Not all designs are copyrightable
(Author: Ms LU Xue and Ms. XIA Huan; Source: WAN HUI DA)
Guangzhou Exception Industrial Co., Ltd. (“Exception Company”) is a manufacturer of bags and suitcases. Exception Company registered the word EXCEPTION in class 18, but, on its wallet and handbag products and their packaging, it uses a reversed version of the word: “” with the added small letters “de MIXMIND” written below.
An individual named MAO Jihong claimed that he owns the design “”, which was purported to be created in 2002, and, registered on February 11, 2015 the said design as a work of fine art with the Copyright Administration of Guangdong Province.
On March 3 of 2015, MAO Jihong filed a complaint against Exception Company before the Guangzhou Integrated Law Enforcement Team on Cultural Market.
The Law Enforcement Team inspected the premises of Exception Company and, after having consulted the Copyright Association of Guangzhou which confirmed the copyright infringement, issued a penalty decision on May 14, 2015, finding copyright infringement, confiscating 1 handbag and 321 packages and imposing a fine of RMB30,000.
Exception Company filed an administrative lawsuit against this penalty decision before the Guangzhou Tianhe People’s Court (“Tianhe Court”).
On January 15, 2016, the Tianhe Court dismissed the claims of Exception Company on the grounds that , which is not in line with the writing norm of English alphabets and words, may be categorized as a design rather than English words. The court considered that “” is a design of certain artistic value and therefore is copyrightable.
Exception Company appealed before Guangzhou IP Court and argued that the sign did not qualify as a copyrightable work of art.
Guangzhou IP Court noted that, in principle, copyright is generated on the date when the creation of a work is completed, and that, in the absence of contrary evidence, the registrant may be considered as the owner of the work. However, the Court also stated that the registration of works does not go through substantive examination, and therefore, that registration does not prove that the registered subject necessarily falls under the category of works. In addition, the Court also observed that the Copyright Association of Guangzhou, to which the Law Enforcement Team had referred the case, could only have advised on factual matters but had no jurisdiction on the issue whether a copyright infringement had been committed.
The Court considered that the disputed design consisting of “” and “De MIXMIND” beneath, in spite of a slight artistic arrangement of the characters, was basically the expression of an idea as much as of a design, which resulted in little originality in the expression of the design and a deficiency of aesthetic value as a fine art. The Guangzhou IP Court therefore found that MAO’s design does not qualify as fine art and repealed the first instance judgment and the penalty decision on October 28, 2016.
WHD represented Exception Company in the above proceeding.
Even though this case involved a copyright registrant acting against trademark user, the only focus of this case was whether the disputed design was copyrightable as work of art.
The second instance court recognized the principle that a copyrightable work should impart a fundamental level of intellectual creativeness. In this instance, the simple fact of using existing letters and presenting them, in the same order, in their reversed position, could not be the result of any creative activity. To be fair, it is probable that the Copyright Bureau, when looking at the alleged work of art, did not realize that what this was nothing but the mirror image of the foreign word EXCEPTION.
Copyright is, indeed, a powerful right since it allows the owner to challenge an identical trademark used in any category of goods (whereas a registered trademark is limited to identical or similar signs used on identical or similar products). This decision is therefore, most welcome because it sets a threshold to the possibility of claiming a copyright on any kind of visual representation. And, obviously, plain reversed capital letters are not art. No exception to this.
The case is listed by Guangzhou IP Court as one of its Top 10 IPR Exemplary Cases in 2016.