涉案专利系名称为“一种无线局域网移动设备安全接入及数据保密通信的方法”、专利号为ZL02139508.X的发明专利，专利权人为西安西电捷通无线网络通信股份有限公司（简称西电捷通公司）。2003年5月12日，国家质检总局发布GB15629.11-2003《信息技术 系统间远程通信和信息交换 局域网和城域网 特定要求 第11部分：无线局域网媒体访问控制和物理层规范》。2006年1月7日，国家质检总局和国家标准委联合发布GB15629.11-2003/XG1-2006标准（上述两标准统称为涉案标准），对前述国家标准中涉及无线局域网安全的部分进行了修改。2003年1月7日，西电捷通公司向全国信标委出具《关于两项国家标准可能涉及相关专利权的声明》。该声明承诺在西电捷通公司的权利范围内，愿意与任何将使用该标准专利权的申请者，在合理的无歧视的期限和条件下协商专利授权许可。2009年3月至2015年3月，西电捷通公司与索尼移动通信产品（中国）有限公司（简称索尼中国公司）就涉案专利许可的问题进行了协商和沟通，但未最终达成许可协议。西电捷通公司以索尼中国公司生产、销售的手机构成专利侵权为由，诉至法院，请求判令索尼中国公司停止使用涉案专利，停止生产、销售使用涉案专利的手机产品，赔偿经济损失及合理支出合计3300余万元。一审法院判决索尼中国公司停止侵权，赔偿经济损失及合理支出共计910余万元。索尼中国公司不服，提起上诉。二审法院认为，涉案专利权利要求1与涉案标准中的技术方案相同。索尼中国公司至少在设计研发或样品检测阶段，未经许可完整地实施了涉案专利技术方案，在制造被诉侵权产品的过程中未经许可实施了涉案专利，侵犯了西电捷通公司的涉案专利权。针对索尼中国公司制造销售被诉侵权产品的行为，由于索尼中国公司仅提供内置WAPI功能模块的移动终端，并未提供AP和AS两个设备，在没有直接实施人的前提下，索尼中国公司的行为不构成帮助侵权。在标准必要专利的许可谈判中，谈判双方应本着诚实信用的原则进行许可谈判。本案双方当事人迟迟未能进入正式的专利许可谈判程序，过错在索尼中国公司，其应当承担停止侵权及赔偿损失的民事责任。据此，二审法院判决：驳回上诉，维持原判。
2016年至今，黄明伙同他人，未经著作权人北京闲徕互娱网络科技有限公司（简称闲徕互娱公司）许可，运营与闲徕互娱公司享有著作权的“闲徕琼崖海南麻将”游戏源代码具有高度同一性的“巨石海南麻将”游戏，并通过代理人员销售用于启动游戏的虚拟货币的方式进行非法营利，非法经营数额162 912.9元。2017年12月16日，黄明被抓获。公诉机关于2018年9月21日向一审法院提起公诉，认为巨石在线（北京）科技有限公司（简称巨石在线公司）、黄明的行为触犯了刑法第二百一十七条、第三十一条之规定，已构成侵犯著作权罪，提请依法惩处。巨石在线公司诉讼代表人李勇对起诉书指控的事实和罪名没有提出实质性异议。黄明对起诉书指控的事实和罪名没有提出异议。一审法院认为，巨石在线公司及其直接负责的主管人员黄明以营利为目的，未经著作权人许可，复制发行他人享有著作权的计算机软件，情节严重，其行为已构成侵犯著作权罪，应予惩处。公诉机关指控巨石在线公司、黄明犯有侵犯著作权罪的事实清楚，证据确实充分，指控罪名成立。鉴于黄明到案后及能如实供认自己的基本罪行，巨石在线公司及黄明认罪、悔罪态度较好，且巨石在线公司积极退交违法所得，对巨石在线公司及黄明依法从轻处罚。依照刑法有关规定，判决：巨石在线公司犯侵犯著作权罪，判处罚金20万元；黄明犯侵犯著作权罪，判处有期徒刑1年，罚金10万元。一审宣判后, 巨石在线公司和黄明均未提起上诉。
Top Ten Cases
IP Division, Beijing High People’s Court
April 4th , 2019
This English translation of the Top Ten Cases is for reference only. In case of any conflict, the Chinese version of the Top Ten Cases shall prevail.
2018 IP Judicial Protection of Beijing Courts
Top Ten Cases
Case No.: (2016) Beijing 73 Administrative First Instance No. 4497
(2018) Beijing Administrative Final Instance No. 4169
Plaintiff: Jiangling Motors Holding Co., Ltd.
Defendant: Patent Reexamination Board of China National Intellectual Property Administration
Third Party: Jaguar Land Rover Limited, Gerard Gabriel McGovern
The design patent at issue, titled “SUV (Landwind E32)” with the Patent Number CN201330528226.5, is owned by Jiangling Motors Holding Co., Ltd. (hereinafter referred to as “Jiangling”). Jaguar Land Rover Limited (hereinafter referred to as “Land Rover”) and Gerard Gabriel McGovern (hereinafter referred to as “McGovern”) filed requests for invalidation of the patent at issue respectively on the ground of violating paragraphs 1 and 2 of Article 23 of the Patent Law (2008 Amendment). The Patent Reexamination Board of the China National Intellectual Property Administration (hereinafter referred to as “the Patent Reexamination Board”) made the disputed decision accordingly, ruling that the patent at issue and the contrastive design had no substantial difference in the overall visual effects and the patent at issue did not conform to paragraph 2, Article 23 of the Patent Law (2008 Amendment), and declared the patent at issue invalid in whole. Jiangling was dissatisfied with the decision and filed an administrative litigation with the court of first instance. The court of first instance held that the patent at issue had different design features from the contrastive design in headlamp, air-inlet grille, slender air intake, fog lamp, penetrating tank, auxiliary air intake, inverted-U shape backplate, rear lamp, trim panel, the area of license plate and seamed edge; visual disparity arising from the combination of such features formed significant influence on the overall appearance of SUVs and was sufficient for general consumers to distinguish between the patent at issue and the contrastive design. In comparison with similarities, the aforementioned differences had more significant influence on the overall visual effects of the patent at issue and the contrastive design, therefore the patent at issue had distinctive difference from the contrastive design. Accordingly, the court of first instance made a judgment to revoke the disputed decision. The Patent Reexamination Board, Land Rover and McGovern were all dissatisfied with the judgment of first instance and filed for an appeal. The court of the second instance held that, where the three-dimensional shape and the layout of major decorative components of the SUV at issue had large space for design, similarities of the patent at issue and the contrastive design in the above two aspects, in particular, resemblances and similarities in the side and the front of car body, had the highest weight of influence on the overall visual effects, while the weight of influence of other minor differences not apt to be noticed by general consumers on the overall visual effects was significantly smaller. Although the major differences in the front and the rear of car body of the patent at issue and the contrastive design made the two patents have certain difference in visual effects, yet as the distinctive design features leading to difference in visual effects were mostly published by existing designs or had identical design methods with existing designs, their weights of influence on the overall visual effects were significantly reduced. As a whole, the weight of difference in visual effects formed by the front and the rear of car body of the patent at issue and the contrastive design on the overall visual effects was significant lower than the weight of the convergent visual effects produced by similarities of the patent at issue and the contrastive design. Comparing the patent at issue and the contrastive design, their differences did not reach the degree of “having distinctive features”, and the patent at issue did not conform to the granting conditions as provided in paragraph 2, Article 23 of the Patent Law (2008 Amendment), thus shall be declared invalid. Accordingly, the court of second instance revoked the first-instance judgment and overruled the claim of Jiangling.
This case was a complicated administrative dispute over invalidation of design patent of automobiles and had attracted wide attention from all sectors of society. The case discussed in details how to apply the method of “overall observation and comprehensive determination” to determine whether the design patent had distinctive difference from the contrastive design. The second-instance judgment clearly pointed out that one should base on the knowledge level and cognitive competence of general consumers, start from the whole of the design patent to make overall observation of its all design features, and, on the basis of investigating the influence degree of each design feature on the overall visual effects of the design patent, make comprehensive consideration of all factors that may influence the overall visual effects. When determining the weight of influence of specific features on the overall visual effects, one shall not rush to a conclusion based only on instinctive visual perception or the proportion of the feature to the whole design; instead, in determining the weight of various design features in the overall visual effects, one shall base on the cognition of general consumers of design space, consider the location of the relevant design feature in the overall design and whether it is apt for general consumers to observe, and consider the frequency of occurrence of the design feature in prior designs and whether such design feature is limited by function, aesthetic perception and technology. The ruling scale established in this case would directly affect the standard of granting and verification of design patents in the field of automobile, and has important guiding role. Especially with the upgrade of innovation-driven development strategy to national strategy and the increasing efforts of intellectual property protection, automobile manufacturers must change the way of thinking and ceaselessly strengthen independent innovation; only in this way, can they win a place in the intense market competition in the future.
Case No.: (2015) Beijing IP Administrative First Instance No. 177
(2016) Beijing Administrative Final Instance No. 2345
Plaintiff: Anhui Huayuan Pharmaceutical Co. Ltd.
Defendant: Trademark Office of the State Administration for Industry and Commerce
Third Party: Yixintang Pharmacy Chain Co., Ltd., Shanghai Jianyiwang Pharmacy Chain Co., Ltd.
No. 11988470 trademark “Huayuan Pharmaceutical & Design” (hereinafter referred to as “the trademark in dispute”) was applied for registration on January 4, 2013 by Anhui Huayuan Pharmaceutical Co. Ltd. (hereinafter referred to as “Huayuan”) for use on retail services for pharmaceutical under Class 35. The Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as “the Trademark Office”) issued the Notice of Negotiation over Applications on the Same Day (hereinafter referred to as “the Notice of Negotiation”) for the trademark in dispute in accordance with Article 4 of the Notice of the Trademark Office of the State Administration for Industry and Commerce on Effectively Conducting the Work Relating to the Application for the Registration of Newly Added Retail or Wholesale Service Trademarks (hereinafter referred to as “the Notice”) which stipulated a transitional period. Huayuan was dissatisfied with the Notice of Negotiation and filed an administrative litigation with the court of first instance, requesting to revoke the Notice of Negotiation and to review the validity of Article 4 of the Notice. The court of first instance found Article 4 of the Notice stipulating a transitional period illegal, and made a judgment to revoke the Notice of Negotiation and order the Trademark Office to reexamine its decision. Dissatisfied with the judgment of first instance, the Trademark Office appealed. The court of second instance found that the Notice of Negotiation, regarding the trademark in dispute as “applied on the same day” with the reference trademarks 1 and 2, clearly denied the legitimate rights and interests enjoyed by Huayuan according to paragraph 1, Article 31 of the Trademark Law, imposed a substantially adverse effect on its trademark application, and constituted a mature administrative action which was litigable. Article 4 of the Notice deemed dates “from January 1 to January 31 of 2013” as the “same day” and was not conform to Article 30 of the Trademark Law; new institutional arrangement was made in fact for relevant newly added service trademarks and was in violation of Article 31 of the Trademark Law. Given that Article 4 of the Notice violated Article 30 of the Trademark Law, the Notice of Negotiation also lacked a legal basis and belonged to administrative act in violation of law. Nevertheless, considering its revocation would cause great damage to interests of the general public, it was inappropriate to revoke the Notice of Negotiation. Accordingly, the court of second instance revoked the first-instance judgment and confirmed that the Notice of Negotiation violated the law.
Paragraph 1, Article 53 of the Administrative Litigation Law (2014 Amendment) includs regulatory documents into the scope of examination incidental to administrative litigations which is an important measure to improve the legal system of administrative litigation in China. In accordance with the above provision, this is the first case in the IP field with a judgement that a regulatory document developed by an administrative organization violated the law, playing a significant role in promoting the legal process of intellectual property and regulating the exercise of power of administrative organizations. The court of second instance distinguished between intermediate and mature administrative actions, strictly abided by provisions of the higher-level law, comprehensively analyzed the applicable situation of the regulatory document and the influence thereof on the basis of confirming illegality of the regulatory document, and ensured the reliance interests of the majority of trademark applicants and maintained the stability of social order by only confirming the illegality of the regulatory document without ruling to revoke the document. The proper application of relevant provisions of the Administrative Litigation Law in this case has a strong guiding significance for the examination of regulatory documents incidental to administrative litigation in the future.
Case 3 Administrative dispute over review of rejected application of trademark “DiDiDiDiDiDi”
Case No.: (2016) Beijing 73 Administrative First Instance No. 3203
(2018) Beijing Administrative Final Instance No. 3673
Plaintiff: Tencent Technology (Shenzhen) Co., Ltd.
No. 14502527 trademark “DiDiDiDiDiDi” (sound) (hereinafter referred to as “the trademark in dispute”) was applied for registration by Tencent Technology (Shenzhen) Co., Ltd. (hereinafter referred to as “Tencent”) on May 4, 2014 for use on television broadcasting and message sending related service under Class 38. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as “TRAB”) rejected the application for registration of the trademark in dispute on the ground of lacking distinctiveness. Dissatisfied with the decision, Tencent brought an administrative litigation with the court of first instance. The court of first instance held that the trademark in dispute, through the long-term and extensive use of the Tencent, formed a referential relation with QQ app as the default prompt tone of new messages of QQ app; it established high awareness in the field of instant messaging as well as stable congruent relation with QQ app and Tencent, therefore had the function of identifying the source of services in the designated message sending related service. Denial of its distinctiveness by the disputed decision of TRAB lacked factual and legal basis. Accordingly, the court of first instance ruled to revoke the disputed decision. TRAB was dissatisfied with the judgment and filed an appeal. The court of second instance held that as the trademark in dispute was merely composed of the same and repeated element “Di”, generally the relevant public was not apt to recognize it as a mark distinguishing the source of goods or services, thus the trademark in dispute belonged to marks lacking distinctiveness. A specific mark itself may lack distinctiveness as required by trademark registration on specific goods or services, yet where it has the function of identification through use, it may be granted registration in accordance with paragraph 2, Article 11 of the Trademark Law. In this case, evidence provided by Tencent can prove that the trademark in dispute “DiDiDiDiDiDi” (sound) had obtained the function of identifying the source of service through the long-term and extensive use on QQ instant messaging app. The trademark in dispute obtained distinctiveness on message sending service related to QQ instant messaging app, thus may be preliminarily approved on the above service. Nevertheless, the trademark in dispute had not been actually used on television broadcasting related service, thus did not constitute the circumstance of obtaining distinctiveness through use. Accordingly, the court of second instance affirmed the first-instance judgment on the basis of correcting mistakes thereof.
This is the first case concerning sound mark trialed by China’s courts. Amendment of the Trademark Law in 2013 deleted the original requirement that elements of a trademark should be “visible mark”, in which way expanded the scope of types of trademarks and allowed any mark having the function of identifying the source of goods or services to be granted registration as trademark. To equally treat market operators with various needs for trademark registration and equally protect owners of various types of granted trademarks, during the examination of application for registration of trademarks, any trademark, regardless of elements, shall be equally treated with the same examination standard as long as it conforms to Article 8 of the Trademark Law. Unless specially provided by the Trademark Law, sound marks and any other new type of trademarks that may occur in the future shall not be treated differently. In this case, courts of first and second instances conducted a useful exploration of the examination standard for distinctiveness of sound marks and the determination of obtaining distinctiveness through use. Judgement of the second instance made it explicit that examination for trademarks obtaining distinctiveness through use shall follow the principle of “specialization of goods and services” so as to avoid the generalization in the determination of obtaining distinctiveness through use. Clarification of such rule provided valuable experience for the examination of registration of new types of trademarks. This case attracted considerable attention from all sectors of society because the trademark in dispute was used as the prompt tone of Tencent’s QQ app which enjoys high public awareness.
Case No.: (2015) Beijing Intellectual Property Civil First Instance No. 1194
(2017) Beijing Civil Final Instance No. 454
Plaintiff: Xi’an Xidianjietong Radio Network Co., Ltd.
Defendant: Sony Mobile Communication (China) Co., Ltd.
The invention patent “a method for the secure access of mobile terminal to the Wireless Local Area Network and for secure data communication via wireless link” (Patent No. ZL02139508.X) (hereinafter referred to as “the patent at issue”) is owned by the patentee Xi’an Xidianjietong Radio Network Co., Ltd. (hereinafter referred to as “Iwncomm”). On May 12, 2003, the General Administration of Quality Supervision, Inspection and Quarantine of China issued the standard GB15629.11-2003 Information technology--Telecommunications and information exchange between systems--Local and metropolitan area networks--Specific requirements--Part 11: Wireless Local Area Network Medium Access Control (MAC) and Physical Layer (PHY) Specifications. On January 7, 2006, the General Administration of Quality Supervision, Inspection and Quarantine of China and the Standardization Administration of the China jointly issued the standard GB15629.11-2003/XG1-2006 (the above two standards are collectively referred to as “the standards at issue”), making amendments to the part concerning security of Wireless Local Area Network in the aforementioned national standard. On January 7, 2003, Iwncomm submitted the Declaration on Patent Rights that may be Involved in Two National Standards to the National Information Technology Standardization Committee, promising that it was willing to, within its cope of patent rights, negotiate on patent license with any applicants adopting such standard patent rights under fair, reasonable and non-discriminatory terms and conditions. From March 2009 to March 2015, Iwncomm and Sony Mobile Communication (China) Co., Ltd. (hereinafter referred to as “Sony China”) negotiated and communicated on the license of the patent at issue, yet no license agreement was reached. Iwncomm sued to the court, claiming that the mobile phones manufactured and sold by Sony China constituted patent infringement, and requested the court to order Sony China to cease the use of the patent at issue, cease to manufacture and sell mobile phones using the patent at issue, and compensate over RMB 33 million yuan for economic loss and reasonable expenditures. The court of first instance ruled Sony China to cease infringement and compensate over RMB 9.1 million yuan to Iwncomm for economic loss and reasonable expenditures. Dissatisfied with the judgment, Sony China appealed. The court of second instance held that No. 1 claim of the patent at issue was the same as the technical solution of the standards at issue. Sony China, at least in the stage of design research and development or sample testing, completely implemented the technical solution of the patent at issue without permission, and implemented the patent at issue without permission in the process of manufacturing the accused infringing products, infringing the patent right at issue of Iwncomm. For Sony China’s act of manufacturing and selling the accused infringing products, as Sony China only provided mobile terminals with built-in WAPI function modules without providing the two equipments of AP and AS, the act of Sony China did not constitute contributory infringement without the existence of direct implementers. In the licensing negotiations for standard essential patents, the parties shall negotiate in good faith. The parties involved in this case failed to enter the formal patent license negotiation process for a long time, and the fault was at Sony China. Sony China shall bear the civil liability of ceasing infringement and compensating for damages. Accordingly, the court of second instance rejected the appeal and affirmed the original judgment.
In the field of communications, due to the need of interconnection and enhancement of economic efficiency, the industry has internal needs and high dependence on standardized technology. A large number of standards developed by various technical standards development organizations at home and abroad emerge in response, which often contain a mass of patented technologies. Such technical standards have become indispensable parts of communication equipment such as mobile phones, making standard essential patents in the field of communications ones with the most commercial value in the world today, and a large number of disputes have arisen therefrom. In the development of standards, to ensure the smooth development and implementation, patentees of standard essential patents voluntarily make corresponding license commitments to organizations of standardization and promise to negotiate on license with standard implementers in the fair, reasonable and non-discriminatory principle, so that standard implementers may have reasonable anticipation and expectation for licensing negotiations in the future and the exercise of standard essential patent rights would be constrained to a certain extent. This is also the main reason for cases of infringement of standard essential patents to be different from ordinary patent infringement cases in terms of the determination of infringement and the bearing of liabilities. This is China’s first case of infringement of standard essential patents where the implementer of a standard essential patent was determined as constituting infringement by final judgment and was imposed a permanent injunction by the court, as well as one of the few cases where the patentee of a standard essential patent was a Chinese enterprise and ultimately won the lawsuit. It actively explored the trial rules and the bearing of liabilities in cases of infringement of standard essential patents; in particular, it made useful attempts and explorations on legal issues such as infringement comparison, issue of injunction, determination of faults and indirect infringement, accumulating experience for the trial of such cases in the future.
Case No.: (2017) Beijing 0102 Civil First Instance No. 2431
(2018) Beijing 73 Civil Final Instance No. 1991
Plaintiff: Fila Sport Ltd.
Defendant: Zhejiang Zhongyuan Shoes Industry Co., Ltd.
Defendant: Rui’an Zhongyuan E-commerce Co., Ltd.
Defendant: Liu Jun
Defendant: Beijing Jingdong 360 Degree E-Commerce Co., Ltd.
In 2008, Fila Sport Ltd. (hereinafter referred to as “Fila”) obtained the exclusive legal right to use the series of registered trademark “FILA” in China by authorization. Through continuous promotion activities and publicity, the “FILA” trademarks enjoy a high market awareness at home and abroad. In June 2016, Fila discovered that the brand mark used on footwear products promoted, displayed and sold by Zhejiang Zhongyuan Shoes Industry Co., Ltd. (hereinafter referred to as “Zhongyuan Shoes”) in online and offline stores and Rui’an Zhongyuan E-commerce Co., Ltd. (hereinafter referred to as “Zhongyuan E-commerce”) on online sales platforms including Jingdong was similar to the “FILA” trademarks held by Fila. Liu Jun, as the former legal representative of Zhongyuan Shoes, legal representative of Zhongyuan E-commerce and registrant of trademarks including “GFLA杰飞乐”, participated in the aforementioned infringement act of manufacturing, selling and promoting said products, for which he shall be jointly and severally liable. According to the statistics of Fila, the total sales of the three defendant’s infringing goods reached tens of millions of yuan. Therefore, Fila sued to the court and demanded the three defendants to cease the infringement act and compensate RMB 9 million yuan for economic loss and RMB 410,000 yuan for reasonable expenditures. The court of first instance held that the use of the mark “” and the label “Feile (China)” on the accused goods and the marks “ ”and “ ”on the website by Zhongyuan Shoes and Zhongyuan E-commerce infringed the exclusive right to use registered trademark enjoyed by Fila for relevant “FILA” trademarks. Zhongyuan Shoes and Zhongyuan E-commerce, as operators of goods of the same class, should have the awareness of the registered trademarks of Fila; these two defendants prominently used marks similar to the registered trademarks on products they manufactured, and sold such products on multiple online sales platforms with huge sales amount. In addition, the Trademark Office had already rejected the application for registration of No. 7682295 trademark “”on “clothing, footwear, headgear” on July 19, 2010 for its similarity with No. G691003A trademark “ ”for which Fila enjoyed exclusive right to use trademark, and the three defendants were apparently and fully aware of the “FILA” trademarks previously registered by Fila. Where the three defendants, clearly knowing that their use of the accused marks may seriously mislead consumers and easily cause confusion and mistake of the origin of goods, still continued to manufacture and sell infringing goods, their subjective malice was obvious and the circumstances were serious, therefore the amount of compensation shall be determined as three times of the benefits acquired by Zhongyuan Shoes from the infringement. Accordingly, the court of first instance made a judgment, ordering the three defendants to cease infringement and compensate to Fila RMB 7.91 million yuan for economic loss and RMB 410,000 yuan for reasonable expenditure. The three defendants were dissatisfied with the judgement and appealed. The court of second instance rejected the appeal and affirmed the original judgment.
Paragraph 1, Article 63 of the Trademark Law (2013 Amendment) stipulated the punitive compensation liability for trademark infringement for the first time in the IP field, reflecting the legislation orientation of increasing the intensity of punishment for illegal infringement of IP rights. As the Trademark Law did not clarify the connotation of “malice” and “serious circumstances”, opinions thereof were inconsistent in practice, resulting in the small amount of cases applying punitive compensation. This is a typical case applying the provision of punitive compensation, and its typical significance lies in that it analyzed in details “malice” and “serious circumstances” in the provision of punitive compensation in Article 63 of the Trademark Law, and explicitly pointed out that: manufacturers and sellers of goods accused of infringement, as operators in the same industry with goods on which the registered trademark was approved to be used, still used marks similar to the registered trademark on the same goods they manufactured and sold after the trademark they applied for registration had been rejected for constituting similar trademarks with a prior registered trademark of others, selling a large amount of such infringing goods and acquiring huge amount of benefits; such behavior belonged to circumstances of obvious subjective malice and severe circumstances of infringement, and the defendants shall compensate three times of the benefits acquired from infringement. In addition, the court of this case obtained evidence of the business condition of the defendants’ online shops from relevant e-commerce platforms according to law based on the application of the party involved, and, combining the financial data submitted by the defendants themselves, accurately calculated the benefits acquired by the infringers from infringement. This case increased the intensity of punishment for the malicious infringement of well-known brands, fully reflecting the orientation of applying the provision of punitive compensation to “significant increase the cost of breach of law”; it will provide reference to the trial of similar cases.
Case No.: (2013) High Civil First Instance No. 1236
(2015) Civil Third Final Instance No. 4
Plaintiff: Wuhan Huaqi Movies & TV Production Co., Ltd.
Defendant: Beijing Enlight Media Co., Ltd., Beijing Enlight Pictures Co., Ltd., Beijing Yingyitong Culture Communication Co., Ltd., Beijing Joy Leader Culture Communication Co., Ltd., Xu Zheng
Wuhan Huaqi Movies & TV Production Co., Ltd. (hereinafter referred to as “Huaqi”) owns copyrights for film, script and music of Lost on Journey as well as all intellectual property rights of Lost on Journey. After its release in 2010, Lost on Journey had been widely recognized in the industry. Thereafter, Huaqi started to prepare to make Lost on Journey II, and signed a script commission contract with Tian Yusheng, according to which it enjoyed all intellectual property rights for the script created. On September 4, 2010, Wang Zixuan, personnel of Huaqi, sent the outline of Lost on Journey II to Xu Zheng by e-mail. In May 2011, Lost on Journey II reported by Huaqi got approved and obtained the permit for movie production. In December 2012, the film Lost on Journey Again: Lost in Thailand invested by Beijing Enlight Media Co., Ltd. was released to the public; this film was produced by Beijing Enlight Pictures Co., Ltd., Beijing Yingyitong Culture Communication Co., Ltd., Beijing Joy Leader Culture Communication Co., Ltd. and Huang Bo Studio, while Xu Zheng worked as the director and screenwriter of the film. Huaqi believed that “Lost on Journey” is a special name belonging to well-known goods; by changing the name of film from “Lost in Thailand” and “Lost on Journey Again” into “Lost on Journey Again: Lost in Thailand”, the five defendants constituted the act of using names identical with or similar to the special name of “Lost on Journey”; their act may easily cause confusion or mistake of relevant public, hence constituted counterfeiting. During promotion of the film, Enlight Media and Xu Zheng changed the name of the film from “Lost in Thailand” and “Lost on Journey Again” into “Lost on Journey Again: Lost in Thailand”, and expressed and implied on various occasions that the film was the sequel, “upgrade version”, “all-round upgrade”, “extension of the brand” and “extension of the group” of Lost on Journey, hence constituted false advertising. Enlight Pictures and Xu Zheng implied and even expressed in the promotion of the film Lost on Journey Again: Lost in Thailand that the film was the “upgrade version” of Lost on Journey, their act derogated the reputation of Huaqi and Lost on Journey and constituted business discrediting. Business success of Huaqi’s film Lost on Journey came not only from the interesting new approach and the special name, but also from the uniqueness of content planning and the story line; Enlight Media and Xu Zheng, clearly knowing that Huaqi was preparing to make Lost on Journey II, counterfeited the film name of Huaqi and conducted false advertising and business discrediting, and selected the same actors and film elements to make Lost on Journey Again: Lost in Thailand; they directly appropriated achievements of Lost on Journey, unfairly occupied the market advantage and business opportunity of Huaqi, violated the stipulation of paragraph 2, Article 2 of the Anti-Unfair Competition Law on the principle of fairness and good faith and generally accepted commercial moral, and constituted the act of unfair competition of free riding. In conclusion, Huaqi believed that the five defendants constituted joint infringement, and requested the court to order the five defendants to cease infringement, eliminate effects and offer an apology to Huaqi, and pay a joint compensation of RMB 100 million for economic loss and reasonable expenditure of litigation. The court of first instance held that Lost on Journey had a certain awareness previously. The five defendants were not at fault by selecting the same actors to make a same type of film, nevertheless, they still changed the film name from Lost in Thailand to Lost on Journey Again: Lost in Thailand when clearly knowing that Huaqi prepared to make Lost on Journey II, showing obvious subjective intention of clinging to the existing reputation of Lost on Journey; at the same time, they repeatedly expressed in public opinions such as Lost on Journey Again: Lost in Thailand was the “upgrade version” of Lost on Journey, causing confusion and mistake of the relevant public to the two films. In conclusion, the five defendants misused the reputation that Huaqi’s film Lost on Journey had obtained previously, impaired the competing interests of Huaqi for the success of Lost on Journey, violated paragraph 1, Article 2 and Article 5.2 of the Anti-Unfair Competition Law, constituted unfair competition and shall bear corresponding civil liabilities. Accordingly, the court of first instance made a judgment to order the five defendants to cease the act of unfair competition, openly eliminate effects and compensate RMB 5 million yuan for economic loss. The five defendants were dissatisfied with the first-instance judgement and appealed to the Supreme People’s Court. The Supreme People’s Court made the second-instance judgment in 2018 to reject the appeal and affirm the original judgment.
This case involves Lost on Journey and Lost in Thailand, two popular films among the audience, and the trial process raised considerable concern. On the basis of clarifying a large number of relevant facts, the judgment of the case accurately applied the Anti-Unfair Competition Law and judicial interpretations thereof, strongly protected the film name that constituted the special name of well-known goods, and provided a useful example for the regulation of competitive behaviors of the industry. In particular, the court made it explicit that when determining whether a film belonged to well-known goods, the duration of continuous promotion and time for selling shall not be overemphasized, instead, the promotion before and after the release of the film, box office results obtained, evaluation of relevant public and its continuous influence shall be examined; awareness of the film enabled the film name to play a role in distinguishing the origin of goods, hence special names of well-known goods shall be protected by the Anti-Unfair Competition Law.
Case No.: (2017) Beijing 0105 Civil First Instance No. 70786
(2018) Beijing 73 Civil Final Instance No. 558
Plaintiff: Shenzhen Tencent Computer System Co., Ltd.
Defendant: Beijing World Xinghui Technology Co., Ltd.
The website of Tencent Video, operated by Shenzhen Tencent Computer System Co., Ltd. (hereinafter referred to as “Tencent”), provided online video viewing services to users; it purchased copyrights of film and television works and provided film and television works playing services by “watch for free + advertisement” and membership system. “TheWorld Browser”, developed and operated by Beijing World Xinghui Technology Co., Ltd. (hereinafter referred to as “World Xinghui”), had the function of “powerful blocking of page advertisements”; after checking such function in the setup, users may block advertisements at the beginning and during the pause of videos played on video websites. Tencent claimed that after using the advertisement blocking function of “TheWorld Browser” in the setup, users of the browser may effectively block advertisements at the beginning and during the pause of the films played on the website of Tencent Video. Such acts prohibited Tencent from gaining direct benefits from advertisements at the beginning and during the pause of the films played on the website; the advertisement-blocking act of Star World violated the principle of good faith and generally accepted commercial moral, and impaired the legitimate rights and interests of Tencent. Therefore, Tencent requested the court to order World Xinghui to compensate RMB 5 million yuan for economic loss and reasonable expenditure.
The court of the first instance held that the disputed browser with the function of filtering and blocking advertisements did not impose specific damages that were directly targeted without any evadable condition or option to the operation of Tencent. It was the practice and common business model of the browser industry to have the function of advertisement filter; under the option of “advertisement filter” of the browser, operators were equal in status, in needs as well as in opportunities of “interruption” to obtain benefits. Although uses of the advertisement blocking function of the browser by network users reduced the number of views of advertisements, yet such reduction did not constitute “actual damages” for legal remedy; it only impaired some of the competitor’s interests and affected the choice of some network users, and did not reach the specific degree to affect their survival, thus did not constitute a fundamental damage to the interests of Tencent. The disputed act of World Xinghui was insufficient to constitute the act of unfair competition. Accordingly, the court of first instance made a judgment to dismiss the claim of Tencent. Dissatisfied with the judgment, Tencent appealed. The court of second instance held that the operation of Tencent Video inevitably needed expenditure cost; Tencent was not obliged to provide videos to users free of charge where users did not pay any consideration, and its act of cost-recovering by advertisement belonged to legitimate business activities. Filter of video advertisement by the accused act made Tencent’s business activity of “watch for free + advertisement” cannot be presented according to wish, therefore, the accused act apparently belonged to acts of taking the initiative to directly interfere with and intervene in other’s operation. Although user’s needs shall be considered, yet reasonable users may change their current option if they were fully aware of the long-term consequences of such way that met current needs. Finally, for the long-term interests of consumers, the function of video advertisements filter may have an adverse effect. In conclusion, the accused act violated the generally accepted commercial moral, and the long-term existence of such act would obviously impair the social total welfare, therefore the accused act belonged to the activities prohibited by Article 2 of the Anti-Unfair Competition Law. Accordingly, the court of second instance revoked the first-instance judgment and ordered World Xinghui to compensate to Tencent RMB 1 million yuan for economic loss and RMB 890,000 yuan for counsel fees, economic analysis report fees and notarial fees.
The function of advertisement filter of internet browsers involved in this case was a representative act of unfair competition of Internet. Novelty of this case lies in that the court ordered the party involved to submit an economic analysis report against the accused act, which made the judgment under Article 2 of the Anti-Unfair Competition Law more objective. The judgment in the case was a response to the problem of competition order brought by the development of new technologies of the Internet, and had referential significance for the determination of violation of commercial moral by Internet competitive behavior and the influence on public interests therefrom.
Case No.: (2017) Beijing 0108 Civil First Instance No. 51249
Plaintiff: Beijing Kuaishou Technology Co. Ltd.
A user of Kuaishou APP uploaded and posted the video titled “IQ that Nobody Has” (hereinafter referred to as “the video at issue”) on Kuaishou APP in April 2015. Beijing Kuaishou Technology Co. Ltd. (hereinafter referred to as “Kuaishou”) believed that the video at issue was rich in artistic creativity and similar to the song-and-dance duet; it made humorous content with dialogues and action and had originality. According to agreements including Kuaishou Network Service Agreement and Intellectual Property Terms as well as authorization of the user, Kuaishou legally obtained the exclusive right of communication through information network of the video at issue around the world. In 2017, Guangzhou Huaduo Network Technology Co., Ltd. (hereinafter referred to as “Huaduo”) uploaded and posted the disputed short video on its “Budao Small Video” APP on the Android and iOS terminals. Kuaishou believed that the above act of Huaduo impaired its copyright of the video at issue, hence sued to the court, demanding Huaduo to compensate RMB 10,000 yuan for economic loss and corresponding reasonable expenditure. The court of first instance held that although the video at issue only lasted for 18 seconds, yet it told scenarios in the period, combined elements of dialogues and actions of two performers and showed the scene of the story through the lens shift, thus constituted a complete expression with originality. Combining the fact that the video at issue was posted on Kuaishou APP in the form of digital video, the video at issue was a work filmed on a certain medium, composed of a series of pictures with accompanying sounds and spread through the Internet, hence belonged to works created in a way similar to cinematography. Although the short duration may indeed limit the expressing space of authors, yet the limit of expressing space did not mean short videos had limited expression forms and belonged to products of the ideological category. On the contrary, one can also create an expression of content reflecting certain topic and with various elements of characters, scenes, dialogues and actions within over ten seconds. Huaduo, by releasing the video at issue on the “Budao Small Video” APP it operated without the permission of Kuaishou, impaired the right of communication through information network that Kuaishou enjoyed for the video at issue according to law, and shall bear the infringement liability of compensating for economic loss and others. Accordingly, the court of first instance made a judgment, ordering Huaduo to compensate RMB 10,000 yuan to Kuaishou for economic loss and corresponding reasonable expenditure. Neither party appealed after the judgment of first instance.
In recent years, short video has become one of the most popular Internet products due to its novel form, rich content and rapid spread, and cases involving relevant copyright disputes start to spring up. This case combined provisions of the Copyright Law on constitutive elements of works and types of works, fully demonstrated the controversial issues of whether short videos may constitute works and which type of works short videos may constitute, and finally found that the video at issue had originality and conformed to the constitutive elements of works created in a way similar to cinematography. This case was referred to by the media as the first case determining that short videos may constitute works, and its typical significance lied in that it determined that short videos may have copyrights and may constitute works created in a way similar to cinematography with the form of judgment for the first time. At a time when the short video industry is broadening its scale and behavior boundaries of relevant subjects urgently await clarification, this case responded promptly to the needs of the short video industry to strengthen intellectual property protection and clarify rules, and will play a guiding role that juridical protection should play for the development of the industry.
Case No.: (2016) Beijing 0108 Civil First Instance No. 15322
(2017) Beijing 73 Civil Final Instance No. 1404
Beijing Zhongke Shuijing Technology Co., Ltd. (hereinafter referred to as “Zhongke Shuijing”) claimed that it enjoyed copyright of fountain arrangements of music Beauty Overthrowing States and Cities and Streets Where Wind Lives of Qingdao International Horticultural Exposition (hereinafter referred to as “QIHE”) Music Fountain, and believed that the Lakeside Management Office of Hangzhou West Lake Scenic Area (hereinafter referred to as “West Lake Management Office”), which obtained videos and design drawings materials including the disputed works from Zhongke Shuijing in the name of investigation and handed such materials to Beijing Zhongke Hengye Zhongzi Technology Co., Ltd. (hereinafter referred to as “Zhongke Hengye”), and Zhongke Hengye, which plagiarized the disputed music fountain arrangements and constructed and played the fountain arrangement in the West Lake, infringed the copyright of Zhongke Shuijing. Therefore, Zhongke Shuijing sued to the court, requested the court to order Zhongke Hengye and West Lake Management Office to cease infringement, offer an apology, and compensate RMB 200,000 yuan for economic loss and RMB 80,000 yuan for reasonable expenditure. The court of first instance held that the object to be protected in music fountain works was the spouting show effect formed by the fountain in combination with certain music. Although the Copyright Law did not have the category of music fountain works or music fountain arrangement works, yet such works had originality themselves and shall be protected by the Copyright Law. Considering that Zhongke Hengye and West Lake Management Office had access to relevant fountain videos and materials of Zhongke Shuijing, and the spouting effect of relevant arrangements in the music fountain of West Lake constituted substantial similarity with the fountain music works for which Zhongke Shuijing enjoyed the copyright, therefore the two defendants constituted infringement of copyright. Accordingly, the court of first instance made a judgment to order Zhongke Hengye and West Lake Management Office to cease infringement, openly apologize, and compensate a total of RMB 90,000 yuan for economic loss and reasonable expenditure. The two defendants were dissatisfied with the judgment and appealed. The court of second instance held that the right carrier protected by the disputed request may be referred to as the presentation of spouting effect of the disputed music fountain; as the object at issue was an artistic and aesthetic expression showed by selection and arrangement of combination of water type, change of lighting and color and musical emotion, and met the requirement of “replicability”, thus conformed to the general constitutive elements of works. As the object at issue was a dynamic three-dimensional expression composed of various elements including lighting, color, music and water type, the expression of its beautiful spouting effect had aesthetic significance and conformed to the constitutive elements of fine art works. From the perspective of value interpretation, the interpretation of law shall adapt to the development of science and technology and keep pace with the time. Determination of the object at issue as belonging to the protection scope of fine art works was conducive to encouraging innovation in the expression form of beauty as well as creation of fountain-related works. On such basis, the court of second instance also confirmed the determination of the judgment of first instance on ownership of copyright of the works at issue, infringement of copyrights by Zhongke Hengye and West Lake Management Office, and the bearing of liabilities. Accordingly, the court of second instance rejected the appeal and affirmed the original judgment.
With the development of science and technology, forms of visual aesthetic expression present a diversified trend. Whether an original expression that is aesthetic, appreciable yet does not belong to any category of works explicitly provided by the law may constitute a work brought about discussions on the ordinal relation between the determination of works and the judgment of legal categories of works. The difficulty as well as typical significance of this case lied in the way to, under the premise of conforming to the logic of law, properly handle the relation between respecting existing provisions of law and protecting intellectual innovation achievements. The second-instance judgment of this case solved the above problem by properly interpreting and applying Article 3 of the Copyright Law and Article 2 of the Regulation for the Implementation of the Copyright Law. On one hand, the presentation of the spouting effect of the music fountain at issue was an artistic and aesthetic expression well-designed and displayed by designers with science and technology factors including sound, lighting and electricity, thus conformed to the general constitutive elements of works; on the other hand, the second-instance judgment interpreted relevant provisions by ways of literary content interpretation and value interpretation, and held that the presentation of the spouting effect of the disputed music fountain was a dynamic three-dimensional expression composed of various elements including lighting, color, music and water type, and such beautiful spouting effect obviously had aesthetic significance and conformed to the constitutive elements of fine art works, hence belonged to the protection scope of fine art works. The judgment of second instance not only reflected the judge’s respect for the legislator’s unambiguous expression of meaning in the provisions of law, but also fully demonstrated the judge’s professional skill to scientifically interpret the law and convince people by reasoning, therefore had been widely praised by the industry.
Case No.: (2018) Beijing 0108 Criminal First Instance No. 1932
Public Prosecution Institution: Beijing Haidian People's Procuratorate
Defendant Unit: Jushi Online (Beijing) Technology Co., Ltd.
Defendant: Huang Ming
Since 2016, Huang Ming, along with others, operated the game “Jushi Hainan Mahjong”, which had highly identical source code with that of “Xianlai Qiongya Hainan Mahjong”, copyright of which being enjoyed by Beijing Xianlai Huyu Network Technology Co., Ltd (hereinafter referred to as “Xianlai Huyu”), without the permission of Xianlai Huyu, and obtained illegal profits in the way of selling virtual currencies for start of the game by agency personnel; the illegal profits totaled RMB 162,912.9 yuan. Huang Ming was arrested on December 16, 2017. The public prosecution institution initiated a public prosecution to the court of first instance on September 21, 2018, believing that the act of Jushi Online (Beijing) Technology Co., Ltd. (hereinafter referred to as “Jushi Online”) and Huang Ming violated Articles 217 and 31 of the Criminal Law and constituted the crime of infringing copyright, and requested the court to impose punishment according to the law. Li Yong, the representative of action of Jushi Online, did not raise any substantive objection to the facts and charges of the indictment. Huang Ming did not raise any objection to the facts and charges of the indictment. The court of first instance held that Jushi Online and Huang Ming, its directly responsible manager, copied and distributed the computer software that others enjoyed copyright without the permission of the copyright owner for the purpose of seeking profits, the circumstance was severe and their act constituted the crime of infringing copyright, therefore shall be punished. The criminal facts charged by the public prosecution institution were clear, the evidence was credible and sufficient, and the crime charged by the public prosecution institution was proved. Considering that Huang Ming truthfully confessed to his basic crimes after appearing before the court, Jushi Online and Huang Ming showed repentance, and Jushi Online voluntarily withdrawn its illegal gains, the defendants should be given a lighter punishment according to the law. The court made a judgment that Jushi Online committed the crime of infringing copyright and should be imposed on a fine of RMB 200,000 yuan; Huang Ming committed the crime of infringing copyright and should be sentenced to a fixed-term imprisonment of one year together with a fine of RMB 100,000 yuan. After the first-instance judgment was pronounced, neither Jushi Online nor Huang Ming appealed.
With the rapid development of the Internet economy, intellectual property crimes have gradually spread from real life to cyberspace, especially to the field of online games on mobile terminals. In recent years, among cases involving crimes of infringing computer software copyrights, the number of cases in which online game works were copied and “knock-off” mobile online games were operated for illegal gains has increased significantly. Most data of such piracy and infringement were stored in servers or the cloud, and separation of the way of obtaining illegal gains from accounts of the operating companies of pirated websites was applied to evade detection. Xianlai Huyu, victim in this case, is a well-known chess and card mobile game company combining research and development and operation, the game involved is also a well-known mobile game with a wide range of players, and piracy of the suspect produced a bad impact on the society. In addition, after the incident, the suspect attempted to evade punishment or diminish responsibility by tampering with and destroying data and accounts, which led to damages to the electronic amount used for determining the main income from operating game currencies by the company and once brought great difficulties to the judicial work. This case mainly used the income of third party agency companies from selling “star diamond gifts” and other virtual currencies for start of the game for the defendant company to determine the amount of crime of the defendant unit, and fully utilized data of new-type e-commerce payment platforms and new features of marketing patterns of mobile games to clarify and judge the electronic evidence of such new type of crime. It established the rule of verifying criminal circumstances by data of third-party platforms, and had a modeling significance for combating such new types of crimes that intentionally evade inspection.