2011 Top 10 IP Cases in China’s Software Industry:the fourth

Key point: font enterprise’s demand is not supported

Founder’s Lawsuit against P&G Dismissed Again, the Original Judgment Was Affirmed

Case summary: In December 2010, Beijing Founder Electronics Co., Ltd. (Founder) appealed to the Beijing No.1 Intermediate People’s Court after its lawsuit against Procter & Gamble (P&G) was dismissed by the Haidian District People’s Court. Recently, Beijing No. 1 Intermediate People’s Court made a second instance ruling affirming the dismissal of the lawsuit again and sustaining the original judgment. It is the second time that the court said “no” to charging royalties for single words in a font library. According to the court, for Founder to legally prove that the behavior of P&G constituted copyright infringement, it must prove that the facts in the case satisfy all the following conditions simultaneously: (1) the disputed words “飘柔” (the Chinese name of Rejoice) constitute a copyrighted work; (2) Founder owns the copyright of “飘柔” ; (3) P&G’s behavior is deemed as copying and publishing the disputed words “飘柔”; and (4) the copying and publishing work of the appellee has not been licensed by the appellant. The said licensing includes both express licensing and implied licensing. Taking all existing factors into consideration, the court stated that the action of the appellee was actually permitted by the appellant, so whether the other conditions are met or not will not change the fact that P&G did not infringe upon Founder’s copyright.
 
Expert comments: The ruling of the court is essentially based upon a critical fact in this case: the disputed words “飘柔” applied on the so-called infringing products were designed by NICE Company (NICE) using the legal version of Founder’s “倩” style font library under the authorization of P&G. According to the facts in this case, NICE is deemed as having been entitled to conduct advertising designs with specific single words in the font, and permit its clients (P&G in this case) to copy and publish the design work. Therefore, the appellee’s disputed conducts should be deemed as permitted by the appellant.