By Meph Jia Gui｜Tingying Liu
When copyrights have been infringed, the copyright owner is confronted with the problem of how to obtain legal remedies in accordance with the PRC Copyright Law (hereinafter referred to as the “Copyright Law”). Articles 47 and 48 of the Copyright Law outline specific instances of copyright infringement. The two provisions also provide that when these infringements occur, the infringing party shall cease the infringement, eliminate the impact of the infringement, etc. However, in practice, there are various cases of copyright infringement in which the alleged infringement activities were not encompassed by the two simple provisions. Consequently, in a copyright infringement dispute, the court needs to determine whether the copyright infringement is established according to the particular circumstances of the case. As for the copyright owner, mastering the determination methods of copyright infringement is crucial, because these methods can help them collect evidence, prepare litigation strategies, and prevent the occurrence of copyright infringement in the future. Generally, four preconditions shall be met during the determination of copyright infringement: firstly, the “work” involved with the infringing action is the “work” that is protected by the Copyright Law; secondly, the infringed rights are the rights protected by the Copyright Law; thirdly, the infringing party has had an opportunity to get access to the work of the copyright owner, and the work of the alleged infringing party is identical or substantially similar to the work of the copyright owner; fourthly, the copyright owner files an action within a certain time limitation. This article aims to help companies who want to protect their copyrights understand how to determine copyright infringement in China.
I. The “work” protected by the Copyright Law
The “work” protected by the Copyright Law refers to the original intellectual achievements in the literary, artistic, and scientific domains that can be reproduced in a tangible form[Endnote 1]. Only when the “work” involved with the infringing action is the “work” protected by the Copyright Law, can the Copyright Law be applicable and can the copyright infringement be established. In general, two factors shall be noted when determining whether “work” falls within the scope of the protection of the Copyright Law: 1. whether the work is the type of work protected by the Copyright Law; 2. whether the work satisfies the “originality” requirement in the Copyright Law.
1. The types of works protected by the Copyright Law
“Work” protected by the Copyright Law is provided in the Article 3 of the Copyright Law[Endnote 2]. “Work” protected by the Copyright Law is restricted to the expression forms of the thoughts and feelings while the thoughts and feelings themselves are not under the protection of the Copyright Law. In practice, it is controversial whether some “work” can be deemed as thoughts or expression. For example, in the end of 2012, in China Sports Newspaper Headquarter and Guangdong Audiovisual Press Co., Ltd., Guangdong Haosheng Culture Communication Co., Ltd. copyright infringement dispute, Beijing Xicheng District People’s Court identified that the ninth set of the broadcast gymnastics neither shows the beauty of the literature and art, nor the beauty of science. Hence, it was not considered intellectual achievements in the literary, artistic, and scientific domains and did not belong to the expression form of thoughts and feelings. Consequently, that “work” was not protected by the Copyright Law.
In some circumstances, some works cannot be protected by the Copyright Law. According to the Article 5[Endnote 3] of the Copyright Law, news on current events, calendars, numerical tables or forms of general use, and formulas are not “work” protected by the Copyright Law.
2. The “originality” requirement in the Copyright Law
The Copyright Law stipulates that the works under the protection shall meet the minimum requirement of “originality,” which means only the works with originality can be protected by the Copyright Law. “Originality” is the core element of determining copyright infringement. “Work” with originality means that the work is created by the creator independently, rather than by plagiarizing. Originality here refers to the originality of the expression forms of the work, rather than the content of the work. Even though the content of a work is the same with other work, as long as its form of expression is created by the creator independently, this work can be protected by the Copyright Law.
Due to the popularity of smart phones, whether the Graphical User Interface[Endnote 4] (hereinafter referred to as the “GUI”) has originality has been hotly debated. In TP-LINK Technology Co., Ltd. and Shenzhen Jixiangtengda Technology Co., Ltd., Zhang Yabo computer user interface copyright infringement dispute (first trial: (2004) Shen Zhong Fa Min San Chu Zi No.549; second trial: (2005) Yue Gao Fa Min San Zhong Zi No.92), the Shenzhen Intermediate People’s Court concluded that the user interface of the router is a compiled “work” which has originality, and that the defendant had plagiarized parts of the plaintiff’s work which has copyright. However, in the second trial, the Guangdong High People’s Court held that the objective analysis according to the specific components of the user interface shall be conducted when deciding whether the user interface is the work protected by the Copyright Law. In this case, the selection, arrangement, and layout of the specific components of TL-R460 router user interface were determined to be simple permutations and combinations without any unique features which can be significantly different from the general router user interfaces. Therefore, it does not have originality, nor should be protected by the Copyright Law.
II. The rights of copyright owners
After confirming the “work” involved with the suspected infringing action is “work” which can be protected by the Copyright Law, it should also be clear that the rights infringed by the infringing action are the rights protected by the Copyright Law. Only in this way, can the copyright infringement be established. Article 10 and Chapter 4 of the Copyright Law explicitly delineate the rights of the copyright owner and other right holders, including the right of reproduction, the right to distribution, the right to disseminate the work via information networks, the rights of publishers, the rights of performers, and the rights of producers of sounds or visual recordings, etc. If the infringing action does not infringe the rights protected by the law, even though the “work” involved with the infringing action is “work” that is protected by the Copyright Law, the copyright infringement cannot be established. For example, the rental right of performers[Endnote 5] is a new right provided in the newly signed Beijing Treaty on Audiovisual Performances (not yet approved by the Standing Committee of the National People’s Congress, hereinafter referred to as the “Beijing Treaty”). Prior to the full enactment of the Beijing Treaty, the performers do not have the rental rights. In that circumstance, although the work of performers is work which is protected by the Copyright Law, renting their work without permission does not constitute copyright infringement.
The right of reproduction is the most basic and important property right of the copyright owner. It is also the crucial right protected by the Copyright Law of most countries. Practically, the infringement of the right of reproduction is not uncommon. For example, in Shuangye Inc. and Shanghai Enjia Economic and Trade Development Co., Ltd. (hereinafter referred to as the “Shanghai Enjia Co., Ltd.”) copyright infringement dispute ((2009) Hu Yi Zhong Min Wu (Zhi) Zai Chu Zi No.1), the Shanghai First Intermediate People’s Court held that: “The defendant, i.e., Shanghai Enjia Co., Ltd. used the ‘Crayon Xiaoxin’ art work on its products, publicity, and trademarks wantonly without the permission of the copyright owner. It also reproduced and sold its products as well as advertised its products through the network. All these acts constituted the reproduction, distribution, and dissemination via information networks protected against in the Copyright Law, which infringed the plaintiff’s rights of reproduction, distribution, and dissemination via information networks.”
Therefore, before the copyright owners take measures to protect their rights, they should find out whether certain acts constitute an infringement of their rights which are under the protection of the law. After confirming this foundation, the copyright owners will meet another precondition of identifying the copyright infringement.
III. The “contact” and “substantial similarity” principle
The “contact” and “substantial similarity” principle is the standard of determining the establishment of the copyright infringement. “Contact” means that the allegedly infringing party has ways to acquire the work of the copyright owner. “Contact” mainly considers whether the fruits of the labor are completed by the worker himself, rather than by copying others’ work. “Substantial similarity” means that the work of the alleged infringer is substantially identical or similar to the work of the copyright owner. “Substantial similarity” mainly considers whether the fruits of labor reach a certain creative requirements and have a certain degree of intellectual creativity.
1. Contact
To determine whether the allegedly infringing party had an opportunity to come into contact with the work of the copyright owner, the disseminating routes of the work shall be investigated. For example, in the appeal case of Tianjin Dingjin Food Co., Ltd. and Yao Tian, etc. copyright infringement ((2012) Gao Min Zhong Zi No.1036), the Beijing High People’s Court (hereinafter referred to as the “Beijing High Court”) identified that: “In the circumstance that the ‘Temptation’ had been published in 2006, it is presumed that there is a possibility for others to come into contact with the melody of the said musical work.” In Xia Debao and Lin Lisheng, Beijing Galloping Horse Entertainment Co., Ltd., etc. disputes over infringement upon property rights in work (first trial: (2009) Ning Min San Chu Zi No.116; second trial: (2010) Su Zhi Min Zhong Zi No.0163)), the Nanjing Intermediate People’s Court held that: “The ‘Door of Life’ has never been published. Therefore, the public does not have any access to acquire the work.” Consequently, when deciding whether there is any possibility for contact between the two works, two points shall be noted: firstly, if the plaintiff’s work has been published, and then it is presumed that the defendant would have had contact with the plaintiff’s work; secondly, if the earlier work is not published, then whether the allegedly infringing party had any unique avenue to come into contact with the work of the copyright owner shall be investigated, and the copyright owner should submit the relevant evidence in this respect.
2. Substantial Similarity
Two factors shall be considered when a court decides whether the two works are substantially similar: (1) the percentage of similarity between the two works; (2) whether the forms of expression of the work are limited.
（1）The percentage of similarity between the two works
When the court identifies the percentage of similarity, there is not a specific and fixed percentage for reference. In most cases, the court would not consider the elements of public resources during identification, which means that the court will first eliminate the elements of public resources in the works and then identify the percentage of similarity. This is because if the public resources are under the protection of the Copyright Law, it is bound to prevent others from using them. For example, in Zhu Zhiqiang and (U.S.) Nike Inc., etc. copyright infringement dispute, the Beijing High Court held that the images of the “matchstick little guy” and the “black stick little guy” were similar. The similar parts come from the image of the “line little guy,” which has entered into the public domain and shall not be monopolized by any person. Since the similar parts of the two images mainly exist in an image that has entered into the public domain and is not entitled to be protected by the Copyright Law, the differences of the two images precisely reflect the independent creation of their respective creators. Therefore, the image of the “black stick little guy” did not infringe Zhu’s copyright in the image of the “matchstick little guy”.
（2） Whether the forms of expression of the work are limited
As mentioned above, the Copyright Law only protects the forms of expression of work. Whether the forms of expression are limited also restricts and affects the degree of the protection of works. This means that the more limited the selection of the expression forms is, the greater the percentage of similarity between the two works must be. In Liu Kai and Baotou Damaolianheqi Government copyright infringement and unfair competition dispute ((2008) Min Shen Zi No.47-1), the Supreme People’s Court held that the geographical situation of Damaoqi exists objectively, so its forms of expression are very limited. The disputed work, i.e., the “Travel Traffic Map,” only used a small amount of Liu’s original parts. From the overall perspective, it did not constitute a replication of the “Administrative Zoning Map” and was not considered an infringement of Liu’s copyright. Therefore, as for work with limited forms of expression, the court requires a higher percentage of similarity between the work of the allegedly infringing party and the work of the copyright owner. Using a small amount of the work of the copyright owner cannot constitute substantial similarity.
IV. The statute of limitation of copyright infringement
According to the relevant provisions, the statute of limitations for instituting an action on copyright infringement is two years, commencing from the date when the copyright owner is or should be aware of the infringement. If a right owner files an action after the expiration of the two-year period, and the infringement continues to exist at the time when the action is filed, a court shall, within the term of protection for the copyright, rule to order the defendant to cease the infringement. Compensation for the infringement shall be calculated starting from two years before the date when the copyright owner filed the action with the court[Endnote 6]. In addition, with respect to a copyright administrative department’s imposition of an administrative penalty, the time limitation thereof is two years, commencing from the date of the occurrence of the illegal conduct. Where illegal conduct continues or is ongoing, the time limitation shall commence from the date of termination of the conduct. So long as infringing products remain under distribution or the communication of a work to the public, the illegal conduct shall be deemed as continuing to exist. If an illegal conduct fails to be discovered within a two-year period, it shall no longer be subject to an administrative penalty[Endnote 7].
V. Conclusion
To conclude, four steps shall be followed when deciding copyright infringement: firstly, the infringed “work” shall be clear, and the copyright owner shall analyze whether the work falls within the scope of the protection of the Copyright Law; secondly, the infringed rights shall be clear, and the copyright owner shall identify whether these rights are the rights protected by the Copyright Law; thirdly, the copyright owner shall analyze that whether the allegedly infringing party has had an opportunity to come into contact with the infringed work and whether the forms of expression of the two works are substantially identical or similar; finally, the copyright owner shall file an action within a certain time limitation. If all the four conditions are met, in most circumstances, the court will identify the copyright infringement is established. Otherwise, it is difficult for the court to support the copyright owner.
(The English version of this Issue has been edited by Sean J. Pratt, a New York licensed attorney with Global Law Office’s Shanghai office.)
Mr. Meph Jia Gui is a Beijing-based partner with Global Law Office who specializes in intellectual property (IP) laws and litigation and arbitration. (E-mail: meph.gui@glo.com.cn)
Ms. Tingying Liu is a Beijing-based legal assistant with Global Law Office who specializes in intellectual property (IP) laws and litigation and arbitration. (E-mail: tingying.liu@glo.com.cn)
Endnote 1: Article 2 of the Regulations for the Implementation of Copyright Law.
Endnote 2: Article 3 of the Copyright Law: “‘Work(s)’ mentioned in this Law include work(s) of literature, art, natural science, social science, engineering technology, etc., existing in any of the following forms: (1) Written works; (2) Oral works; (3) Musical, dramatic, quyi, choreographic, and acrobatic works; (4) Fine art and architectural works; (5) Photographic works; (6) Cinematographic works and works created by means similar to cinematography; (7) Graphic works including engineering design drawings, product design drawings, maps, schematic drawings, etc., as well as model works; (8) Computer software; and(9) Other works specified in laws and administrative regulations.”
Endnote 3: Article 5 of the Copyright Law: “This Law shall not be applicable to: (1) Laws, regulations, government organs' resolutions, decisions, orders, and other documents of a legislative, administrative, or judicial nature, or their official translations; (2) News on current events; and (3) Calendars, numerical tables or forms of general use, and formulas.”
Endnote 4: Graphical User Interface refers to a type of user interface that allows users to interact with electronic devices using images. The operating interface of the smart phones also belongs to GUI.
Endnote 5: Article 9 of the Beijing Treaty: “Performers shall enjoy the exclusive right of authorizing the commercial rental to the public of the original and copies of their performances fixed in audiovisual fixations as determined in the national law of Contracting Parties, even after distribution of them by, or pursuant to, authorization by the performer.”
Endnote 6: Article 28 of the Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Civil Cases Involving Copyright Disputes.
Endnote 7: Article 9 of the Measures for the Implementation of Copyright Administrative Penalties.
