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China IP Magaziine

Copyright and Unfair Competition Dispute of Disney vs. Blue Flame.

发布时间:2018-12-06
Case 11
Copyright and Unfair Competition Dispute of Disney vs. Blue Flame.    
Trial Docket: (2015) PuMinSan(Zhi)ChuZi
 No. 1896 Appeal Docket: (2017) Hu73MinZhong No. 54
 
[Headnotes] The substantial similarity determination in copyright infringement cases should take into account both the similarity between two works, and also whether the similarity is the original expression. When two artistic works have substantially similar choices of specific expressions to the extent of an ordinary observer that the junior work would not have independently accomplished without the basis of a senior work, then substantial similarity can be found.
 
A distinctive and reputable well known product name after long use may become a proprietary name of the well known product. Finding of likelihood of confusion should be made in connection with the classification of goods or services, as well as consuming customs of relevant public.
 
In individual cases, if separate causes of a c t ion accrue for copyright infringement and for unfair competition with separate legal consequences, then separate remedies may be available.
 
[Synopsis] Appellant (Plaintiff below): The Walt Disney Company (Disney), Pixar [Animation Studios] (Pixar)
Appellant (Defendants below): LanHuoYan Animation Co., Ltd. of Xiamen (LanHuoYan); G-POINT Film Culture Media Co., Ltd. of Beijing (G-Point); PPTV Media Tech Co., Ltd.of Shanghai (PPTV)
 
Plaintiffs Disney and Pixar are the copyright owners of the movie series “Cars”( 汽车总动员)1. “Lightning McQueen” and “Francesco Bernoulli” are the animated characters in the movie. These movies have generated considerable box office return, and are widely promoted and acclaimed with awards and nominations. A domestic movie 汽车人总动员(Cars Men) uses animation figures similar to McQueen and Francesco Bernoulli, and in its movie poster, uses a wheel to overshadow the Chinese character “人”(Men). Disney and Pixar sued the three defendants, the producer LanHuoYan, the distributor G-Point and the Internet broadcaster PPTV.
 
The People’s Court of Pudong, Shanghai is of the opinion at trial that Lightning McQueen and Francesco Bernoulli cartoon figures, by their personification of the eyes and lips, and specified color combination, constitute original expression, while the “K1” and “K2” cartoon figures in 汽车人总动员 (Cars Men) and in the movie posters adopted the original expression of Lightning McQueen and Francesco Bernoulli, constituting substantial similarity, thereby infringing the copyright of Disney and Pixar. The movie name “Cars (in Chinese Equivalents)” upon extensive use and promotion by its proprietors, have become the unique name of well known products. “Cars Men” in its movie posters uses a tire to overshadow the character “Men” so that the one character difference would be likely to mislead the public to mistake, constituting thereby unfair competition for unauthorized use of special name of a well known product. The court of first instance decrees injunction against the three defendants; payment of damages by LanHuoYan of one million yuan, of which G-Point jointly liable for 800,000 Yuan, and 350,000 Yuan for reasonable expresses for LanHuoYan and G-Point.
 
After the first instance decision, LanHuoYan and G-Point appeal to Intellectual Property Court of Shanghai, which dismisses and affirms.
 
[Judge’s Comment]
I. Determination of Substantial Similarity in Copyright Infringement In this case, a comparison of “K1” and “K2” cartoon figures in “Cars Men” and its movie posters with “Lightning McQueen” and “Francesco Bernoulli” animation shows many similar point, and determination of substantial similarity hinges on whether the similar points are substantial. To determine the “substantial” element, it has to be taken into account of both quantitative as well as qualitative aspects. Quantitative means certain number of points; qualitative means the original expression protected by copyright.
 
II. How to Determine Act of Unfair Competition of Using Proprietary Name of Well Known Product without Permission
 
There are three factors: (1) the name is uniquely proprietary for a well known product; (2) the accused name is similar to or identical with the proprietary name of a well known product; and (3) there is confusion or mistake among relevant public.
 
In the movie promotion and the posters, LanHuoYan and G-Point harbor intent to cause confusion, and actually cause confusion as a result. Such is the conduction of unfair competition for using proprietary name of a well known product without permission.
 
III. Accounting of the Amount o f Damages once Copyright Infringement and Unfair Competition Are Established.
 
Judged from the acts themselves, copyright infringement is separate from unfair competition; and judged from the consequences, the former produces the legal results of reproduction, distribution, display and network dissemination of information of another’s work, whereas the latter produces the legal results of use of proprietary name of a well known product without permission leading to confusion among the relevant public, as well as extra gains for LanHuoYan and G-Point beside copyright infringement. For this reason the copyright infringement and unfair competition are separate acts independent of each other, producing different legal results, with independent damages.
 
The proprietors in this case, the reputable movie producers – The Walt Disney Company and Pixar – assert the animation figures in the somewhat well known movie series Cars. This decision tries to explore the dichotomy of ideas versus expression in the copyright protection of animation figures, as well as determination of substantive similarity in copyright infringement, deriving therefrom: the specific expression of personification falls within the meaning of expression, and therefore copyrightable. If two animation figures are substantially similar in their specific choices of expression such that when viewed from the perspective of an ordinary observer, it cannot be mistaken that the latter is independently created without the basis of the former, then substantial similarity can be established. This case also elaborates on the standard of determination of act of unfair competition for using without permission proprietary names of well known product, in conjunction with likelihood of confusion by reference to classification of goods or services as well as consuming customs of relevant sectors of the public. Meanwhile, under the circumstance of complication and multiplicity in infringement cases, this decision touches upon accounting of amount of damages for multiple infringing acts, concluding that separate acts of copyright infringement and unfair competition may be independently treated and assessed with different damages.
 
(Translated by Zheng Xiaojun, Yuan Renhui)