Feasibility of the accepting the analysis of participation in trademark infringement in Iranian and US law from the perspective of economic analysis

دانشنامه حقوق اقتصادی

Article 3, Volume 27, Issue 17, June 2020, Pages 45-76   

Document Type: Scientific research

DOI: 10.22067/le.v27i16.80651

Authors

Hamed Najafi^{* 1}; mahmoud sadeghi²; Morteza Shahbazinia²

¹Phd student of private law at tarbiat modares university, facoulty of law.

²Associate professor of facoulty of law at tarbiat modares university

Abstract

1- Introduction
Indirect liability in US, is creation of US case law and plays an important role in the functioning of the trademark system, in order not to mislead the consumer and reduce his search costs, as well as expanded protection of trademark rights. Given the US trade-economic and technological situation, this practice seems justified, which can well guarantee the US commercial and economic interests, not only in the domestic system, but also in the international trade. Innovation is the foundation of sustainable economic development in the age of knowledge-based economy and technological innovation, play a major role. However, the role of non-technological innovation, including trademarks, in economic growth and development has been considered. However, this role is still secondary and complementary, and it is technological innovation that Determines the  power of competitiveness of companies and governments in domestic and international trade. The us is a country that has a privileged position in the world in terms of trade and economy, and this privileged position, without a doubt, depends on its position in the field of technological innovation. Technological innovation has boosted the country's export growth and, consequently, its economic growth by improving its competitiveness. Obviously, in such a situation, strengthening the non-technological innovation system will strengthen the position of technology and will be very effective in protecting the rights of technology owners. With this analysis, regardless of the legal basis of indirect liability for trademark infringement, the recognition of such liability is in line with the US trade-economic and technological situation and can better guarantee and protect its benefits in international trade relations. In contrast, Iranian economic and social system is less desirable than the US  in terms of technological innovation. Therefore, the identification of such an institution is not recommended in it and it seems that at least based on the situation of innovation production in Iran and exports in this field, not identifying a similar institution has a logical aspect. On the other hand, the common cases  of indirect liability arising from participation in trademark infringement in Iranian law, are subject to the rules governing the determining the liable person under the rule of the combination causes in loss. The application of these rules, such as the rule of liability that takes precedence over the effect, entails the permanent liability of the direct infringer, because  at first, his act is effective in infringing the trademark.
 
2- Theoretical frame work
Participation in trademark infringement, is the facilitation or encouragement of trademark infringement without committing the actus reus  of trademark infringement. Sometimes, this partnership is proven by not supervising the direct infringing act, in addition to gaining financial benefit from the infringement of the mark, the latter type is called vicarous infringement and the first case is called contributory infringement. Identifying this type of liability expand trademark rights. In terms of economic analysis, broader brand protection leads to productivity if technology is at a high level , because consumers become loyal to higher-tech brands. The relationship between a sense of loyalty to the brand and the technology of the products, makes the rules of indirect trademark infringement in the US described as favorable, and in contrast, due to the low technology of Iranian products in the market compared to US products, lack of explicit identification of Trademark infringement in Iran, seems optimal.
 
3- Methodology
Research data were collected using the library method. Physical and ebooks and articles are the main sources of data for this research. After collecting data in this way, the present study, with an analytical-descriptive method, first examines Concepts about participation in trademark infringement, such as contributory and vicarious infringement, are examined. Then, the principles and foundations of each of these two types of infringement in the US legal system are explained, and then the issue is examined from the perspective of economic analysis. Finally, the legal and economic situation of Iran in relation to the issue of participation in trademark infringement is analyzed.
 
4- Results & Discussion
cases and principles of contributory and vicarious infringement in US are consistent with the business, economic, and technological situation in this country; Technological innovation is in a favorable situation, and for this reason, in accordance with such a situation, the elements ofcontributory and vicarious infringement, have been defined. There is no similar theory in Iranian law and considering the commercial, economic and technological situation in Iran, identifying a similar theory is not recommended.
5- Conclusions & Suggestions
The degree of technological development of countries and their political, commercial and economic conditions, especially at the level of international interactions, play a pivotal role in determining the legal policies of countries. Legal regulations are a tool at the disposal of countries to use them to pursue their goals. Accordingly, just as a single intellectual property rights framework is not appropriate for all aspects of this legal system, a single framework cannot be the criterion for action by all countries. The institution of indirect trademark liability has two different outcomes and functions in the two legal and economic systems of Iran and the US; In the US, due to the high level of technological innovation and its superior competitiveness domestically, it leads to the development of legitimate trade competition, and at the level of international interactions, it will increase the country's economic growth through the development of technological innovations. Conversely, recognizing this in Iran will reduce new businesses and legitimate activities domestically, and in the international arena will lead to currency outflows and difficulty in technological innovation  due to the transfer of liability risk to legitimate commercial activities and the imposition of foreign trademark management costs on domestic industries.Therefore, the lack of identification of the institution of indirect trademark infringement in Iran and reliance on the general rules of civil liability in this regard, is considered sufficient and especially in the context of scientific and technological sanctions on Iran, it seems more desirable.
 

Keywords

trademark; contributing in infringement; economic groth

References

[1]       Adams Charles W.,(2007). Indirect Infringement from a Tort Law Perspective, U. RICH. L. REV. No 42.

[2]       Agress Rachel N. ( 2011). Is There Ever a Reason to Know? A Comparison of the Contributory Liability "Knowledge" Standard for Websites Hosting Infringed Trademarked Content Versus Infringed Copyrighted Content, 5 J. Bus. Entrepreneurship & L. Iss. 1.

[3]       Batholomew Mark and John Tehranian, (2006).The Secret Life of Legal Doctrine: The Divergent Evolution of Secondary Liability in Trademark

[4]       Bikoff James L., et al,(2010), Hauling in the middleman: contributory trade mark infringement in North America, Journal of Intellectual Property Law & Practice, Vol. 5, No. 5.

[5]       Brian Kaiser,( 2002). Contributory Trademark Infringement by Internet Service Providers: An Argument for Limitation, 7 J. TECH. L. & POL'Y.

[6]       Combs Nathan Isaac,(2005). Note, Civil Aiding and Abetting Liability, Vanderbilt Law Review, Vol. 58, Issue 1.

[7]       Coming Glass Works v. Jeanette Glass Co., 308 F. Supp. 1321 (S.D.N.Y. 1970(..

[8]       Crealey Maria,(2003). Applying New Product Development Models to the Performing Arts: Strategies for Managing Risk. International Journal of Arts Management, 5(3).

[9]       Cross John T, (1994). Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement, 80 Iowa L. Rev.

[10]   Cross John T., (2001). Contributory and Vicarious Liability for Trade-mark Dilution, OR. L. REV. No 80.

[11]   Dinwoodie Graeme B., Mark D. Janis,(2008). Trademark Law and Theory: A Handbook of Contemporary Research, Edward Elgar Publishing,

[12]   Dogan Stacey L. , Mark A. Lemley,( 2007). A Search-Costs Theory of Limiting Doctrines in Trademark Law, Trademark Rep. No 97.

[13]   Fagerberg Jan,(1988). International Competitiveness, International competitiveness, Economic Journal, Vol. 98, No. 391.

[14]   Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).

[15]   helli, Al-Hassan Ibn Yusuf Ibn Al-Muttahir, (1990). arshad al'adhhan, Qom, Islamic Publishing Institute. ( in arabic)

[16]   helli, Jamal al-Din, Ahmad ibn Muhammad al-Asadi, (1988) ‌ Al-Madhhab al-Bar'a fi Sharh al-Mukhtasar al-Nafiya. (in arabic)

[17]   Jazini Ameli Shams al-Din Abu Abdullah Muhammad ibn Muhammad ibn Hamid ibn Makki, (no date) Sharia courses in Imami jurisprudence, Qom: Volume 3, Islamic Publishing Institute affiliated with the Society of Teachers. ( in arabic)

[18]   Jensen Michael, C., William H. Meckling, (1976).Theory of the firm: Managerial behavior, agency costs and capital structure, Journal of Financial Economics 3.

[19]   Kaplow, Louis and Shavell, Steven, Economic Analysis of Law (February 1999). NBER Working Paper No. w6960. Available at SSRN: https://ssrn.com/abstract=226405.

[20]   Katozian Nasser, (2003). Non-contractual requirements, Tehran: University of Tehran Press.

[21]   Keller Kevin Lane,(2003). Brand Synthesis: The Multidimensionality of Brand Knowledge,”Journal of Consumer Research,  Volume 29, Issue 4.

[22]  Khoui Sayyid Abu al-Qasim, (1993) Fundamentals of Completion of the Curriculum, vol. 2.

[23]   Landes William M. & Richard A. Posner,(1987). Trademark Law: An Economic Perspective, J. L. & Econ, No 30.

[24]   Lemley ,Mark, R. Anthony Reese,(2004). Reducing Digital Copyright Infringement Without Restricting Innovation, STAN. L. Rev.No56.

[25]   McKenna Mark P.,(2013). The Normative Foundations of Trademark Law, Notre Dame L. Rev. No 82.

[26]   Mohseni Farid, Nasir Malakouti, (2015). causation in the Islamic Penal Code 1392, Legal Journal of Justice, Volume 71, Number 91.

[27]   Nalchi Kashi, Alireza, Mohsen Rasoulian, Hossein Bojari, (2012). Investigating Consumers' Purchasing Behavior Towards Foreign Brands versus Domestic Brands, Development and Transformation Management, Volume 4, Number 8. ( in persian)

[28]   Pinha Paula ,(2009). Secondary Liability Under U.S. Copyright Law, east africa regional Seminar on: Copyright Enforcement in the Internet Era May 2009, Nairobi.

[29]   Rashti, Mirza Habibullah Ibn Mohammad Ali, (2010) Al-Ghassab book, Tehran: Shahid Motahari High School. ( inarabic)

[30]   Shahid Thani, (1993). Problems of understanding to refine the laws of Islam, Qom, Institute of Islamic Studies, vol. 7. ( in arabic)

[31]   Tabrizi, Mirza Javad, (2005) Tanqih al-Mubani al-Ahkam (Kitab al-Diyat), first edition. (in arabic)