Under the Copyright Act, works are generally deemed protected when they embody both the expression of thoughts or emotions and a degree of originality. The threshold for originality under the Copyright Act is notably lower than that for inventions, utility models, or designs under the Patent Act, which further requires that a standard of novelty be met. Specifically, as established by the Supreme Court's Civil Judgment No. 97-Tai-Shang-Tzu-1214, a work protected under the Copyright Act does not need to be completely original. Rather, the Intellectual Property and Commercial Court's Civil Judgment No. 109-Min-Zhu-Su-Tzu-102 clarifies that Copyright Act protection applies to a work if, according to social norms, the work can be distinguished from pre-existing works to a degree that reflects the author's personality or uniqueness.

 

In a significant second-instance ruling on November 6, 2024, the Intellectual Property and Commercial Court (the "IP Court") addressed the issue of whether graphic works incorporating technical concepts are considered copyright-protected in Civil Judgment No. 113-Ming-Chuan-Shang-Tzu-2 (the "Second-Instance Judgment"). The Second-Instance Judgment overturned the IP Court's first-instance judgment of Civil Judgment No. 110-Ming-Chuan-Su-Tzu-52 (the "First-Instance Judgment"). The IP Court concluded that creations characterized by technical expressions that convey thoughts or emotions and reflect the creator's design choices in depicting a desired view adequately express the creator's personality or uniqueness. Consequently, such works can be distinguished from others, thereby possessing the requisite originality to qualify as graphic works protected under the Copyright Act.

 

In the IP Court's November 6, 2024 case, the plaintiff alleged that the defendant's production and sale of certain models of filter products (the "Disputed Products") infringe upon the plaintiff's relevant invention, utility model, and design patent rights, as well as the graphic copyright associated with the front view depicted in the design patent specification (the "Disputed Front View," illustrated in Figure 1) and the artistic copyright related to the six-sided metal pattern affixed to the filter body (the "Disputed Three-Dimensional Object," as shown in Figure 2). In the First-Instance Judgment, the IP Court ruled in favor of the defendant, determining that the Disputed Products did not fall within the scope of the plaintiff's patents and that both the Disputed Front View and the Disputed Three-Dimensional Object lacked the requisite originality for copyright protection. The plaintiff subsequently filed an appeal against this decision to the second-instance IP Court. While the second-instance IP Court upheld the lower court's conclusion regarding non-infringement of the patents, the Second-Instance Judgment diverged from the First-Instance Judgment by recognizing that the Disputed Front View and the Disputed Three-Dimensional Object were entitled to copyright protection.

 

Figure 1: Disputed Front View

 

 

Figure 2: Disputed Three-Dimensional Object

   

 

The second-instance court determined that the originality of the Disputed Front View lies in the necessity of transforming the physical characteristics of the filter into a front view through perspective drawing techniques. Such process involves employing shape, lines, and spatial arrangement to accurately depict dimensions, specifications, and structural elements, thereby sufficiently conveying the creator's personality and uniqueness. As a result, the Disputed Front View qualifies as a graphic work protected under the Copyright Act. Regarding the originality of the Disputed Three-Dimensional Object, such object is characterized by its capacity to showcase various features of the filter, including metal layers, gaskets, perforations, and resonance holes, along with their interrelationships. This is achieved through artistic techniques such as line spacing, shape variations, and combinations, which demonstrate significant artistic skill and effectively express the creator's individuality. Consequently, the Disputed Three-Dimensional Object also qualifies as an artistic work protected under the Copyright Act. However, it is important to note that the scope of copyright protection of both the Disputed Front View and the Disputed Three-Dimensional Object is limited to elements that extend beyond the commonly used design features of the filter. Upon further examination of the issue concerning copyright infringement, the second-instance court determined that the Disputed Products exhibit five distinct differences in spatial distribution and arrangement when compared to the Disputed Front View, and six differences in relation to the Disputed Three-Dimensional Object. To the average reasonable observer, the overall composition, appearance, primary features, and configuration of the Disputed Products do not exhibit substantial similarity to either the Disputed Front View or the Disputed Three-Dimensional Object. Consequently, the second-instance IP Court concluded that there is no copyright infringement.

 

In its Second-Instance Judgment, the IP Court reaffirmed the necessity of originality for works protected under the Copyright Act. The IP Court clarified that a minimal degree of creativity, sufficient to demonstrate the creator's personal intellectual effort, is adequate to meet the originality requirement for copyright protection. This criterion applies to both technical graphics and artistic creations. In the present case, the IP Court conducted a comprehensive analysis of the design features of the Disputed Front View and the Disputed Three-Dimensional Object, identifying elements that extend beyond commonly used design components of the filter. The IP Court concluded that these distinctive features exhibit originality and, therefore, qualify for protection under the Copyright Act. It remains to be seen whether future courts will impose stricter scrutiny regarding the extent to which technical graphic or artistic works must incorporate unique elements beyond conventional features to be recognized as sufficiently expressing the creator's personality or uniqueness and thereby satisfying the originality requirement.