How to prove copyright ownership in China

Ms. Wei has more than ten years of litigation and traditional IP service experience. Accredited as a Chinese Lawyer and TM attorney, plus the rich academic background with Master Degree in Civil Law, Ms. Wei presents multinational clients various from different aspects. Her practice consists of counseling clients in connection with creation, development and protection of their IP. She attends trademark, copyrights and unfair competitions litigations. Ms. Wei also provides high level of strategic advice on trademark portfolio management, including issues relating to registering non-traditional trademarks and combating bad faith trademark applications in China.

How to prove copyright ownership in China

Wei Nan Jie, Beijing San He Tong Chuang IP Agency Ltd, discusses copyright laws in China and the process that is undertaken to prove copyright ownership in the jurisdiction.

Under the Chinese Copyright Law, the author will be granted a copyright automatically as soon as the work is completed. It is voluntary for the author to apply to the copyright authorities for the Copyright Registration Certificate. However, the author is required to prove the copyright ownership when alleging the copyright ownership in the lawsuits or other legal proceedings. There are some general legal provisions in relation to the copyright ownership in the Chinese Copyright legal systems. Under Section 1 of Article 11 of the Chinese Copyright Law (effective on June 1, 1991, Second Amendment thereof effective on April 1, 2010), it is provided that “except where otherwise provided for in this Law, the copyright in a work shall belong to its author.” Section 4 of Article 11 further provides that “the citizen, legal entity or other organization whose name is mentioned in connection with a work shall, in the absence of proof to the contrary, be deemed to be the author of the work.” Under the Article 7 of Several Questions on the Application of Law in Trial of Copyright Civil Dispute Cases Interpretation promulgated by Supreme People’s Court (effective on October 15, 2002), it provides that “copyright-related manuscripts, original, lawful publications, certificate of copyright registration furnished by an interested party, proofs produced by a certifying authority and contract under which a right is acquired may be used as evidence.” Even though the foresaid rules provide the general principle of how to prove the copyright ownership, the way to prove the copyright ownership in the legal practice is practical and technical. Let us consider the following three different cases to seek for the answer. The first case is about a dispute between the copyright and trademark, the second case is a copyright civil dispute and the last case is a software infringement.

HUANG Wei Dong (Individual) vs. Chinese Trademark Review and Adjudication Board & NBA (Beijing High People’s Court, 2013)

On March 15, 2005, HUANG Wei Dong filed a trademark application for a Bull Device with the designation of the goods on “tea, candy, confectionery etc.” in Class 30. NBA filed the opposition within the time limit. The Chinese Trademark Office made the decision upon the opposition to reject the application filed by HUANG Wei Dong. In the appeal for the opposition decision, the Chinese TRAB held that the applied trademark violated the prior copyright of the Bull Device owned by NBA based on the effective judgments of the precedents. In the appeal, NBA furnished the Trademark Registration Certificates for its Bull device in China to prove its copyright prior to the applied trademark of HUANG Wei Dong. In the first instance judgment, Beijing First Intermediate People’s Court ruled to maintain the appeal decision made by Chinese TRAB. HUANG Wei Dong was dissatisfied with the ruling and appealed to the Beijing High People’s Court. After reviewing and examining the case, the Beijing High People’s Court dismissed the appeal and sustained the original judgment.

In the opposition proceeding, NBA furnished two sets of evidence to prove the prior copyright. The initial set of evidence is made up of two decisions of the previous trademark opposition and trademark appeal; the opposition decision was made by the Chinese Trademark Office and the appeal decision was made by the Chinese Trademark Review and Adjudication Board. Both precedent decisions judged that NBA owned the copyright to the Bull Device. The other set of evidence is the Trademark Registration Certificates in relation of Bull Device. These two sets of evidence was accepted and cited by the Chinese Trademark Office, the Chinese Trademark Review and Adjudication Board and the Beijing First Intermediate People’s Court in making the decision and ruling in favor of NBA in the dispute between NBA and HUANG Wei Dong. In the appellate decision, even though the Beijing High People’s Court sustained the original judgment rejected the evidence in relation to NBA’s copyright to the Bull Device. The Beijing High People’s Court comments the evidence as follows below.

As for the evidence of two precedent decisions, the Beijing High People’s Court held that the two precedent decisions on their own can’t prove the prior copyright owned by NBA. The two precedent decisions were made respectively by the Chinese Trademark Office and the Chinese Trademark Review and Adjudication Board based on the specific circumstances of the precedents. Both the Chinese Trademark Office and the Chinese Trademark Review and Adjudication are the administrative organization.

Under the current legislation, there are no laws or regulations which provide that the facts demonstrated in the precedent decision made by the administrative organizations are the legally demonstrated facts and therefore can be accepted and cited directly in a later administrative case. As for the evidence of the Trademark Registration Certificates owned by NBA, the Beijing High People’s Court deemed that the Trademark Registration Certificate, Trademark Gazette and other trademark registration documents don’t fall into the signature acts under the Copyright Law even though the information of the trademark applicant or registrant will be indicated in the Trademark Registration Certificate and Trademark Gazette. The information indicated in the trademark documents can just prove the trademark ownership, therefore, can’t be used as evidence to prove the copyright. Even though the evidence in relation to copyright provide by NBA was not accepted by the Beijing High People’s Court, the first instance judgment is finally sustained due to the fact that the Bull Device belongs to CHICAGO BULLS is well-known to the public. ZHANG Xin Wei (Individual) vs. Shanghai Foreign Language Education Press (Fu Tian District Court of Shenzhen City, 2014).

In August of 2014, ZHANG Xin Wei sued Shanghai Foreign Language Education Press (SFLEP) for copyright infringement. ZHANG Xin Wei found out SFLEP published the Longman Active Study EnglishChinese Dictionary (Simplified Chinese version) in 2013. However, even though in the title page of the dictionary it was printed ZHANG Xin Win as the interpreter, the name of interpreter was not printed in the cover page and copyright page. In additional, SFLEP didn’t pay ZHANG Xin Wei the royalty.

ZHANG Xin Wei alleged that SFLEP has infringed its copyright because he owned the copyright to the dictionary of Longman Active Study English-Chinese Dictionary, which is a commissioned works. In the complaint, ZHANG alleged that he was commissioned by LANGMAN Press Asia Limited in the late 1980s to translate the dictionary Lexicon of Contemporary English into Chinese. As a result, he should be the copyright owner of the Chinese version of the dictionary Lexicon of Contemporary English, which was published later in Chinese Mainland as Longman Active Study English-Chinese Dictionary (Simplified Chinese version).

In response to the complaint, SFLEP furnished a statement from Pearson, the succession to LANGMAN Press Asia Limited. In the statement, Pearson argued that the dictionary of Longman Active Study EnglishChinese Dictionary should be a corporation work because the Longman has paid the remunerations to ZHANG for his translation work. However, both sides of the case are unable to provide the written evidence such as the written agreement for which party should be the copyright proprietor of the Chinese version of the dictionary. The Fu Tian District Court of Shenzhen city held in the ruling that the copyright of the dictionary in Chinese version should belong to ZHANG under the Section 4 of Article 11 of the Chinese Copyright Law, “the citizen, legal entity or other organization whose name is mentioned in connection with a work shall, in the absence of proof to the contrary, be deemed to be the author of the work.” In the title page of the dictionary, ZHANG’s name was printed as author. Therefore, the copyright of the dictionary in Chinese version should belong to ZHANG. The appeal for the first instance judgment is still pending. However, if there is a written agreement for the copyright ownership of the translation of Lexicon of Contemporary Dictionary, it will be easy to decide who should be the real copyright owner of the dictionary Longman Active Study English-Chinese Dictionary.

Microsoft Corporation vs. Hua Shang Century Management Consultant Limited (Fu Tian District Court of Shenzhen City, 2014)

Plaintiff Microsoft is the copyright owner of famous Microsoft office software. Defendant Hua Shang Century was found out illegally copying, installing and using the plaintiff’s office software in the computer devices in his office location without plaintiff’s authorization. Plaintiff therefore sued Hua Shang Century before the court. The Fu Tian District Court of Shenzhen City judged that the plaintiff should be the copyright owner of the Microsoft office software in issue based on the evidence provided by the plaintiff.

In the litigation proceeding, the plaintiff provided the Copyright Registration Certificate issued by the US Copyright Office to prove its copyright. In accordance with the relevant regulation of the Berne Convention and Chinese Computer Software Protection Regulations, the software created by the foreigners should be legally protected in accordance with the agreement signed by the original country of the software author and China or the international treaty that both countries join. Both China and the US are the member state of the Berne Convention. Since the plaintiff has provided the relevant Copyright Registration Certificate issued by the US copyright authorities, the plaintiff’s software should be legally protected in China accordingly.

Author: Ms.  Nancy WEI, Partner, Beijing Crown and Rights Law Firm/ Beijing San He Tong Chuang IP Agency Ltd

Republished with permission The Copyright Lawyer and CTC Legal Media