The Magic of Artistic Works
– Authored by John Tan
“Literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as:
- books, pamphlets and other writings;
- lectures, addresses, sermons and other works of the same nature;
- dramatic or dramatico-musical works;
- choreographic works and entertainments in dumb show;
- musical compositions with or without words;
- cinematographic works to which are assimilated works expressed by a process analogous to cinematography;
- works of drawing, painting, architecture, sculpture, engraving and lithography;
- photographic works to which are assimilated works expressed by a process analogous to photography;
- works of applied art;
- illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.
To all intents and purposes, artistic works may appear to be vastly different from trademarks. However, pre-recording the copyright for a piece of artistic works can be valuable for trademark owners to protect their “original works of authorship.”
Over the years, the team of experienced attorneys at IPO Pang Xingpu has dealt with and won many trademark infringement cases. In this blog, we are looking at one such example to give you a better understanding of why it is crucial to pre-recording your artistic works.
The Case of D LOGO Mark
In September 2019, we won a case of administrative litigation with Beijing Intellectual Property Court in favour of one of our clients. Our client had been involved in the clothing and fashion industry, retailing shoes, caps, and hats, since the 1920s.
In 2016, one of our client’s competitors grabbed and registered a mark that had a similar design element to that of our client’s artistic works and trademarks, and that created an identical overall commercial impression. For easier understanding, let’s call the mark “D LOGO Mark.” After a rigorous comparison and analysis, we determined that the D LOGO Mark was related to our client’s artistic works in such a manner that consumers were likely to assume (mistakenly) that they both come from a common source – even though the goods upon which the D LOGO Mark was used for were in a different class.
We reported this to our client in a timely manner while also explaining the risks of such an infringement. Most of these risks were grounded in a genuine concern of confusion among consumers. Upon our client’s instructions, we subsequently submitted a formal request to invalidate D LOGO Mark with Trademark Review and Adjudication Board (TRAB). We reasoned that:
- The D LOGO Mark was replicated from plaintiff’s (our client) artistic works.
- The defendant (the competitor) infringed the prior right to the plaintiff’s registered trademarks.
- The defendant violated the preceding right to the plaintiff’s copyright to related artistic works on which basis the client’s marks were registered in the People’s Republic of China.
To support our argument, we demonstrated that our client was the rightful owner of the copyrighted works by introducing the evidence of copyright ownership, such as recordation certificates and publication of the said works in the United States. We also presented documentary evidence that our client’s mark is a recognizable sign and is perceived as a trademark in the People’s Republic of China. These included photographs showing the mark embossed, printed, transferred or otherwise applied to the products, labels/tags, packaging/storage or transport boxes, brochures, leaflets, exhibition stands as well as extracts from advertising (including printed, online, TV, etc.)
After rigorously examining the evidence, examiners from TRAB accepted our argument and delivered the verdict that the competitor copied and registered the words and the logo from the prior artistic works of our client without their permission. Examiners found that the recordation certificates of the copyrights to the related artistic works and the early registration of some client’s trademarks supported each other and proved that the client had the prior right in such artistic works. Therefore, in August 2017, examiners made a decision to invalidate the D LOGO Mark.
Needless to say, the competitor was dissatisfied with the judgment. Thus, they brought administrative litigation to Beijing Intellectual Property Court and appealed for the Court to revoke the decision made by TRAB. At the close of a hearing with aggressive arguments from each party (the competitor, TRAB, and our client), and on the basis of Article 32 of Trademark Law of the People’s Republic of China, the Court decided to accept our defence and evidence we submitted to the TRAB previously. The Court also established that the competitor infringed the copyright of artistic works of our client that were completed, published, and recorded in the 1990s and that the competitor copied and registered the D LOGO Mark without permission from the client. As follows, the Court made a judgment to reject the competitor’s appeal.
The Intellectual Property Protection Mechanism in China
Did you know? According to the Berne Convention for the Protection of Literary and Artistic Works (an international agreement governing copyright), copyrights of literary, scientific and artistic works from member countries are automatically protected in the People’s Republic of China.
At the end of a lengthy trial, we won the trademark infringement case, and the D LOGO Mark was invalidated. Even though we presented significant evidence to support our argument, we think that one of the primary reasons why we won the case was because the competitor infringed the prior copyrights of the artistic works of our client as per Article 32 of Trademark Law of the People’s Republic of China. The Article 32 clearly stipulates that “No applicant for trademark application may infringe upon another person’s existing prior rights, nor may he, by illegitimate means, rush to register a trademark that is already in use by another person and has a certain influence.”
Copyright is extremely important to authors because it constitutes the ownership of one’s original works. Having ownership means they can protect their works as intellectual property and control who makes money from it — which is they and those to whom they assign rights. The best part is that the copyright of artistic works is also very easy to obtain.
This is why we also encourage our clients to record their copyrights of those artistic works that are filed and registered as trademarks or the trademarks that can be regarded as artistic works. We also encourage our clients to keep the recordation of their copyrights with competent authorities as it can serve as useful evidence in proving ownership in disputes for relevant trademarks and copyrights. Even in the People’s Republic of China, where the recording of literary and artistic works and other works is not required, we recommend authors (such as our client in the earlier case) to record their works with the National Copyright Administration (NCA) of the Country. This way, in the future, if competitors or squatters grab the trademarks based on their artistic works, and register for related products or services covered by their marks, they will be able to challenge such squatters or competitors with recordation of these artistic works as evidence and defend their trademarks. It goes without saying, the precondition for possible success in the challenge is that they must record the copyrights for the artistic works as well as keep documentary evidence of the creation of the process of creation of such artistic works, including manuscripts, date of publication, date of first commercial use, advertisements, the date to file such works as a trademark, use as trademarks on products or services as mentioned above and so on. Otherwise, it will not be very easy for them to present evidence that they are the rightful owner of the work.