tribulations-of-a-rubber-duck
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1 May 2014CopyrightJulia Liu and T.K. Lin

Taiwan's IP laws in focus: the tribulations of a rubber duck

"Duck Explodes”. It’s probably not the headline expected this past New Year’s Eve by Dutch artist Florentijn Hofman but this was indeed at the top of a series of domestic news reports when Hofman’s 18-metre high yellow rubber duck, on display in a northern Taiwan port, exploded just hours before it was expected to attract a large crowd to count down the new year.

From September 2013 to January 2014, it was estimated that nine million tourists in three Taiwanese cities, Kaohsiung, Taoyuan and Keelung, viewed the installation, known in Taiwan as Baby Yellow Duck (黃色小鴨). That’s around 40 percent of the population of Taiwan and, given this frenzied interest, it was not surprising when domestic news stories broke that Hofman was dissatisfied with the Keelung display in particular, amid accusations of copyright infringement, and refused to attend any related activities, that attention would focus on Taiwan’s IP rights protection.

Design patents

The Taiwan Patent Act (2013) defines the design of an article as its visual characteristics such as its shape, pattern, colour, or any combination thereof (ornamental), created as a whole or in part. As in most other jurisdictions, to qualify for a design patent, an article must meet ornamental standards, be new, be novel and be repeatable.

While Hofman’s rubber duck may meet Taiwan’s design patent criteria for being ornamental and repeatable, it would not pass the test of being new and novel as the toy version of the rubber duck is said to have been around since the 1800s and Hofman has been reported as saying that his inspiration for his enlarged version was Hong Kong-based toy maker Tolo Toys Ltd’s smaller version.

In 2013, the Taiwan Patent Act effectively broadened its design patent protection law to include “partial designs” and “designs for a set of articles”. Accordingly, one option for prospective design patent applicants such as Hofman may be to claim one characterised portion of a design, such as the head of the rubber duck. Additionally, since two or more articles belonging to the same class (Locarno Classification) can be filed for one design, an applicant may claim a pair of rubber ducks consisting of a male and female duck, which are sold or used together, as one design.

Design patents in Taiwan are subjected to an examination by the Taiwan Intellectual Property Office (TIPO), which includes a prior-art search. They have a term of 12 years from the date they are filed.

Copyright

While the probability of a design patent in Taiwan for Hofman’s rubber duck seems low, the chances of copyright protection are greater. In December 2013, following news of Hofman’s dissatisfaction with the Keelung showing, it was reported that Mei-Hua Wang, director general of TIPO, said it is highly likely that, due to its creativeness, Hofman’s rubber duck should have copyright protection in Taiwan. This was a stamp of approval by the Directorate General, with the condition that it be verified in court if anyone should have any problems. Before 1992 registration was required for copyright protection—only after that date were copyright disputes decided by the courts.

The Taiwan Copyright Act (2014) protects original works of authorship, such as writing, music and works of art, that have been tangibly expressed. The subject matter of copyright may include literary, musical, dramatic, artistic, audiovisual, architectural and computer program works. Copyright protection is available to published and unpublished works showing originality and creativity.

Hofman’s rubber duck is a public work of art that does not discriminate against people or have political connotations; no doubt its creator hopes viewers will appreciate it for what it is: art. Accordingly, an argument may be made that the rubber duck is an original and creative expression of Hofman’s and deserves copyright protection under Taiwan’s Copyright Act (2014). It is interesting to note, however, that an opposite view was previously reported to have been taken by the State Intellectual Property Office of the People’s Republic of China, where officials are of the opinion that the rubber duck is simply an enlargement of a well-known smaller version, revealing the subjective nature of some copyright decisions.

Trademarks

According to the Taiwan Trademark Act (2011), a trademark is a word, design, symbol, three-dimensional shape, hologram, or any combination thereof that identifies and distinguishes the source of goods of one party from those of others (distinctiveness).

"one option for prospective design patent applicants such as Hofman may be to claim one characterised portion of a design, such as the head of the rubber duck."

One notable example of distinctiveness is the case of Jason Wu (吳季剛), a Taiwanese-Canadian fashion designer based in New York City, concerning his application for a trademark for ‘Miss Wu’ with the TIPO. Originally, the application was rejected for lack of distinctiveness. However, after US First Lady Michelle Obama wore dresses designed by Jason Wu in 2008, 2009 and 2013 and his media notoriety grew, a further trademark application for ‘Miss Wu’ in Taiwan was granted.

For Hofman, one could argue that his rubber duck conforms to the test of being distinct and, like Jason Wu, should be granted a trademark in Taiwan based on similar arguments.

Closing thoughts

In Taiwan, under the Taiwan Copyright Act and the Taiwan Trademark Act, infringement may be considered as a criminal activity or a civil liability. However, under the Taiwan Patent Act, infringement can only be regarded as a civil liability and, currently, the concept of punitive damages has yet to be included. These issues should be considered before applicants decide on whether to apply for a design patent, copyright or trademark, or a combination of them, in Taiwan.

Whether copyright was infringed during the rubber duck’s tour of Taiwan is a topic of heated debate. However, it is hoped that whenever Taiwan’s IP rights protection is placed under the international microscope, Taiwan will be seen as a country that aggressively protects the IP rights of rights holders, similar to those found in other countries.

Julia Liu is the executive senior legal counsel of Top Team International Patent & Trademark Office. She can be contacted at: law@top-team.com.tw

T.K. Lin is the associate tech manager of Top Team International Patent & Trademark Office. He can be contacted at: mailroom@top-team.com.tw

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