Ten typical intellectual property cases in Beijing during 2015

Case 1 QIONG Yao versus YU Zheng for Copyright Infringement

Plaintiff: CHEN Zhe (pseudonym: QIONG Yao)

Defendant: YU Zheng(“余征”) (pseudonym: YU Zheng (“于正”)
Hu’nan JING SHI Culture Broadcast Co., Ltd.
Dongyang HUAN YU Media Culture Co., Ltd.
WAN DA Media Co., Ltd
Dongyang XING RUI Media Culture Co., Ltd.

Case brief

CHEN Zhe (pseudonym : QIONG Yao) finished the script Plum Blossom Scar in October, 1992, which was not published in the form of paper; YI REN Broadcast Co., Ltd. finished shooting TV series Plum Blossom Scar pursuant to the script Plum Blossom Scar. The TV series was firstly premiered on October 13, 1993 in Taiwan region and then premiered on April, 13, 1994 in China Mainland. The content of the TV series was highly consistent to that of the script. The novel Plum Blossom Scar was finished on June 30, 1993, which was adapted from the script Plum Blossom Scar. Thereafter, the novel was published in Taiwan region on September 15, 1993 and then in China Mainland in the same year. The main plots were basically consistent to the script Plum Blossom Scar. CHEN Zhe was named author of the novel Plum Blossom Scar.

YU Zheng was the listed author of The Place: The Lost Daughter. The 20-episode script was finished on July, 17, 2012 and it was firstly published on April 8, 2014. The TV series The Place: The Lost Daughter was shot pursuant to the script The Place: The Lost Daughter. YU Zheng signed the TV series The Place: The Lost Daughter as screenwriter. Hu’nan JING SHI Company, Dongyang HUANG YU Company, WAN DA Company and Dongyang XING RUI Company signed as the production companies at the end of the TV series. There were two versions of the completed TV series The Place: The Lost Daughter: the unabridged version broadcast on the website had 44 episodes and the version broadcast on TV had 63 episodes. The TV version was premiered in Hu’nan TV since April 8, 2014. Compared with the script Plum Blossom Scar, the script The Place: The Lost Daughter had more complex relationships among the people, with more threads of story. The content which CHEN Zhe claimed infringement mainly focused on the first half of the script The Place: The Lost Daughter.

The court of first instance held that the script The Place: The Lost Daughter infringed the adaptation right of the script and novel Plum Blossom Scar of the plaintiff; the TV series The Place: The Lost Daughter infringed the right of making cinematographic work of the plaintiff. Accordingly, the court made judgment that the defendants shall cease infringing act, make public apology, eliminate ill effects and compensate economic loss as well as reasonable expenses totaling RMB 5,000,000. All the defendants appealed against this judgment, while the court of second instance upheld the original judgment.

Comments

As a high profile case involving plagiarism of television works, there are three typical aspects in this case.

Firstly, this case specifies the distinguishing criterion between thought and expression in literary works. Regarding the expression in literary works, it is manifested in literal expression and also in the story content expressed by the literals. However, regarding the character settings and mutual relationship as well as the plots defined by occurrence, development and sequential order of the specific events, only when these factors are specific to a certain extent, that is, when the option of plot, arrangement of structure and design of plot proceedings reflect the unique choice, determination and option of the author, can the literary expression be protected by the Copyright Law. Determining the expression protected by literary works is a process of constantly abstracting and filtering.

Secondly, this case specifies the criterion of “substantial similarity”. “Contact” and “substantial similarity” are two essentials for copyright infringement. In literary works, the connection and the logic sequence of the plots make all the plots closely connected and thus form a complete “personal expression”. When the character settings, plot structure and internal logic relationship become sufficiently specific, such kind of integral combination is entitled to copyright protection as “expression”. If the accused infringing work contains sufficiently specific expressions, and a certain amount and proportion of plot settings are also found in the accused infringing work, the court can then find “substantial similarity” between the works. Alternatively, when the closely intertwined plot settings in the accused work make enough proportion in the copyrighted works, even if the plot settings do not have a large proportion in the accused infringing work, when it is sufficient to enable the audience to perceive that they come from a certain work, the court can still find “substantial similarity”.

Thirdly, the expert-assessor is introduced in this case. It sets up a precedent where expert assessor is introduced in a copyright infringement case, so that the trial and judgment of the case will be adapted to the industry feature and rules of creating copyright works.


Case 2 False Advertisement Dispute on “No. 1 Canned Beverage in China”

Plaintiff: Guangzhou Pharmaceuticals Group Co., Ltd.
Guangzhou Wang Lao Ji Health Industry Co., Ltd.

Defendant: Jia Duo Bao (China) Beverage Co., Ltd.
Guangdong Jia Duo Bao Beverage and Food Co., Ltd.

Case brief

GPG and WLJ are trademark owner and user of “Wang Lao Ji in Chinese” series trademarks. The trademark was ever authorized to be used on herbal tea in red can by Hong Dao Group in 1995, and the use was arbitrated to stop in 2012. Hong Dao Group is the company that invested and established JDB China and JDB Guangdong. Since May 2012, JDB China and JDB Guangdong used “Jia Duo Bao in Chinese” trademark on their herbal tea product, and used the advertisement like “Jia Duo Bao herbal tea has been awarded ‘No. 1 Canned Beverage in China’ for seven consecutive years” on various media according to the seven certificates of awards issued by China Industry Enterprise Information Center from 2008 to 2014. The awards show: “According to investigation and statistics, the canned Wang Lao Jie beverage you manufactured was awarded No. 1 canned beverage of the highest sales amount nationwide in 2007, 2008, 2009, 2010 and 2011.” “According to investigation and statistics, the canned beverage you manufactured was awarded No. 1 canned beverage of the highest sales amount nationwide in 2012.” “According to investigation and statistics, the Jia Duo Bao canned beverage you manufactured was awarded No. 1 canned beverage of the highest sales amount nationwide in 2013.” The two Plaintiffs filed lawsuit with court based on the above, claiming the two Defendants’ advertisement constituted false advertisement.

The court holds that the sued advertisement shows the main content that Jia Duo Bao herbal tea was awarded No. 1 Canned Beverage in China for seven consecutive years. As Jia Duo Bao Group used Wang Lao Ji trademark before 2012, the sued advertisement was an expression using selected information from the “Certificates of Statistics and Investigation Information”. The sued advertisement has difference from the fact indeed, concealing the fact from the consumers that the canned herbal tea manufactured by Jia Duo Bao Group from 2007 to 2011 was Wang Lao Ji herbal tea in red can. The sued advertisement was not true and improper in expression, missed important information, would cause misunderstanding from relative consumers, so it infringed legitimate interests of the two Plaintiffs, damaged competition order of fairness and equality, and constituted false advertisement regulated by Article 9 of Anti-Unfair Competition Law.

Comments

This case obtained the first effective Judgment among the series lawsuits between GPG and JDB. In the Judgment, the court clarified the issues of criteria of false advertisement and qualification of plaintiff of such lawsuits. The Judgment can be used for reference in dealing with similar cases.

1.Issue of criteria of false advertisement

The Anti-Unfair Competition Law, aiming at encouraging and protecting fair competition, does not exclude an operator’s use of advertisement or other means to publicize and promote its product and service. However, the operator’s advertising act should conform to commonly-accepted commercial morality, and should not give misleading information to obtain improper competitive advantage, damage other operators’ legitimate interests, or disturb the social economic order. To recognize false advertisement should not limit to whether the content of the advertisement is true or not. Even if the content of the advertisement has a true source, if the content and the expression means are incomplete, or the advertisement uses discriminatory expression or other misleading means, the advertisement will easily cause misunderstanding of relative public and should be recognized as false advertisement.

2.Issue of qualification of plaintiff of unfair competition lawsuits

The Anti-Unfair Competition Law shall not only crack down unfair competition acts but encourage and protect fair market competition. Therefore, for unfair competition dispute including false advertisement, plaintiff’s qualification shall be strictly examined according to regulation of Civil Procedural Law, i.e. having direct relation of interests shall be the precondition of plaintiff to initiate such a lawsuit regarding unfair competition.


Case 3 An Administrative Case of Patent Invalidation of an Invention of “A Chatting Robot System”

Plaintiff: The Apple Computer Trading (Shanghai) Co., Ltd.

Defendant: The Patent Review Board of the State Intellectual Property Office

Third Party: Shanghai Zhizhen Network Science & Technology Limited

Case brief

Zhizhen Company is a patentee of a patent invention titled “A Chatting Robot System” (Patent). The Apple Company filed a request with SIPO to invalidate the Patent on November 19, 2012. SIPO issued its No.21307 decision to affirm that the Patent is in compliance with the Patent Law and the Implementing Regulations of the Patent Law and sustain the Patent on September 3, 2013. The Apple Company was dissatisfactory and brought an administrative lawsuit to the court.

The court held that according to the description of the specification of the Patent, fulfillment of game function is an expression form of the anthropomorphism that the Patent persues rather than an additional function to its anthropomorphism. Game function should also be a necessary technical feature in claim 1 of the Patent. However, the specification of the Patent merely describes that there is a game server and addresses an idea for fulfillment of an interactive game without a word to describe how the game server connects to the other components of the chatting robot. In addition, according to the description of the specification and what it teaches, even if the filter of the chatting robot system of the Patent can analyze and process an input statement relevant to the game, the filter will identify the statement as a natural sentence or a formative sentence and transmit it to the artificial intelligence server or query server instead of the game server. Hence, the specification of the Patent does not sufficiently disclose how to fulfill the game function defined in claim 1, which violates Paragraph 3 Article 26 of the Patent Law and the Patent should be invalidated. The specification of the Patent fails to sufficiently disclose how to fulfill the game function but merely mentions a game server without further description about the composition of the game server and its working mechanism, it does not support the relevant feature of “game server”, and claim 1 of the Patent is not incompliance with Paragraph 4 Article 26 of the Patent Law. Claim 1 of the Patent does not clearly define what kind of statement is transmitted to the game server, it’s hardly interpreted with the specification, and the connective relationship of the filter with the three servers is not clear. Therefore, claim 1 of the Patent is not incompliance with Paragraph 1 Article 20 of the Implementing Regulations of the Patent Law and should be invalidated. PRB is wrong to sustain the Patent and its mistake should be corrected. The court ordered that the decision was repealed and PRB was ordered to issue a new decision.

Comments

The core value of the patent system is based on a quid pro quo of “protection” in return for “disclosure”, that’s said, the patentee discloses its technical solution for acquiring the patent monopoly of its invention and creation. The claims and the specification are the two most important documents in a patent application. The specification as the detailed technical document to disclose its invention and creation is the basis of a patent and it provides the ground for determining the claims and is also used for interpretation of the claims. The claims play a role to define the protection scope requested by the patent applicant on the basis of the disclosure of its invention and creation. According to the conditions for granting a patent as set out in the relevant provisions of the Patent Law in our country, the patent specification should clearly and comprehensively describe the invention and creation to such an extent that the skilled person of the art can fulfill it. The claims should state the requested protection scope based on the specification. The documentation of a patent must meet the conditions above for grant of a patent. A poorly drafted patent application may lead to rejection of the patent application during the patent prosecution or result in invalidation of the patent after the grant even if the technology innovation is indeed a good one. Patent disputes frequently occur in the computer software sector in recent years. This case can be used as an important example to show how to protect a patent and how to appreciate the effectiveness of a patent in the computer software field. Particularly, this case provides a beneficial exploration in and clarification about the relationship between Paragraph 3 and Paragraph 4 of Article 26 of the Patent Law, which is helpful to unify the judgment standards in patent prosecution and patent invalidation cases.


Case 4 “DiDi” Trademark Infringement Dispute

Plaintiff: Guangzhou Riicy Technology Ltd.

Defendant: Beijing Xiaoju Science and Technology Ltd.

Case Brief

Riicy is the holder of the word mark “嘀嘀” in category No. 35 and

“滴滴” in category No. 38. The approved services of “嘀嘀” are commercial management, organization consultation and

sales promotion for others, etc. and the approved services of “滴滴” including information transfer, computer supplementary information and image transfer, etc. Riicy alleges that “滴滴打车” (original name “嘀嘀打车”) ran by Xiaoju is remarkably marked “滴滴” on the program-end of the service software, the content of its service is collecting information for background processing, choosing, dispatching and matching by using mobile internet and client-end application, so that both the driver and client can know the place of each other through the online map, contact each other and fulfill the service on time. It is typically an application that provides communication service, the service of promoting sales for taxi drivers, management business and information transfer services, which fall within the scope of the approved services of the two categories of Riicy’s registered trademark and have infringed Riicy’s exclusive right to use its registered trademark. Riicy requires that Xiaoju stops using the name, and eliminate the effects openly.

This court holds that: under usual conditions to affirm trademark infringement, the court should overall evaluate the similarity between the infringing trademark or logo and the registered trademark, the similarity of the products or services, and the factors that may cause public confusion. In this case, in light of the logo itself, the image-text logo of

“滴滴打车” is of relatively strong distinctiveness. It is distinguished significantly with Riicy’s word mark. The features of the two categories’ trademark, covering business and telecommunication claimed by Riicy, are not the main feature of “滴滴打车” service, but the embody of its business nature and inevitable choice of its mode of business operation. Moreover, given the actual use of the trademark of Riicy and the image-text logo of “滴滴打车”, it is difficult to cause relevant public confusion. In conclusion, the service content of “滴滴打车” is in different category with the approved service of Riicy’s registered trademark, and the trademark itself also is distinctive, so using “滴滴打车” will not cause source confusion for Riicy’s operation. Xiaoju doesn’t infringe Riicy’s trademark right of using the image-text logo of “滴滴打车”.

Comments

As the business mode of “Internet+” is spreading, providing services through

application software becomes a general mode of business operation. Because of the short name of application software and the limited choice of word and image, the conflict between the name of application software and the registered trademark is inevitable and the number of the trademark infringement disputes caused by the name of application software are increase gradually. In juridical practice, whether the service provided by the defendant through application software is the same or similar service with the plaintiff’s approved service of the registered trademark is often the crucial issue of a dispute. In this case, the court doesn’t abstractly hold that “滴滴打车”, because “滴滴打车”involves telecommunication, software and business, is the similar service with telecommunication, software, business, etc., but holds on to the keys of essential attributes of different services and main features, overall evaluates the factors like purpose, content, pattern, the possibility of confusion of different services, ultimately holds that “滴滴打车” is essentially a service providing transportation information and transportation manage service for client. The judgement of this case has distinct characteristics of that time, where the analysis method of seizing essence and emphasis provides an important reference to accurately decide the similar service under “internet+” business mode.


Case 5 Case of Administrative Disputes over Review on “清样” Trademark Oppositions

Plaintiff: Anguo City Jintai Food Co., Ltd.

Defendant: Trademark Review and Adjudication Board of State Administration for Industry and Commerce

Third Party: Hubei Daohuaxiang Winery Co., Ltd.

Case brief

The Opposed Trademark is the No. 8078350 “清样” Trademark, applied by Jintai Company with designated goods of beer. Daohuaxiang Company filed an opposition application to the Trademark Office against such Trademark. According to the ruling made by the Trademark Office, the registration of the Trademark was approved. Daohuaxiang Company applied to the TRAB for review with one of the major grounds as follows: the application for registration of the Opposed Trademark by Jintai Company falls into the circumstance specified by Article 41.1 of the Trademark Law amended in 2001, namely “the registration of a trademark was acquired by fraud or any other improper means”, and its registration shall not be approved according to law. The TRAB holds that the act of registering a lot of trademarks committed by Jintai Company bears obvious intention of copying and plagiarizing others’ trademarks with relatively higher popularity, disturbs the normal order of trademark registration and administration, impairs the market order of fair competition and constitutes the circumstance specified by Article 41.1 of the Trademark Law, namely “the registration of a trademark was acquired by fraud or any other improper means”, which shall not be approved. Therefore, the TRAB made the decision that the registration of the Opposed Trademark shall not be approved.

The court of the first instance holds that, the provisions in Article 41.1 of the Trademark Law are applicable to the cancellation procedure of registered trademarks instead of trademark opposition procedure. Therefore, the TRAB incorrectly applied laws, and the Sued Judgment made by the TRAB shall be cancelled.

The court of the second instance holds that the legislative spirit of Article 41.1 of the Trademark Law is to implement the public order and good custom, maintaining the sound order of trademark registration and administration and creating a favorable trademark market environment, which shall be insisted from trademark authorization to cancellation. Therefore, the aforesaid provision can be referred in the trademark opposition procedure. What the TRAB shall do is to refer to rather than directly apply the aforesaid provision. Although the method of law application is somehow improper, the TRAB’s decision is correct and it is unnecessary to cancel such decision. Therefore, the court of the second instance gave the ruling that the judgment of first instance shall be cancelled, and the claim of Jintai Company in the first instance shall be refused.

Comments

In this Case, the focus of dispute lies in whether

The provision of Article 41.1 of the Trademark Law, namely “the registration of a trademark acquired by fraud or any other improper means shall be prohibited”, is applicable to the trademark opposition procedure. On this subject, there are different opinions in practice. One opinion holds that the legislative spirit of the aforesaid provision shall be implemented from trademark application examination, approval to cancellation, so such provision is certainly applicable to the trademark opposition procedure. According to another opinion, such provision shall be applicable to the cancellation of registered trademarks only. Without adopting any of the aforesaid two opinions, the court of the second instance holds that, from the perspective of legal interpretation, the Trademark Law has no article similar to the aforesaid provision in the trademark authorization procedure, which belongs to a legal loophole. In individual cases, law enforcement agencies shall compensate such legal loophole, and the method available is to apply by reference (or called as to apply by analogy) the provision in Article 41.1 of the Trademark Law. The method of law application displayed by the court of the second instance in this Case will be of great significance for the handling of similar cases.



Case 6 Case of Infringement Dispute over the Copyright of The Red Detachment of Women

Plaintiff: LIANG Xin

Defendant: The National Ballet of China

Case brief

In 1961, Shanghai Tianma Film Studio shot the film adaption of The Red Detachment of Women created by LIANG Xin, and released to the public. In 1964, The National Ballet of China adapted the film script into a ballet drama named as The Red Detachment of Women and released to the public. On Jun. 26, 1993, LIANG Xin and The National Ballet of China executed an agreement as per the Copyright Law implemented since June 1991. The agreement confirmed that the ballet drama

Named as The Red Detachment of Women was adapted as per the film literary script The Red Detachment of Women, and recognized that the then adaption was permitted and assisted by LIANG Xin. LIANG Xin holds that, as per the then laws in force, the valid term of a copyright licensing contract shall not exceed ten (10) years, so the aforesaid agreement shall expire to become invalid in June 2003. Therefore, LIANG Xin filed a litigation to and requested the court to order The National Ballet of China to: cease infringement, that is, The National Ballet of China shall not perform the ballet drama named as The Red Detachment of Women unless it is otherwise permitted by LIANG Xin; make a public apology; and compensate LIANG Xin for its economic losses of RMB 500,000 and attorney fees of RMB 50,000.

The court of the first instance held that, when The National Ballet of China adapted the film literary script The Red Detachment of Women created by LIANG Xin into a ballet drama in 1964, he obtained the license of LIANG Xin. Although such license was not made in the written form, the existing evidence can be combined to identify that the copyright licensing contract is valid. The agreement executed by the parties in June 1993 only specified the remuneration payable to the original author for the performance of the adapted works and shall not serve as a works licensing contract. The continuous performance of the ballet drama named as The Red Detachment of Women by The National Ballet of China after June 2003 shall not constitute the use without license or infringement on LIANG Xin’s copyright. However, according to law, The National Ballet of China shall pay corresponding remuneration to LIANG Xin for the performance of the adapted works, and compensate LIANG Xin the economic losses suffered therefore. With regard to the right of signature, when The National Ballet of China introduced the drama The Red Detachment of Women involved in the case at its official website, he failed to add the name of LIANG Xin, and infringed on the right of signature possessed by LIANG Xin, for which The National Ballet of China shall make an apology. Therefore, the court of the first instance ordered The National Ballet of China to compensate LIANG Xin for its economic losses and reasonable expenses on litigation equal to RMB 120,000, and make written apologies to LIANG Xin. After the judgment of first instance was made, both the Plaintiff and the Defendant instituted an appeal, but the court of the second instance maintained the original judgment.

Comments

In this Case, the court, in combination with the specific political, legal and social environment, made a comprehensive analysis on such matters as whether the permit and assistance offered by the original author to others for the adaption of the works prior to the implementation of the Copyright Law constitute a license behavior de facto, and whether the agreement executed by the parties upon implementation of the Copyright Law serves as a licensing agreement or only specifies the remuneration for performance. By complying with the legislative spirit of the Copyright Law and considers the political and cultural factors at the specific history period, the judge of this Case makes a comprehensive analysis and determination on the license act concerning The Red Detachment of Women’s adaptation and performance right, which achieves sound legal effect and social effect. This judgment will be of reference significance for the handling of dispute over copyright on red classic works in the future.


Case 7 “Super MT” copyright infringement and unfair competition

Plaintiff: Beijing LOCOJOY Science Limited Company

Defendant: Beijing Kunlun Yuexiang Network TechnologyLimited Company

Beijing Kunlun Online Network TechnologyLimited Company

Beijing Kunlun Web ScienceCorporation

Case brief

LOCOJOY enjoys the copyright of the mobile terminal game I’m MT on line and I’m MT 2 (hereinafter refers as I’m MT), which adapted from the serial 3D comic I’m MT. LOCOJOY Company enjoys the exclusive licensee right to use the game name and character name as well as the artwork copyright of the character image. LOCOJOY held that the three Defendants infringed its copyright because they used the names and characters in the game Super MT, among which, the names and characters were similar to those in the game I’m MT. In addition, the three Defendants plagiarized the name of the game I’m MT in their game Super MT and the character names in the two games were extremely similar. The terms relevant to the game I’m MT was used in the promotion. The acts of the three Defendants have constituted unfair competition act, which violated Article 5.2 and Article 9.1 of the Anti-unfair Competition Laws.

The Court held that because the involved game name and character name did not constitute artwork and the involved game did not use the original expression in the adapted work of LOCOJOY, the acts of the three Defendants did not infringe the copyright of LOCOJOY; Being aware of that the game name and character name of LOCOJOY constituted unique name of the service under the class of mobile game, the three Defendants provided the download and promotion of the Accused game, which constituted the act of using the unique name of the well-known service of the Plaintiff without authorization. Kunlun Yuexiang, Kunlun Online and Kunlun Web made false promotion because the contents were not fact at all. Accordingly, the Court made judgment that the three Defendants shall cease the acts of unfair competition and compensate economic loss and reasonable expense totaling RMB 535,000.

Comments

As the branch of emerging cultural industry, mobile game is the combination of culture and technology, thus receiving extensive attention because of huge development space and broad market prospect. This case is indeed a dispute over copyright infringement and unfair competition involving mobile game. The Accused infringing game Super MT was similar to the game I’m MT in respects of the game name, character name, promotion of the game and head portrait of App, so this case included trivial and complicated facts with various and difficult legal issues. This case made elaborate and delicate analysis of the following issues: the allocation of responsibility concerning the copyright ownership of the mobile game, whether the short phrases of game names and character names could constitute literary works, the copyright protection of the adapted works, the determination of the efficacy of the notarial certificate containing defects, whether the name of mobile game could constitute the unique name of well-known commodity and the determination of the act of false promotion. Concerning the civil liability, the Court took the market share of the game (which enjoyed the copyright) and the subjective fault of the Accused infringer into consideration, therefore protected the interests of the copyright owner of the game at the highest level. Defining the idea and direction of the intellectual property legal protection of the mobile game, this case had significant influence and exemplary effects by promoting healthy and orderly development of the industry of mobile game.



Case 8 Dispute over Travel Satellite Channel logo copyright infringement

Plaintiff: Hainan Haishi Travel Satellite Channel Media Limited Liability Company

Defendant: Zhejiang Aimeide Tourism Product Limited Company

Beijing Jingdong 360 E-commerce Limited Company

Case brief

Aimeide Company used the trademark which was very similar to the logo of the Travel Channel on its luggage product and then sold on the platform of JD Company. Travel Channel held the act of the two Defendants infringed the copyright of its logo, therefore filed lawsuit to order the two Defendants to cease infringing act and order Aimeide Company to compensate the economic loss as well as reasonable expense totaling RMB 2,000,000.

In order to prove the trademark was used previously on its independent design, Aimeide Company submitted dozens of evidences. During trial, the Court found that many contact phone numbers stated on the distribution contracts had not been used, or the number had not been raised to eight digit from seven digit, which was obvious against common sense. Aimeide Company also admitted some contracts were signed after the contracts came into effect. After the above problems were found, Aimeide Company submitted the certificates issued by National Leather Industry Standardization Technical Committee and National Leather Products Quality Supervision and Inspection Center, which declared that in 2003, the luggage products of Aimeide Company had once been examined in National Leather Products Quality Supervision and Inspection Center and one luggage sample bearing the involved trademark was now stored in the warehouse of the center, whose time was earlier than the Travel Channel started to use its logo. The Court conducted investigation at the two committees, and both the secretary general Zhao of the National Leather Industry Standardization Technical Committee and vice director Tian of National Leather Products Quality Supervision and Inspection Center insisted the above luggage was indeed stored in the warehouse after inspection in 2003. However, while inspecting this luggage, the Court found the involved trademark marking with “?” on its hidden part. But Aimeide Company applied to register the involved trademark in 2005 and was granted for its registration in 2008. In the follow-up investigation, Tian confessed that his testimony was instigated by Zhao, and the involved luggage was handed over to the center by Zhao in 2014, which was confirmed at Court by the person in charge of the center.

The Court held that all the dozens of evidences submitted by Aimeide Company could not be adopted, whose purpose was to prove the involved trademark was used earlier, and Aimeide Company infringed the copyright of the logo of Travel Channel. Taking into consideration of the factors of the degree of originality and popularity of the involved logo, the features and continuous use of the logo by Aimeide Company, and the scale of Aimeide Company, Aimeide Company earned huge profit through infringing acts, the Court ruled that Aimeide Company shall cease infringing act and compensate economic loss of RMB 2,000,000. In the meantime, the court of first instance held that many crucial evidences submitted by Aimeide Company were false, among which, the National Leather Industry Standardization Technical Committee issued false testimony, the above acts are so severe, causing serious prejudice to the civil litigation, the Court imposed a fine of RMB 1,000,000 and RMB 100,000 respectively on the two organizations, with a fine of RMB 10,000 on the person in charge Zhao of the National Leather Industry Standardization Technical Committee.

Comments

Imposing severe punishment on dishonest actions is absolutely indispensable for strengthening the legal protection of intellection property. This case is the first case which the Court of Beijing imposing the maximum penalty on dishonest party as well as the highest penalty in a single case in China after the new civil procedure law was effective. In this case, the Defendant Aimeide Company firstly submitted many crucial false evidences, and after the evidence of prior use was found to be falsified, it continued submitting false evidences and testimonies. If the above false evidences were not found to be falsified, the interests of the Plaintiff and Defendant is very likely to be reversed. The above act impeded litigation order, wasted judicial resources, impaired the interests of opposed party and ignored judicial authority, therefore, the Court imposed the maximum fine of RMB 1,000,000 on Aimeide Company accordingly. As a national industrial organization, the National Leather Industry Standardization Technical Committee issued falsified evidences and testimonies after signing legal undertaking, which severely interfered with judicial order, so the Court imposed a fine of RMB 100,000 on the committee; As the person in charge, Mr. Zhao falsified the above evidences and issued false testimonies on behalf of the committee, he shall bear corresponding liabilities, and the Court imposed a fine of RMB 10,000 on him accordingly.



Case 9 Case of Infringement on the Design Patent of “Abbott Rice Flour Pot”

Plaintiff: Abbott Laboratories Trading (Shanghai) Co., Ltd

Defendant: Hunan Engnice Nutrition Food Co., Ltd
Jiangxi Maple Ecological Science and Technology Food Co., Ltd
Hunan Engnice Dairy Industry Co., Ltd
Beijing Le You Da Kang Science and Technology Co., Ltd
Shaoyang Xing Hua Plastic Co., Ltd

Case brief

Abbott was a licensee of the design patent right ZL200730158176.0 named as “container”, and has the right to file the civil lawsuit in its own name. Engnice Food, Maple Food, and Engnice Dairy entrusted Xing Hua Plastic to design and manufacture the accused infringing rice flour pot, and used such pot in nine kinds of canning rice flour products. Leyou also distributed these products. Abbott claimed the design of these rice flour pot was identical to the design patent claimed by Abbott. Before this suit was filed, according to the application of the Abbott, the court rendered a civil injunction on ceasing the design patent infringement, and served such injunction to the four defendants (Engnice Food, Maple Food, Engnice Dairy and Leyou) in June 2014. In July and August, 2014, Abbott entrusted its agency to separately buy the accused infringing products with notarization from several times in Tianjin and Beijing. According to the notarial certificates, there were still many merchants exhibiting and selling the infringing products in Taobao. Abbott claimed: the defendants infringed the right of the design patent claimed by Abbott and asked for a damage of RMB one million as well as the reasonable costs of RMB 100,000.

The court held that Abbott is the licensee of the claimed design patent, and the accused rice flour pots have infringed the right of implementing such design patent enjoyed by Abbott. Engnice Food and the other four defendants constituted the joint infringement. Leyou also constituted the infringement for its behavior of selling the infringing products. In respect of the damage amount, the court consider the following factors: the claimed patent was the design patent; the proportion of the price of the accused rice flour products contributed by the infringing rice flour pot and the contribution rate of the infringing rice flour pot for the sales of concerning rice flour products; the sales coverage of the accused rice flour products was relatively wide and the sales amount is relative large; in the two months after successfully serving the civil injunction on ceasing the infringement before the suit, Abbott can still buy the infringing rice flour products in the market. All of the above indicate the defendants are in serious faults, and therefore the one million damage claimed by Abbott has the legal basis and shall be upheld. And the reasonable costs can be also upheld according to the actual expenditure of Abbott. Accordingly, court order that all the defendant cease the infringement; Engnice Food, Maple Food, Engnice Dairy, Xing Hua Plastic jointly pay the Plaintiff a damage of RMB 1 million and the reasonable cost of RMB 31,395.

Comments

This case is a typical case where the court strengthens the judicial protection of the intellectual property via increasing the damage amount, and has a certain reference significance and guiding effect on the determination of the damage. In deciding the damage amount of this case, the court not only took into account the type of claimed rights as well as the contribution of the such design for the sales of the accused products, but also comprehensively weighed the numerous facts that up to nine kinds of products are infringing ones, the concerning products and sales volume were relative large, the coverage of the sales is wide, the duration of the infringement is relative long and the subjective fault of defendants is very serious, especially in the more than two months after the court has rendered a pre-trial injunction the defendants still did not stop the infringement and disregard the court injunction. Therefore, the court decided the damage amount according to the upper limit of statutory damage and upheld all the claim of the right owner on the damage, which fully compensated for the economic losses of the plaintiff, intensified the sanction on the malicious infringement, manifested the determination and attitude of the court in strengthening the judicial protection of intellectual property rights, and realized the good legal effect and social effect at the same time.


Case 10 Copyright Infringement Case on Selling the Encryption Locks of the Computer Software

Procuratorial Office: The People's Procuratorate of Haidian District, Beijing unicipality

Defendants: HUO Hongwei, LIU Yifei, DUAN Yuting, HAO Limeng, SHEN Ling, WU Sumei

Case Brief

The victim Glodon Company is a software development company, and its company websites supplies the download of the legitimate copy of the software to the public for free. After downloading the software, users need to purchase

the software encryption locks to use the software. Sincee April of 2013, the defendant HUO Hongwei, as the legal representative and the actual responsible person of Anyang Weijie Electronic Commerce Company, employed the defendants WU Sumei, DUAN Yuting, HAO Limeng, SHEN Ling and LIU Yifei to sell the software encryption locks copyrighted by Glodon Companyand the software cracking drivers via the internet without the authorization of the copyright owner, which actually reached a goal of selling the software copyrighted by Glodon Company. Their illegal turnover amounted RMB 274,944.The defendant LIU Yifei participated the aforementioned crime since June of 2013, and the concerning illegal turnover amounts RMB 189,436. On October 28, 2013, the defendants HUO GongWei, WU Sumei, DUAN Yuting, HAO Limeng, SHEN Ling, LIU Yifei were arrested by the Public security Buruau. Afterwards, the defendant HUO Hongwei paid a damage of RMB 500,000 to Glodon Company, who then showed understanding to him.

The Court held that, as the directly responsible managers and persons of Anyang Weijie Electronic Commerce Company Limited, the defendants HUO HongWei, WU Sumei, DUAN Yuting, HAO Limeng, SHEN Ling and LIU Yifei, without the authorization of the copyright owner, issued the computer software copyrighted by other party in the name of their company for the purpose of making profit, which infringed the copyright of the other party. Specifically, the circumstances of HUO HongWei, WU Sumei, DUAN Yuting, HAO Limeng and SHEN Ling are very serious, and the circumstance of LIU Yifei is serious, so their acts have constituted the crime of copyright infringement and should be punished. In respect of the defense of the defendant HUO HongWei and his defending lawyer that it is the crime of selling pirate copies that shall be charged, it shall not be adopted because the evidences of this case their act of selling the software encryption locks copyrighted by Glodon Companyand the software cracking drivers has actually reached the goal of selling the software copyrighted by Glodon Company Co. The essence of such act is to issue the others' work, which satisfies the constitutive elements for the copyright infringement crime and shall be affirmed as such crime.

Comments

The current mode of computer software infringement is characterized by the following: the infringers sell software through selling the software encryption locks and make money by controlling the supply and use channel. The function and purpose of the pirated encryption locks is to allow others to use the locked legitimate software, which actually bypass the technological protection measures of the copyright owner, and the object infringed here is the copyright of the software. In this case, the pirated encryption locks sold by the defendants are different from the legitimate encryption locks. The pirated encryption locks firstly unlock the software and then set up a new lock, and realized the function of encryption and decryption of the legitimate encryption lock through the technical means such as recoding, In determining whether an act constitutes copyright infringement crime or not, it is in need to consider such infringement mode, and identify the connotation of “issue” according to the essence of the acts. In this case, the defendants modify and remove the encryption program of the legitimate software through selling the recoded encryption program, which in essence is selling the software copyrighted by others. So such act should be deemed as the “issuance” defined in the Criminal Law, and constitutes the crime of copyright infringement. This case is a typical case on the new computer software infringement crimes where the court extended the original connotation of "issuance" in affirming the crimes by focusing on the nature of criminal acts, and has certain significance in identifying the criminal object and the way of the infringement.