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Manage your Intellectual Property in Mainland China, HongKong, Macao and Taiwan

Copyrights

Copyrights Case Study 1: Infringement under which law?

Background
A French company designed a perfume bottle and packaging with a distinctive shape. In 2005, a Chinese company produced two types of perfume and used bottles and packaging nearly identical to the ones designed by the French company and marketed them in China and abroad under a different trade name.

Action taken
The French company took action to cease the copyright infringement by the Chinese company. Considering the financial damages, the scope of the infringement and the harm done to its reputation, the French company brought legal action before the judicial courts, seeking compensation.

Trade dress is protected under trademark laws, patent laws, copyright laws and unfair competition laws. In that respect, the French company had registered the bottles as a design patent in China. The legal action was therefore grounded on infringement of the design, the copyright and violation of the Unfair Competition Law.

It is interesting to note that the Unfair Competition Law (A5.2) protects packaging: "unauthorized use of the name, packaging or trade dress unique to well‐known products, packaging or trade dress similar to that of well‐known products, thereby causing confusion with the well‐known products of another party and causing purchasers to mistake the products for such well‐known products."

In order to rely on the Unfair Competition Law, it is necessary for the product to be well‐known in China, that there is the likelihood of confusion between the two products, that the trade dress is distinctive and unique and that the plaintiff used the trade dress first.

All these conditions exist in this case, thus the plaintiff also grounded his action on the performance of unfair competition.

Outcome
Despite the different legal grounds offered to the Court, the Beijing Court based its decision solely on the infringement of the copyright. The Beijing Court held that, since France and China acceded to the Berne Convention for the Protection of Literary and Artistic Works in 1992 and are members of the World Trade Organization, the works of the French company are protected in China according to the Copyright Law. As the Chinese party reproduced the bottles and packaging in large quantities, without the copyright owner's permission, the court decided that the Chinese company committed copyright infringement and would bear the liabilities of ceasing the act of infringement, make an apology, and compensate the plaintiff for their loss.

In practice, it was not possible to evaluate the actual loss of the plaintiff and since the defendant provided the legal source and information on the company manufacturing the bottles, the defendant had only to pay for the ceasing of the infringement.

IP Lessons

  • Be sure of the legal grounds that you intend to base your case on. Are the most relevant? Do they give you the strongest possible case?
  • Be aware that although there may be several grounds for complaint, the court may or may not choose to rule on all of them.

 

Copyrights Case Study 2: Online infringement

Background
A famous photographer was aware that a set of his fashion photographs were posted online on a Chinese website without his authorisation.

Action taken
The release on the Internet of the fashion photographs protected by copyright, without the prior consent of the photographer, constitutes an infringement of his intellectual property rights. The photographer, when he discovered the online photographs, sent a written notice in Chinese to the Internet Content Provider in order to request the removal of the pictures from the website.

The author sent the proof of his ownership (copy of the magazine where the photographic works were published under his name), the evidence of infringement (certification of the web site page made by a public notary), the infringing material's location on the website (copy of the pages and of the specific URL addresses) and a declaration of truthfulness of the notice.

The Internet Content Provider is required to keep a record of the login time, username, URL, dial in number of the user who posted the material on the website (for the previous 60 days) and must provide this information to the National Copyright Administration upon request. The notice therefore required:

  • The withdrawal of the materials
  • The information on the user that posted the materials.

If these conditions were not observed, the photographer would have brought the case before the administrative authorities. Upon receipt of the notice, the Internet Content Provider should immediately remove the infringing material and keep the notice for six months. Failure to comply with the request could lead to holding the Internet Content Provider administratively liable as they had clear knowledge of the infringement.

Outcome
The Internet Content Provider complied with the official request and removed the infringing material but did not provide the information on the user. Further to the removal, the user did not challenge the decision and did not send a notice to the Internet Content Provider. No compensation was requested by the photographer in this case.

IP Lessons
In this case the photographer was able to ensure the removal of the infringing content by approaching the Internet Content Provider. Chinese IPR agencies have powers to request information about users from Content Providers and approaching content providerscan be a more effective route to take than approaching those posting infringing content.