus of the amendment is the same as that in Arizona. Although, unlike HB 2417, SB220 does not define blockchain technology, the added content can still guarantee the enforceability of electronic signatures and contracts made by the blockchain technology. The focus of the two amendments in the US is to supplement and revise the laws and regulations made in the past so that they are applicable to the transaction method under blockchain technology and have the same effect as other recognized methods. This reduces the uncertainty related to blockchain technology at the regulatory and commercial application level, and is expected to attract the blockchain related companies, investors and developers. 2. Case of China: The enforceability of blockchain technology in evidence deposition is recognized in line with courts’ new type of judgment.   In September 2018, the Supreme People's Court implemented “The Provisions on Several Issues Concerning the Trial of Cases by Internet Courts,”[6] in which Paragraph 2 of Article 11 mentions that where the authenticity of the electronic data submitted by a party can be proven through electronic signature, trusted time stamp, hash value check, blockchain or any other evidence collection, fixation or tamper-proofing technological means, or through the certification on an electronic evidence collection and preservation platform, the Internet court shall make a confirmation. It shows that the Internet court can recognize the evidence deposited by blockchain technology, and its enforceability is equivalent to that of other technologies if its authenticity can be proved. Paragraph 1 of the same article also proposes the basis for review and judgment on the relevant standards for the broad definition of electronic evidence recognition. “The authenticity of generation, collection, storage and transmission process of the electronic data shall be examined and judged, and the items to be reviewed include whether the hardware and software environments such as the computer system based on which electronic data is generated, collected, stored and transmitted are safe and reliable; whether electronic data originator and generation time are specified, and whether the contents shown are clear, objective and accurate; whether the storage and safekeeping media of electronic data are definite, and whether the safekeeping methods and means are appropriate; whether electronic data extractor and fixer, and electronic data extraction and fixation tools and methods are reliable, and whether the extraction process can be reproduced; whether the contents of electronic data are added, deleted, modified or incomplete, or fall under any other circumstance; and whether electronic data can be verified in specific methods.” The judgment is based on a clear review. It is a supplement to the notarization process, which was the solo judgment basis for the enforceability of digital evidence. In addition, the rules on proof are clearly set out in Article 9, which covers two situations: online and offline. For offline evidence, the parties can convert it into electronic materials by scanning, re-shooting and duplicating, and then upload it to the litigation platform. For online evidence, it can be divided into two situations. One is the online electronic evidence possessed by the party, which can be imported to the litigation platform by providing links or uploading materials. The other is that the Internet court can obtain the structural information of the relevant cases from the e-commerce platform operators, Internet service providers and electronic data deposition and retrieve platform, and import it to the litigation platform to directly provide the information to both parties so that they can select and prove their claims. In this way, the court can use technical means to complete the migration and visual presentation of information. Before the Supreme People's Court enforced the provisions, the Hangzhou Internet Court of China recognized the enforceability of electronic evidence under the blockchain technology when hearing a copyright dispute in June 2018. The court's judgment pointed out that after reviewing the impartiality, technical level and evidence preservation methods of the blockchain evidence deposit service provider, the enforceability of the evidence is recognized, and thus the case was deemed infringement.[7] Beijing Dongcheng District Court also reviewed the blockchain deposition technology in an infringement of information network communication in September of the same year, including data generation, deposition, preservation, and recognized the enforceability of electronic evidence made by the blockchain technology. The court adopted the electronic evidence[8]. The Beijing Internet Court allows evidence deposition of the litigation files and evidence uploaded to the electronic litigation platform through the Balance Chain of evidence deposition established by the blockchain technology when handling the litigation cases online. This can prevent tampering and ensure the safety of litigation while keeping possible litigation evidence to facilitate verification in the future. While the Balance Chain is going online, the supporting standards, including the Beijing Internet Court Electronic Evidence Platform Access and Management Standards, the Enforcement Rules of the Beijing Internet Court Electronic Evidence Platform Access and Management Standards, the Application Form for Beijing Internet Court Electronic Evidence Deposition Access and the Instruction on the Beijing Internet Court Electronic Evidence Deposition Access Interface, are released simultaneously. These supporting standards prescribe the requirement of receivers, the requirement for the electronic information system of the receiver and the requirement for the juridical application of the evidence platform in details from the practical point of view so that the potential receivers can interconnect in a compliant manner while ensuring the quality of the connected data. III. Taiwan’s current situation   In the above cases, the United States amended the laws and regulations related to the electronic transaction by increasing the scope of the terms, such as electronic forms of records, signatures and transactions so that the records, signatures and transactions made by the blockchain technology is as effective as that of other technologies. According to Article 9 of the Taiwanese Electronic Signatures Act, the enforceability of the data generated by blockchain technology shall still be judged case by case in terms of the technology for electronic documents, signature and transaction formation, and its applicability or exclusion shall be determined by laws or administrative agencies. In China, the role of electronic data is discussed in the relevant standards used by the Internet Court to examine the cases. Regarding the definition of electronic materials, electronic records and electronic documents, Paragraph 1 of Article 2 of the Taiwanese Electronic Signatures Act defines electronic document as a record in electronic form, which is made of “any text, sound, picture, image, symbol, or other information generated by electronic or other means not directly recognizable by human perceptions, and which is capable of conveying its intended information.”[9] In addition, Article 4 states “With the consent of the other party, an electronic record can be employed as a declaration of intent. Where a law or regulation requires that information be provided in writing, if the content of the information can be presented in its integrity and remains accessible for subsequent reference, with the consent of the other party, the requirement is satisfied by providing an electronic record. By stipulation of a law or regulation or prescription of a government agencies, the application of the two preceding paragraphs may be exempted, or otherwise require that particular technology or procedure be followed. In the event that particular technology or procedure is required, the stipulation or prescription shall be fair and reasonable, and shall not provide preferential treatment without proper justifications.” [10] The electronic records, regardless of the type of technology, are given the same effect as paper documents with the consent of both parties. In litigation, electronic records, electronic evidence or similar terms are not found in the Criminal Code of the Republic of China, the Civil Code, the Code of Criminal Procedure and the Taiwan Code of Civil Procedure. The adoption of electronic records often refers to Paragraph 2 of Article 220 of the Criminal Code of the Republic of China[11]. An audio recording, a visual recording, or an electromagnetic recording and the voices, images or symbols that are shown through the computer process and are sufficient evidence of intention shall be considered a document. The content that is considered meaningful is that the identity of the person expressing the content is identifiable according to the content and can be used to prove legal relationship or fact in social life. The relevant standards for proof under the electronic evidence follow Article 363 of the Taiwan Code of Civil Procedure[12]. For non-documentary objects which operate as documents, including those are accessible only through technological devices or those that are practically difficult to produce their original version, a writing representing its content along with a proof of the content represented as being true to the original will be acceptable. However, the way of proof or recognition standards are not sufficiently described. Or according to Paragraph 2 of Article 159-4 of the Code of Criminal Procedure, “documents of recording nature, or documents of certifying nature made by a person in the course of performing professional duty or regular day to day business, unless circumstances exist making it obviously unreliable. In addition”, and Paragraph 3 “ Documents made in other reliable circumstances in addition to the special circumstances specified in the preceding two Items.” [13] In fact, the Juridical Yuan started to promote the electronic litigation platform (including online litigation) in 2016, and has launched the online litigation business by gradually opening the application for different types of applicants and litigation.[14] However, there is no description on the technical type and inspection standards of electronic evidence. Moreover, only the litigation evidence is uploaded. There is no evidence deposition before litigation for comparison during litigation.   Under Taiwan’s laws and regulations, electronic evidence and its proving method is not significantly different from other types of evidence. The judgment of evidence shall still depend on judges’ recognition on the evidence. Taking the practice of criminal litigation as an example, it can be viewed at three levels[15]: 1. The submission of the evidence. If the evidence is collected illegally, not following a statutory method or is not logically related to the pending matters, it will be excluded. This is the way to determine whether the evidence is eligible to enter the evidence investigation process. 2. In the investigation of evidence, the method of investigation (e.g., whether it is legal), the determination of relevance and the debate on evidence (e.g., to confirm the identity of the person producing the electronic evidence, whether the electronic evidence is identical to the original version without addition, deletion or alteration) are investigated during the investigation procedure. 3. The debate on evidence is to determine the power of the evidence by considering the relationship among the elements that constitute the whole and whether the evidence can prove the connection among all elements. In addition, whether the electronic evidence is consistent with the original version is often based on Article 80 of the Notary Act, "When making notarial deeds, notaries shall write down the statements listened to, the circumstances witnessed, and other facts they have actually experienced. The means and results of the experience shall also be stated in the notarial deeds.” [16] A notary shall review the electronic evidence and record the inspection process and the inspection results to demonstrate its credibility. VI. Conclusions and recommendations   According to the latest 2050 smart government plan[17] announced in the Executive Yuan’s 3632nd meeting held on December 27, 2018, the government is planning to connect the database of each government agency through blockchain technology, and the plan also includes establishment of digital identification. It is foreseeable that there will be more and more electronic materials, documents and records connected by blockchain technology in the future. When it comes to improve management efficiency and reduce the barriers to introduce this technology to various sectors, it is necessary to adjust the related regulations. At present, there are no statutory provisions for the technology that assist the use of the electronic evidence involved in traditional litigation channels or online platforms, including using blockchain for evidence deposition and authentication . This also poses uncertainty to the judges when they make judgments. If we consider the continuous development and breakthrough of technology, which is relatively faster than the legislative process, and the traditional tangible transactions and contracts are still the majority in life, Taiwan has defined electronic materials, electronic records and electronic documents in the Electronic Signatures Act to ensure and strengthen the legal rights and benefits under the adoption of the technology. In addition, the Electronic Signatures Act also reserves the right to determine whether the technology is applicable to the laws and regulations or administrative agencies. In other words, the technology behind electronic materials, records and documents are not specified, and the aforementioned electronic materials have the same effect as the contracts and signature as the traditional written format. However, there are no standards to specify which standards are valid for evidence deposition and authentication for electronic materials on the level of deposition and authentication. In the future, when improving the relevant functions of the online litigation platform, the Juridical Yuan can also consider using technologies, such as blockchain or timestamps to provide evidence deposition service, which is expected to enhance the efficiency of evidence verification for online litigation in the future and prevent wasting review resources on invalid evidence for a better operation mode. This is in line with the government's policy direction. By providing support and demonstration of emerging technologies, not only limited to blockchain, on the legal level, it can reduce the public’s uncertainty and risk on introducing or applying the technology to legal process. This is very helpful in realizing a large scale application of the technology. [1] Legal Services Innovation Index, Phase 1, Version 1.0, https://www.legaltechinnovation.com/law-firm-index/ (last visited on Jan. 11, 2019). [2] For example, Arizona's Arizona Electronic Transactions Act (AETA) and Ohio’s Uniform Electronic Transactions Act (UETA) described the electronic signature and the enforceability of contracts under blockchain technology; in China, Beijing Internet Court provides litigation files and litigation evidence deposition service based on blockchain technology for future litigation. [3] The Global Legal Blockchain Consortium website, https://legalconsortium.org/ (last visited on Jan. 11, 2019). [4] H.B. 2417, 53th Leg., 1st Regular. (AZ. 2017). [5] S.B. 220, 132ND General Assembly. (OH. 2017-2018). [6]“The Provisions on Several Issues Concerning the Trial of Cases by Internet Courts,” the Supreme People's Court of the People’s Republic of China http://www.court.gov.cn/zixun-xiangqing-116981.html (last visited on Jan. 11, 2019). [7] Tencent Research Institute, <The era of judicial blockchain has arrived? ——from the two cases of blockchain electronic deposition>, October 23, 2018, https://ek21.com/news/1/132154/ (last visited on Jan. 11, 2019). [8] Securities Daily, <Beijing Dongcheng District Court confirmed the evidence collection by blockchain for the first time-- application of "blockchain + justice" for new opportunities in history> October 20, 2018, https://www.jinse.com/bitcoin/258170.html (last visited on Jan. 11, 2019). [9] Paragraph 1 of Article 2 of the Electronic Signatures Act [10] Article 4 of the Electronic Signatures Act [11] Paragraph 2 of Article 220, “A writing, symbol, drawing, photograph on a piece of paper or an article which by custom or by special agreement is sufficient evidence of intention therein contained shall be considered a document within the meaning of this Chapter and other chapters. So shall be an audio recording, a visual recording, or an electromagnetic recording and the voices, images or symbols that are shown through computer process and are sufficient evidence of intention.” [12] Article 363 of the Taiwan Code of Civil Procedure, “The provisions of this Item shall apply mutatis mutandis to non-documentary objects which operate as documents. Where the content of a document or an object provided in the preceding paragraph is accessible only through technological devices or it is practically difficult to produce its original version, a writing representing its content along with a proof of the content represented as being true to the original will be acceptable. The court may, if necessary, order an explanation of the document, object, or writing representing the content thereof provided in the two preceding paragraphs.” [13] Paragraph 2 of Article 159-4 of the Code of Criminal Procedure [14] Liberty Times, <The Juridical Yuan is promoting “E-litigation.” Two new systems are on the road.” August 1, 2018, http://news.ltn.com.tw/news/society/breakingnews/2506118 (last visited on Jan. 11, 2019). [15] Chih-Lung Chen, “Seminar on the Reform of the Code of Criminal Procedure 3: Revision Direction of Rule of Evidence,” The Taiwan Law Review, Issue 52, Page 71-73 (1999). [16] Article 80 of the Notary Act. [17] BlockTempo, <The Executive Yuan Announced the Smart Government New Plan: the Taiwan Government will Use Blockchain Technology to Establish Information Exchange Mechanism of Various Agencies>, January 2, 2019, https://www.blocktempo.Com/taiwan-gv-want-to-use-blockchain-tech-build-data/ (last visited on Jan. 11, 2019).

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