Expressions Independently Created and with Originality in a Derivative Folk Literary and Artistic Work Shall Be Protected by the Copyright Law
——Hong Fuyuan and Deng Chunxiang v. Guizhou Wufufang Food Co., Ltd. and Guizhou Jincai Natural Culture Research & Development Co., Ltd.
[Syllabus]
Where part of a derivative folk literary and artistic work is independently created and has originality, it conforms to the characteristics of a work protected by the Copyright Law, it shall be determined that the author enjoys copyright to such part with originality.
[Case No.] Guiyang Intermediate People's Court of Guizhou Province (2015) ZZMCZ No. 17
[Cause of Action] Copyright infringement dispute
[Collegial Panel Members] Tang Youlin Liu Yongju
Yuan Bowen
[Keywords] Copyright infringement, derivative folk literary and artistic work, originality
[Relevant Legal Provisions] Article 3 of the Copyright Law of the People's Republic of China and Article 2 of the Regulation on the Implementation of the Copyright Law of the People's Republic of China
[Basic Facts]
Plaintiffs Hong Fuyuan and Deng Chunxiang claimed that: the work created by Hong Fuyuan, Harmonious Coexistence XII, was published in the book, Fuyuan’s Batik Arts published by Guizhou People's Publishing House in August 2009. Hong Fuyuan once transferred the right to use the work involved (excluding the right to use on batik) to the Plaintiff Deng Chunxiang, who was responsible for maintaining the copyright-related property rights. Without permission of Plaintiffs, for the purpose of sales promotion, Defendant Guizhou Wufufang Food Co., Ltd. (hereinafter referred to as “Wufufang Company”) used a selective part of the aforesaid painting of Hong Fuyuan on commodities it sold. Plaintiffs believed that Defendant infringed upon the right of signature of Hong Fuyuan and the copyright-related property right of Deng Chunxiang and requested the court to order that: the Defendant pay Deng Chunxiang RMB200,000 as compensation for Deng Chunxiang's economic loss caused by its infringement upon her copyright-related property right; and cease the use of the pattern involved and destroy packaging boxes and product brochures involved; and the Defendant publish a formal apology for its infringement upon Hong Fuyuan's copyright-related personal right.
Defendant Wufufang Company contended that: first, both the work whose copyright was owned by Plaintiffs in the action they filed and some patterns on the exterior packages of products designed by Guizhou Jincai National Cultural Research & Development Co., Ltd. (hereinafter referred to as “Jincai Company”) for Wufufang Company used the traditional batik patterns of Gejia People in Huangping County of Guizhou Province and its use of product exterior packages designed by Jincai Company did not constitute an infringement. Second, the exterior packages of Wufufang Company’s products were designed by the third party Jincai Company and Wufufang Company has exercised due care when using the exterior packages of such products. Third, the work involved was placed in the right lower corner of the product packages and the area of the work involved accounted for only about 1/20 of the total area of the package, which had little effect of promoting the product sales, and the amount of compensation of RMB200,000 claimed by Plaintiffs was excessively high. Therefore, the claims by Plaintiffs lacked factual and legal basis and Wufufang Company requested the court to dismiss the claims of Plaintiffs.
The third party Jincai Company stated that: it engaged in advertisement design and planning for Wufufang Company, and completed the sketching of “Best Wishes for Four Seasons” in December 2006. The pattern was not used until October 2011 when a part of the pattern was intercepted and used by Wufufang Company in its development of gifts for the tourism market. The bird pattern, Ru-Yi pattern, and copper drum pattern in the design were all originated from the “primary form” of the batik of Gejia People in Huangping County of Guizhou Province, and the design of bird pattern in the work of Hong Fuyuan was also originated from the traditional batik of Guizhou Province. The work of Hong Fuyuan was not original and there was no factual basis for infringement in this case. Therefore, the claims of Plaintiffs should not be upheld.
Upon trial, the court found that: Plaintiff Hong Fuyuan has been engaged in the artistic design and creation of batik for many years and was awarded such honorary titles as “China Top Ten Folk Artists” and “Advanced Individual of Intangible Cultural Heritage Protection” by the Ministry of Culture. The work, Harmonious Coexistence XII, he created in August 2009 was published in the book Fuyuan's Batik Arts published by Guizhou People's Publishing House. This work used characteristics of natural patterns and geometrical patterns of the traditional batik arts as the reference and indigo as the main color, and described a harmonious picture where flowers and birds coexisted. However, the outlines of birds were supplemented in this work. The lines of the birds' eyes and mouths were enriched, which made the patterns of birds more vivid. The original creation of Hong Fuyuan was integrated into the necks and feathers of birds, which made the patterns of birds livelier. The conception of Hong Fuyuan was also integrated into the copper drum patterns in the middle, which were different from patterns in traditional batik arts. On August 1, 2010, Plaintiff Hong Fuyuan and Plaintiff Deng Chunxiang entered into a Contract on Transfer of the Right to Use Work, pursuant to which, Hong Fuyuan transferred the right to use the work involved (excluding the use on batik) to Deng Chunxiang and Deng Chunxiang was responsible for maintaining the property right of the work involved within the scope of rights transferred.
Defendant Wufufang Company authorized the third party Jincai Company to provide planning and design services for the brand market image of products, including the product packaging and packaged design, product brochures, and design of marketing materials. According to the design services provided by the third party Jincai Company, Wufufang Company used the pattern of flowers and birds in batik and the frame of Ru-Yi pattern on the left upper corner and right lower corner of the exterior packages of Guizhou Peppery Chicken, Guizhou Milet Dreg, and Guizhou Dried Pork produced and sold by it. Hong Fuyuan believed that: the use of his work Harmonious Coexistence XII by Wufufang Company infringed upon his right of signature, which split the connection between the author and the work, and infringed upon the property right of the work enjoyed by Deng Chunxiang. It was found upon comparison that the design of flowers and birds in batik used on the exterior packages and product brochures of the aforesaid three products sold by Wufufang Company were consistent with the work Harmonious Coexistence XII created by Hong Fuyuan in aspects of the pattern structure of birds and flowers as well as the choice and arrangement of lines, and they were different only in the bottom color of the pattern and the color of lines.
Holding
On September 18, 2015, the Intermediate People's Court of Guiyang City, Guizhou Province rendered a Civil Judgment (2015) ZZMCZ No. 17 that: I. Defendant Wufufang Company should, within 10 days after the Judgment came into force, pay Plaintiff Deng Chunxiang RMB 100,000 as compensation for her economic loss; II. after the Judgment came into force, Defendant Wufufang Company should immediately cease the use of the work Harmonious Coexistence XII involved; III. the Defendant Wufufang Company should, within 5 days after the Judgment came into force, destroy the packages and product brochures of the products involved, including Guizhou Peppery Chicken, Guizhou Milet Dreg, and Guizhou Dried Pork; IV. other claims of Plaintiffs Hong Fuyuan and Deng Chunxiang should be dismissed. After the Judgment of first instance was pronounced, none of the parties appealed and the Judgment has come into force.
[Reasoning]
In the effective judgment, the court held that: the dispute focuses of this Case were (1) whether the work Harmonious Coexistence XII involved was protected by the Copyright Law; (2) whether the package patterns of the products involved infringed upon Plaintiffs' copyright; (3) how to determine the responsible parties in this Case; (4) how to determine the infringement liability methods in this Case; and (5) how to determine the amount of compensation in this Case.
For the first dispute focus, the tails of the two birds in the work involved Harmonious Coexistence XII created by Hong Fuyuan overlapped each other, and in the middle, copper drum patterns were used as connection to show the beauty of symmetry, reflecting the characteristics of natural patterns and geometrical patterns of the traditional batik arts. Based on existing evidence of this Case, it could be determined that, although the work involved used the expression forms of the traditional batik arts, the creative inspiration directly originated from batik patterns of Gejia People in Huangping County. However, the outlines of birds were supplemented in the work involved. The lines of the birds' eyes and mouths were enriched, and the author integrated his original creation into the necks and feathers of birds, making the patterns of birds more vivid and lively. The conception of Hong Fuyuan was also integrated into the copper drum patterns in the middle, which were different from patterns in traditional batik arts. According to Article 2 of the Regulation on the Implementation of the Copyright Law, “The works defined in the Copyright Law refer to original intellectual creations in the domain of literature art and science that are capable of being reproduced in a fixed tangible form.” The work involved Harmonious Coexistence XII created by Defendant Hong Fuyuan is a derivative work of traditional batik art. It is the inheritance and innovation of traditional batik art, conforms to the characteristics of works protected by the Copyright Law, and therefore is protected by the Copyright Law within the scope of originality by Hong Fuyuan.
As to the second dispute focus, according to Article 4(9) of the Regulations on the Implementation of the Copyright Law: “Works of fine art are two or three dimensional works created in lines, colors or other medium which, when being viewed, impart esthetic effects, such as paintings, works of calligraphy, sculptures, etc.” Painting works are two-dimensional works created in lines, colors, etc. which impart esthetic effects. It was found upon comparison in the trial that the pattern of flowers and birds used on the exterior packages and product brochures of such products as Guizhou Peppery Chicken were consistent with the work Harmonious Coexistence XII involved in the pattern structure of birds and flowers as well as the choice and arrangement of lines, and they were different only in the bottom color of the pattern and the color of lines. Based on the results of comparison, the difference in the bottom color of the pattern and the color of lines was only a way to conceal the infringement, not intellectual work with originality. The third party Jincai Company alleged that the works it designed and used on the exterior packages and product brochures sold by Wufufang Company were created in 2006, but it failed to provide any evidence to prove the same. While the works involved were published by Hong Fuyuan in the book Fuyuan’s Batik Arts in 2009, and it was indicated in the book that the painting was created in 2003. Therefore, it can be determined that Hong Fuyuan’s works involved in this case were previously created and published. Before Wufufang Company produced and sold the products involved, Hong Fuyuan had published the work Harmonious Coexistence XII, so Wufufang Company was likely to be exposed to the works of the Plaintiff. Accordingly, it can be determined that the third party Jincai Company was intentionally infringing upon Hong Fuyuan’s works involved. Partial use by Wufufang Company of the Plaintiff’s works on the exterior packages and product brochures when producing and selling the products involved infringed upon the right of reproduction enjoyed by the Plaintiff to the painting works involved.
With reference to the third dispute focus, during the pre-trial preparation, the court asked Hong Fuyuan whether he wanted to add Jincai Company as a Defendant of the litigation, and whether he wanted to change the claims. The Plaintiff refused to add Jincai Company as a Defendant in writing, and believed that Wufufang Company and Jincai Company were of another legal relation, which was improper to be trialed together with this Case. As a matter of fact, Wufufang Company and Jincai Company had signed a contract, pursuant to which the exterior packages, advertising copies and materials of all products produced by the Defendant were designed by Jincai Company, the design contents submitted by Jincai Company were infringing, and the consequences caused thereby should be fully borne by Jincai Company. However, as the client for product packaging, Wufufang Company failed to provide evidence proving that it has exercised due care. Wufufang Company was also the final user and actual beneficiary of the infringing works. Subject to item (1), paragraph 2 of Article 48 of the Copyright Law: “In case of any of the following acts of infringement, the infringer shall, depending on its circumstances, be demanded for such civil liabilities as cessation of the infringement, elimination of influences, public apology and compensation for loss……(1) Without the license of the copyright owner, to reproduce, distribute, perform, show, broadcast, compile or disseminate to the public through information networks his work, unless this Law provided otherwise”. Article 19 and paragraph 2 of Article 20 of the Interpretation of the Supreme People's Court Concerning the Application of Laws in the Trial of Civil Disputes over Copyright (hereinafter referred to as the Interpretation Concerning Civil Disputes over Copyright), Wufufang Company should legally bear the civil liability for infringement of this Case. Wufufang Company and Jincai Company were of another legal relation, which was not covered by this Case. The parties may make a separate settlement.
As to the fourth dispute focus, according to provisions of Articles 47 and 48 of the Copyright Law, if a copyright or copyright-related right is infringed, depending on facts of the case, the infringer shall be demanded for civil responsibility such as ceasation of the infringement, elimination of effects, public apology and compensation for loss. In this Case, first, the copyright-related personal rights and property rights of the Plaintiffs were infringed, and objectively, economic loss was caused thereby, thus, the first claim of the Plaintiffs for compensation of loss should be upheld by law; second, whether the infringer had fault or not, in order to avoid further loss, the infringer was ordered to immediately cease the behavior of infringing the copyright of others for the purposes of protecting the right holder’s legitimate rights and interests and law enforcement, and the court adopted the second claim by the Plaintiffs to require the Defendant to cease the use of the patterns involved and destroy the packing boxes and product brochures involved; third, because there was no subjective intention and gross negligence in Wufufang Company, which is only liable for infringement according to law due to its failure in duly performing the examination duty, and Hong Fuyuan failed to submit evidence proving his reputational damages caused by the Defendants’ infringing act, the court rejected the third claim by Hong Fuyuan to require Wufufang Company publish a formal apology in the comprehensive layout of Guizhou City News.
For the fifth dispute focus, in this Case, the Plaintiffs did not claim or submit evidence for the reasonable expenses incurred from deterrence of the infringing act. During the trial, the Plaintiffs did not submit evidence proving the amount of actual losses suffered by them and the illegal gains received by Wufufang Company from the infringing act. In fact, it was difficult to determine the actual losses of the Plaintiffs, and the illegal gains received by Wufufang Company from the infringing act. According to paragraphs 1 and 2 of Article 25 of the Interpretation Concerning Civil Disputes over Copyright: “In case the actual losses of the copyright owners or the illegal gains of the infringing party cannot be determined, the people's court shall determine the amount of compensations as per request of the parties concerned or provisions in paragaph 2 of Article 48 of the Copyright Law (i.e. the current paragraph 2 of Article 49) at its discretion within its powers. When determining the amount of compensations, the people's court shall comprehensively consider the work type, reasonable use fee, nature of infringing acts, consequences, and other relevant circumstances.”, taking consideration of objective facts of this Case, there were 5 main factors to be considered which had an impact on the amount of compensations for infringing copyright: first, the work involved Harmonious Coexistence XII created by Hong Fuyuan is a derivative work of traditional batik art in Guizhou Province. The creation of the copyrighted work was the inheritance and innovation of traditional batik art, and the outline of bird patterns and the beauty of symmetry showed in the work involved originated from traditional artistic works. The innovation in the author’s work was limited and the room for innovation was also limited; second, batik art in Guizhou Province featured with certain regional characteristics and geographic significance. In a sense, the artistic works in batik created on flowers, birds, insects, fishes, etc. belonged to elements and symbols of Guizhou Province. As a local company in Guizhou Province, Wufufang Company used the artistic works in batik of Guizhou Province in a manner conforming to the basic national and regional characteristics inherent in folk literary art works as intangible cultural heritage; third, according to the Contract on Transfer of the Right to Use the Work signed by and between Hong Fuyuan and Deng Chunxiang, Hong Fuyuan had transferred the right to use the work involved Harmonious Coexistence XII created by him (excluding the use on batik) to Deng Chunxiang, i.e. a large part of the copyright-related property rights of the work involved was transferred to Deng Chunxiang, who was not the inheritor of traditional folk art. Deng Chunxiang was responsible for maintaining the copyright-related property rights of the work involved. Because not all the subjects of the copyright-related personal rights and property rights in this Case were inheritors of traditional folk art, the results and consequences of corporate infringements within the scope of inheritance were insignificant; fourth, Hong Fuyuan devoted himself to the exploration and pursuit of national batik art for several decades, and integrated traditional batik art and Chinese ancient culture in his creation, uplifting the batik art to a certain degree and pushing forward the development of regional culture. Although a large part of the copyright-related property rights of the work involved was transferred to Deng Chunxiang, who was not the inheritor of traditional folk art, the creative value of Hong Fuyuan and his reputation in the field of batik art should be respected; fifth, production scale and selling channels of the involved products of Wufufang Company, Guizhou Peppery Chicken, Guizhou Milet Dreg, and Guizhou Dried Pork, should also be considered. Pursuant to the purchase contract between Wufufang Company and Guangzhou Zhuofan Color Printing Co., Ltd. submitted by Wufufang Company, although the afore-said evidence might not fully and objectively reflect the production and operation concerning the products involved of Wufufang Company, the claims of Plaintiffs should be admitted by law to the reasonable extent in absence of any contrary evidence made available by Plaintiffs. Upon comprehensive consideration of the factors above, and based on the current economic development level and living standard of Guizhou Province, a discretional decision was made that Wufufang Company should compensate RMB 100,000 to Deng Chunxiang for her economic loss.
