Testimony to the Subcommittee on Courts, The Internet and Intellectual Property

Committee on the Judiciary

U.S. House of Representatives

March 13, 2003

 

Joan P. Borsten

President, Films By Jove, Inc.

 

“Intellectual Property Rights Violations in U.S.-Russian Trade”

 

 

Chairman Smith, Congressman Berman and other distinguished members of the subcommittee, I want to thank you for the invitation to appear before the Subcommittee today.  I come to you as president of a small business that invested in Russia and is in danger of having its investment expropriated without compensation.  I also come to you as the representative of a group of small businesses who have suffered a similar fate in Russia.   

 

As a victim of Russia’s weak enforcement of intellectual property rights, I come to you with a warning that Russia’s disrespect for IP rights is on the increase due to the difference between stated policy and what certain government officials unofficially condone in practice.  Even as Russia moves toward membership in the WTO, systematic copyright violations and collusion between government officials and pirates both continue unabated. 

 

Finally, I come to you as a victim of a breakdown of separation of powers between Russia’s executive and judicial branches: from the highest federal courts to the smallest regional courts, judges make ill-founded rulings when government officials often with private agendas exert pressure on courts in the name of  “protection of state interests.”

 

So as you can see, I have a number of issues to discuss, but here at the outset let me make clear that my comments do not purport to make any linkage between piracy and organized crime and terrorism.  Others more qualified may speak directly to those precise issues, but the purpose of my testimony today is to outline my experience with intellectual property rights violations in Russia.  To demonstrate why this matters to the U.S. Congress, I would like to highlight the following points and the impact they have on our bilateral commercial relationship:

 

I.                    IPR violations in Russia hurt U.S. investors

II.                 The use of “state interests” and illegal ex-parte meetings hinder legitimate judicial reform efforts in Russia

III.               Russia disregards U.S. and international arbitration court decisions

IV.              The U.S. government must play an important role in addressing Russian IPR violations in the United States

 

In my conclusion, I will present several recommendations to Congress on steps that can be taken to address these issues.

 

I. IPR violations in Russia hurt U.S. investors

 
The International Intellectual Property Alliance (IIPA) 2003 report on Russia cites losses to U.S. copyright holders of $1 billion a year, making Russia one of the worst violators of U.S. intellectual property rights.  
 
The majority of my testimony will be dedicated to IPR violations in the entertainment industry (e.g., films, CDs, videocassettes, DVDs, electronic games, etc.).  But there is another, equally important area impacted by IPR violations — technology transfer.  I would like to share an example with you.  My colleague, Gary Johnson, is President of Sawyer Research Products.  (Gary is in the audience today, has submitted separate testimony for the record, and is happy to answer any questions.)  Sawyer is a global leader in the business and technology of single crystal piezoelectric materials, especially quartz, which is second only to the production of silicon in the ranking of crystal materials used in electronics.
 
In 1994, Sawyer became a shareholder of Quartz Glass Plant in the Vladimir region of Russia.  The plant’s success, in large measure the result of utilizing Sawyer’s world-class technology in a neglected facility in the heart of Russia, caught the eye of the local governor who waved the “protection of state interests” flag.  Shortly following a court decision favorable to their ends, private parties closely linked to the local administration deployed a private security force to block Sawyer from its own plant, despite the fact that Sawyer had not exhausted the appeals process and litigation continued.  Sawyer technology now is available to a nearby plant still under state ownership, as well as to the private parties continuing to occupy the object of Sawyer’s investment.
 
The Sawyer example highlights the devastating impact IPR violations have on U.S. small businesses investing in Russia.  I would like to emphasize this point, because, unlike our larger counterparts, SMEs do not have the financial or human resources necessary to devote to the extensive legal proceedings resulting from IPR violations in Russia.   

 

Films By Jove case

 

Now I would like to provide my personal experience with IPR/copyright violations in Russia.

 

I have been an executive in the U.S. motion picture industry for over 15 years, and am currently president and co-owner of the Los Angeles-based film production and distribution company, Films By Jove.  Eleven years ago, in May 1992, we signed a contract with Russia's leading animation studio to restore and market a large body of Soviet-era animated films.  For your background, during the Soviet era, this type of animation had been sold for peanuts, by the kilo, or just given as a bonus to companies buying a large package of Soviet feature films.  

 

Today the Russian animation we distribute can be seen in theaters and on television all over the world, and is available on videocassettes and DVD in thousands of retail outlets in North America, South America, Europe, and Asia.  Together with our partner Mikhail Baryshnikov, we gave the old animation new cachet by revoicing it in English with actors such as Jessica Lange, Martin Sheen and Charlton Heston.  We revoiced in French with actors like Catherine Deneuve, and in Spanish with Julio Iglesias.  Together with the prestigious art book publisher Harry N. Abrams, we published the only book of Russian fairy tales currently in print in the United States, handsomely illustrated with cells from the animation.

 

We are proud to have contributed to the safeguarding and promotion of Russia’s rich artistic heritage.  We accomplished this by investing millions of dollars to acquire, repair, restore, and distribute these films, making them accessible for the first time to the general public outside the former USSR.  The Soviets had freely “borrowed” Western literature and music to make some of the best animated films — a bad habit that did not end after the USSR signed its first intellectual property convention in 1973.  So we also had to plead and cajole representatives of these writers and musicians to license us the rights necessary to keep these films alive.

 

In 1999, seven years after we licensed the animation library, when the investment in restoring the animated films first showed a profit for the Russian animation studio and for my company, the Russian State Film Committee (later absorbed into the Ministry of Culture) commenced a legal and political campaign to retroactively void our contract.  This effort began when the State Film Committee set up in Moscow a shell corporation with the same name as the Russian studio from which we had licensed the animation rights.  Ministry of Culture officials claimed that this new company, established in 1999, was the true copyright holder back in 1992, instead of the entity with whom we had contracted.  Hence, they claimed, our contract was void retroactively. 

 

Thus began a protracted series of suits and countersuits, decisions and appeals in Russian courts between the animation studio that had licensed the rights to us and the Ministry of Culture.  During this period, Films By Jove suffered financial losses because the Ministry of Culture prohibited the Russian State Film Archives from supplying us with films for which we had the rights.  Such interference with our normal business operations became

part of an organized campaign to deny our property rights.

 

Throughout this time, Ministry of Culture officials significantly damaged my company’s interests by sending letters via Russian embassies to broadcasters with whom we were negotiating — informing them, falsely, that only licenses issued by the dummy corporation were legitimate and implying that Films By Jove could not therefore contract out the rights.  These misleading statements have deceived our trade partners, interfered with our commercial activities, and caused us serious financial losses due to damage to our reputation and lost sales.  Furthermore, the letters from the Ministry blatantly misrepresent the fact that Films By Jove has successfully defended its copyright in the U.S. courts.  The studio with which Films by Jove contracted in 1992 was also successful in the Russian court system, only to have the decisions overturned in the name of “state interests.” 

 

The unrelenting and organized efforts by Russian government officials to annul the contractual rights of Films By Jove, and to destroy our investment, have already come to the attention of the U.S. Congress.  In 2002, two letters concerning our case were sent to Russian government officials jointly signed by Congressman Berman, Congressman Waxman and Congressman Weldon, including the following points:

 

1.      Officials of the Russian government “appear to have inappropriately influenced the decisions of the Russian courts in violation of the constitutional separation of powers between the two branches of government”;

 

2.      Such efforts directly harm the long-term investment of Films By Jove; and

 

3.      The Ministry of Culture does not appear to be committed to safeguarding the rights of American investors, contrary to President Putin’s repeated statements pledging that investors will be guaranteed a level playing field, adherence to the rule of law, an independent judiciary, and no government interference in private commercial contracts.

 

In response, Congressmen Berman, Waxman and Weldon received a letter from the Russian Ambassador to the U.S. questioning the reference to Films By Jove as an investor.  Apparently the Russians destroyed evidence of our wire transfers and payments to the studio (assuming U.S. banks do not keep records) because, according to the Russian Ambassador, the Russian company received no payments from the U.S. party to the contract. 

 

In addition to the assistance we received from the U.S. Congress regarding our case, U.S. Ambassador to Russia Alexander Vershbow and the staff at the U.S. Embassy have also raised our case repeatedly with the Minister of Economic Development and Trade.  Ambassador Vershbow met personally with the Minister of Culture last November and explained that we are ready to conduct negotiations aimed at reaching an amicable and transparent solution based on the rule of law.

 

In spite of repeated assurances that our concerns would be addressed, a new full-scale campaign was mounted at an international television sales expo in France last fall to advise all buyers that we were “pirates” and “thieves,” that all new contracts had to be signed with them, and that any contracts previously signed with our company were null and void.  The state-studio’s brochures specifically advertised the titles we legally acquired, paid for, and into which we invested significant amounts of money for restoration and revoicing in order to make them sellable to international broadcasters. 

 

To address this situation, we had recourse to a French court decision that we had won in 1996 against Sovexportfilm, another state-owned Russian company that we caught pirating in the early 1990s (it too enjoys Ministry of Culture support).  On the basis of that decision, a French magistrate ordered his bailiff to shut down the Russian sales booth at Cannes in order to gather evidence about the shell company’s commercial activities that violated our intellectual property rights.  The director of the shell company and his deputy both told the French bailiff that they worked for the Russian Ministry of Culture.

 

The Russian Ministry of Culture is now in the process of liquidating the studio with which we signed our agreement, showing no concern at all for the livelihoods and pensions of the 300 shareholders, most long-term employees of the animation studio. 

 

 

IPR violations and expropriation — to what end?

 

It appears that part of the impetus for these copyright violations is the Ministry’s goal to establish a Soviet-type structure to funnel profits directly into the pockets of the film industry’s leadership.  Currently, a state-owned entity, “Roskinoprokat,” is seeking to control all phases of the Russian feature film industry, from buying Kodak stock, to duplicating films for video and DVD, to producing Russian films, dubbing others into Russian, and controlling all cinema houses in Russia.  All of the film studios have had to become state companies.  Most have already had their libraries of films made during the USSR extracted from the production arms. 

 

This desire to control all is what led the Ministry of Culture to destroy the successor of the studio with which we signed our contract.  The expropriation of our property rights under this contract was another well-orchestrated step toward concentrating in the same hands all of the animation rights.

 

You will hear more about Roskinoprokat in the coming years because, as they openly state in interview after interview in Russia, the biggest plum is rights to distribute U.S. studio films, which generate the biggest profits in Russia.  More than 100 modern movie theatres operate in Russia today, a number expected to triple in the next five years, with revenues predicted to reach $100 million.  Post-Soviet Russian films constitute only about 3 percent of the screen repertory and average $200,000 at the box office.  By contrast, American movies have proven to be very popular and very lucrative, grossing an average of $2.8 million at the Russian box office. 

 

The Minister of Culture and his Deputy have made clear that their goal is to consolidate everything into one big government-owned company.  Roskinoprokat recently announced plans to open offices in Los Angeles this summer and is already hiring staff.  One of their associates told me earlier this week that they believe it is only a “matter of time” before the major studios “succumb.”  The result will surely be a nightmare even worse than Sovexportfilm’s monopoly on importing foreign films into the Soviet Union. 

 

 

II. The use of “state interests” and illegal ex-parté meetings hinder legitimate judicial reform efforts in Russia

 

The importance of “state interests” in the application of law and administrative process in Russia raises critical separation of powers issues.  In the Soviet tradition, courts and administrative powers, including enforcement agencies, pursue a mission related to state interests.  They do not follow the Western norms of fair adjudication of law according to the facts and transparent procedures to implement rulings and otherwise conduct administrative process.  In the Russian environment, state prosecutors operating under control of the executive branch define “state interests” in many judicial proceedings.  Their very presence in a case frequently creates outcomes consistent with their objectives, rather than with the law and facts.

 

We unfortunately have experienced the illegitimate use of ex-parté meetings in court decisions.  At the same time that the Russian Ministry of Culture was challenging our copyright in U.S. court, it was continuing in Russian courts to challenge the legitimacy of the animation studio that had contracted with us.  After six rulings against the Ministry of Culture in the Russian courts, Ministry officials invited the Chief Justice of the Supreme Arbitrazh (or Commercial) Court to send a representative to a secret but well-documented “consultation” at the offices of Deputy Prime Minister Matviyenko.  The purpose of the meeting was to secure for the new government-owned studio rights that belonged by law to the studio with which we signed our contract.  No one from our side was invited of course, and such ex-parte meetings are against the law. 

 

The Chief Justice did send a representative to the meeting which was attended on behalf of the government by Minister of Culture Shvidkoy, two of his deputy ministers, a Ministry of Culture lawyer, a representative of the State Property Ministry, two representatives of the State Prosecutor’s Office, the director of the Russian patent bureau Rospatent, representatives of the Presidential Administration, director of the state-owned studio, and the chairman of new state-owned company  Roskinoprokat (“Russian Film Distribution”).

 

This ex-parté meeting resulted in one cassation court decision and one Supreme Arbitrazh (Commercial) Court decision that together vacated all lower court rulings that had previously been decided against the Ministry of Culture.  The effect of these decisions was that the properly registered successor of the company from which we gained our license was de-registered.  It should be noted that in his declaration to the U.S. Federal Court, which I have submitted for the record, the respected Russian jurist Sergei Pashin concluded that the Supreme Arbitrazh Court decision was clearly inconsistent with both Soviet and Russian law and prior decisions made by the same court about the same matter, and that it had all of the markings of what is known in Russia as a “state ordered decision.”

 

 

III.  Russia disregards U.S. and international arbitration court decisions

 

One of our contractual obligations was to defend the Russian studio’s copyright against pirates in our distribution territory, which included the United States.  In August 2000, while we were engaged in a lawsuit against a convicted felon for copyright violation in the U.S. Federal Court for the Eastern District of New York, the shell corporation set up by the Russian Ministry of Culture joined the suit as a third party on the side of the felon.  Their objective in joining the suit against us in U.S. court was to attempt to gain a ruling that Films By Jove was not the legitimate copyright holder of the animation.  The Ministry was thus tenacious in its organized campaign to undermine my company’s rights, and we were unexpectedly burdened with enormous legal expenses in the effort to defend ourselves.

 

As it turned out, the Russian Ministry of Culture allied itself with the losing party in the U.S. district court: Films By Jove won the case.  The felon with whom the Ministry had allied itself was arrested in December 2000 and subsequently pleaded guilty to pirating the intellectual property of the Motion Picture Association of America and the Recording Industry of America using master tapes and optical cassettes illegally manufactured in Russia.  The Ministry’s support for this convicted felon has never wavered.

 

On a related note, I also want to strongly urge the U.S. government and members of the international community to address Russia’s failure to observe the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards.  As several of my small business colleagues will tell you, Russian bailiffs do not enforce foreign arbitral decisions, even when ordered to do so by the Russian Supreme Court.  I would be happy to provide examples of these cases if you so desire.

 

 

IV. The U.S. government must play an important role in addressing Russian IPR violations in the United States

 

Russian IPR violations not only impact our business in Russia, they affect our business in the U.S. and in other countries.  The losses I referenced earlier from the IIPA report on Russia do not include the massive additional losses caused by the import into the U.S., Germany and Israel — all countries with major populations of wealthy Russian immigrants — of illegally manufactured videos CDs, DVDs and software.

 

In the U.S., our government plays an important role in addressing IPR violations.  For example, in December 2000 when the FBI arrested a Brighton Beach video pirate for piracy of the MPAA and RIA — the same one we sued in U.S. Federal Court — they confiscated truckloads of master cassettes and CDs imported from Russia.  Unfortunately the pirate’s arrest only resulted in a momentary lull in the violations of Russian and U.S. intellectual property by the Russian émigré community — and for that we have to look to our own legal system. 

 

The pirate, Joseph Berov, opened his bootleg video business while on federal probation for importing Russian women into the U.S. for the purpose of indentured servitude.  Yet two years after his arrest by the FBI and one year after he pleaded guilty, Mr. Berov has yet to be sentenced by the U.S. Federal Court for the Eastern District of New York.  In the interim, he has opened two new superstores and resumed importing illegal video CDs from Russia.  The message to his partners at the Ministry of Culture and the local émigré community is that “crime pays.” 

 

Other examples of Russian IPR violations in the U.S. include the Ministry of Culture’s attempt last week to present the American Film Institute (AFI) with an animation program that violates both our license and the August 2001 U.S. Federal Court decision that we won.  The same program included feature film rights that were legally licensed to legitimate U.S. distributors by the very Russian studios the Ministry agrees are the legal copyright holders.  The AFI was vigilant and thus averted a major scandal.  Two years ago, the American Cinematheque was less vigilant, and, with the Ministry of Culture, organized a tour of films without the consent of the legitimate producer (Mosfilm) of the films.  The copyright holder was not consulted, not paid, and not even acknowledged. 

 

 

Conclusion

 

I would like to close my testimony today by offering the following recommendations to the U.S. government, in order to address IPR violations in Russia:

 

 

 

 

 

I want to thank the Subcommittee for giving me the opportunity to testify today, and I will be happy to answer any of your questions.