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IS A FORGED TRADEMARK OR COPYRIGHT LICENSING STATEMENT A FALSE DOCU-MENT?
In a majority of prior cases, courts have taken the view that if running a pirated computer game disk on a games console results in text indicating the name of the trademark or copyright owner and the licensing arrangements for the manu-facture of the disk (e.g. “Licensed by ABC Computer Entertainment, Inc.”) being displayed on a screen, then the sale of the disk constitutes the offense of using a false private quasi-document, under Article 216 of the Penal Code. However, in a 2005 criminal judgment, the Supreme Court held that in order to deter-mine whether such sale constitutes the above offense, the courts must examine whether, when selling the disk, the seller represented it to the buyer as counterfeit, or passed it off as genuine.
The Court stated that “using a false document” means using a falsified document in such a way that it may be taken to be genuine. Therefore, for the offense to take place, it is necessary that the user make some representation to the other party as to the content of the false document. If the person concerned supplies the document, but not in circumstances in which the other person can become aware of its content, this cannot be said to be “use” of the document. Further, if the packaging of a disk counterfeited by a person other than the seller does not bear text indicating the IP owner and the licensing arrangements, but such text only appears on a screen when the software is run on a games console, and the seller has not attempted to pass the disc off as genuine, but sold it as a counterfeit, then because the seller has made no false representations as to the con-tent of the private quasi-document, he has not acted with intent to deceive, and his actions do not constitute the offense of using a false private quasi-document.
In another 2005 criminal judgment, the Court also held, with regard to the penal provisions of the Trademark Act, that if a consumer is aware that a games software disk is counterfeit, then the seller cannot be held to have attempted to de-ceive the consumer in violation of the Trademark Act.
The above judgments may impact the effective-ness of future efforts to combat piracy of games software disks. Under Article 12 Paragraphs 1 and 2 of the Penal Code, in principle, for one to be penalized for an offense, he must have had the deliberate intention to commit that offense. If a seller of counterfeit games software disks was unaware that they were counterfeit, he can es-cape penalty for lack of criminal intent. For this reason, sellers of counterfeit goods usually claim in their defense that they were unaware that the goods they were selling were counterfeit, and that the IP owners have to prove the contrary.
But according to the above judgments, even if it is proven that a seller has the knowledge, if the seller establishes that he did not attempt to pass the goods off to the consumer as genuine, then he cannot have committed the offense of using a false document under the Penal Code, nor a criminal offense under the Trademark Act.