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Creators need evidence if they are to prove infringement—but this doesn't seem to put off some claimants, explain Haoyu Feng and Jia Li of Chofn in a guide to China copyright enforcement.
On August 15, 2023, a photographer (@Jeff’s star journey/@Jeff的星空之旅) posted a tweet on Sina Weibo, a Chinese social media platform, stating that he received VCG’s claim for copyright infringement and damages of CNY86,500 ($11,859).
But the said “infringing photos” turned out to be this photographer’s own work. Unsurprisingly, VCG received a tide of criticism and negative comments.
Actually, a similar farce once happened in 2019: the beginning was VCG’s release of the first picture in human history of a black hole, taken by Event Horizon Telescope Collaboration, as VCG’s copyrighted work on April 11, 2019, shortly after Event Horizon Telescope Collaboration’s release of the same photo.
Then it was found that VCG even labelled China’s national flag and national emblem as its copyrighted work and marked its charge for commercial use of these images. As a result, VCG was fined CNY300,000 ($41,152) by the government.
Assuming that various images have become indispensable elements in business materials, we might need to deal with image providers like Getty Images some day. We would like to review two cases Chofn handled to introduce copyright protection in China.
Case 1: Company A was approached by VCG for copyright issue. VCG stated that 108 pictures posted on the company’s Weibo & WeChat account infringe VGC’s copyright. The company, despite immediately deleting the pictures, was required to pay VCG CNY108,000 (USD14,815) in total, namely CNY1,000 ($137) per picture.
VCG also sent a Notice issued by Jiangsu Province Copyright Dispute Mediation Center, indicating that VCG had applied for mediation and the company was required to respond within 45 days.
In this case, the company entrusted an agency for its digital platform development and daily management, including Weibo & WeChat. The agency confirmed that the involved pictures were obtained from public sources, free and legitimate channels, without any watermark indicating the copyright owner or any claim for paid use.
We noted that VCG failed to provide any substantial evidence in proof of their copyright upon the pictures, such as copyright registration certificates, authorisation documents issued by the author or copyright owner, etc.
It just provided the links on its website showing these pictures labelled with their watermark. However, the evidence also failed to indicate the date information concerning when these pictures were created and/or when they were uploaded to VCG’s website.
It is possible that they were uploaded later than the company’s use. We pointed out these defects during negotiation and then received no further response from VCG. We assume that they abandoned this case and turned to other “infringers”.
Case 2: A famous European skier (“the skier”) noticed her photo being used in a Chinese bank’s advertisements located in many places in and outside China. The skier was concerned mostly because one of her major personal sponsors was another bank.
Then after the notarisation of evidence, we sent a cease and desist letter to the infringing Chinese bank, claiming that they had not only infringed the skier’s right of portrait, but also infringed the right of her sponsor due to her contractual obligations with the sponsors.
The bank replied that the concerned advertisements were produced by an advertisement agency who purchased the photo from Getty Images. Getty Images claimed that it had obtained the skier’s authorisation to use all of her photos, but it seemed neither common nor rational to authorise a party to use all of her photos.
Shortly afterwards, the bank forwarded a copy of Model Release and Property Release respectively signed by the skier and the photographer, to prove that Getty Images had obtained the rights to grant a commercial license of the photo.
Such materials can basically prove that the bank’s use of the skier’s photo does not infringe her rights and the bank had paid due attention. The skier decided not to pursue this case any further.
We can see that in Case 1, Company A successfully fought back against VCG, probably because VCG failed to provide qualified evidence, or it just deemed that it was too troublesome and not cost-efficient to spend the resources and time.
In Case 2, Getty Images provided seemingly complete evidence to defend, and the skier chose to suspend the case probably also out of cost consideration.
In another Typical IP Lawsuit Case of 2021 relating to copyright infringement, the plaintiff was Getty Images’ representative in China. The defendant, a Chinese company, failed in the first and second instance lawsuits, and succeeded until the re-trial where the Supreme People’s Court verified that the photographer contributed the concerned photos to Getty Images for a business licence, but still reserved the copyright.
Therefore, the plaintiff should not be deemed as a qualified copyright holder of the said photos.
Tips on copyright enforcement
As general advice for copyright enforcement in China, we would like to summarise a few important tips as follows:
- From the perspective of an author or a copyright owner, it is always essential to collect and maintain materials concerning the creation and publication of the works. Traditional notarisation and/or electronic preservation channels can help enhance authenticity and creditability.
- From the perspective of a user of certain copyrighted works, it is always advisable to obtain the works from reliable sources. When a third party is entrusted with business programmes, the entrusted party’s responsibility should be clearly stipulated, including but not limited to avoiding infringing others’ IP rights as well as undertaking the liability for damage once infringement happens.
- In addition to preventing others’ use, valid copyright may be used to challenge conflicting trademark rights and registered design patent rights in China, without limitation, across all classes of goods or services. Registered copyrights are also available for Customs IP recordal, which could enable China customs to take ex-officio actions against both imported and exported infringing goods.
Haoyu Feng is a trademark lawyer and partner of Chofn IP. She focuses on trademark prosecution, IP enforcement, and corporate IP strategy consulting. She can be contacted at: email@example.com
Jia Li is a trademark attorney and partner of Chofn IP. She focuses on the prosecution and application of trademarks, opposition, invalidation, corporate IP strategy and portfolio management, customs border enforcement and copyright registration. She can be contacted at: firstname.lastname@example.org
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