On November 30, 2023, Taiwan’s Intellectual Property and Commercial Court (“Court”) found apparel company Migo-mobo international LTD (”Migo”) infringing the copyrighted “I am not a fat tiger” artistic work (“Fat Tiger”), and liable for damages up to NT$ 400,000. (111-Ming-Chu-Zu No. 69)
The plaintiff is the exclusive licensee, Wyrd Media Co. Limited (“Wyrd”). According to Wyrd, in August of 2021, it came to notice that Migo, via its website “MO-BO” (https://www.mo-bo.com.tw/), was providing stickers and clothing bearing the image of “Bai-Way little Tiger” (hereafter “Little Tiger”), which was allegedly provided by another co-defendant, Mr. Wei-Ping Hsu. Upon comparison, Fat Tiger and Little Tiger are highly similar, and Wyrd decided to file a copyright infringement lawsuit against Migo, its representative Mr. Shin-Hong Liao, and Mr. Wei-Ping Hsu.
The defendants, among the others, contended the eligibility of Fat Tiger for copyright protection, questioned the credibility of the Fat Tiger’s copyright registration, and challenged the veracity of exclusive license alleged by Wyrd. Moreover, the defendants averred that Little Tiger was independently created by a contracted third party, and there is no substantial similarity between Fat Tiger and Little Tiger.
The Court sided with Wyrd on issues of eligibility for copyright protection, the Fat Tiger’s copyright registration, and the veracity of exclusive license. What is worth further noticing is that the Court considered Little Tiger a derivative work based on the Fat Tiger:
- The Court holds that when determining if there is illegal copying between artistic works, one should, from the perspective of ordinary and general public, focus on the “total concept and feel”. Additionally, when determining substantial similarity between the copyrighted work and the later work, if the later work contains its author’s own originality, such later work should be a derivative work; otherwise, such later work should be a “reproduction”.
- By looking at the tigers’ colors, the stripes on their respective forehead, the position of the eyes, the contour of the eyebrows, the posture, and the style of stripes on their cheeks, chests, and bodies, the Court finds that Little Tiger resembles Fat Tiger, with differences in the sizes of their mouths and noses, and the style of their facial expressions, where the Fat Tiger seems more amiable, while the Little Tiger seems more mature. Many features presented in the Little Tiger could be found in the Fat Tiger, so the Court determines that upon seeing Little Tiger, the general public could immediately think of the tiger presented in Fat Tiger. As such, the Little Tiger is a derivative work.
- Although the defendants argue that the Little Tiger was independently created by a contracted third party, the sketches submitted by the defendants were flaw. The sketches prepared by the defendants show no dates of creation and modification, the names of author, and the stages of drawings that demonstrate the progress of designing and creating.
- The defendants also argue that they were not aware of the existence of and had no access to the Fat Tiger. However, based on the news reports and sales records, the Court finds the Fat Tiger quite popular, and was published and publicly accessible on Instagram back in May of 2020. The defendants have reasonable chance to access the content of Fat Tiger.
- In view of the above, the Court holds the defendants jointly liable for infringing the copyrighted Fat Tiger by creating derivative work, and granted plaintiff’s requests for damages and injunctive relief.
When assessing substantial similarity, the current Copyright Act does not provide clear guidance on the boundary between reproduction and derivative work. In this case, the Court’s reasoning provide some insight in this regard. More specifically, the similarity of a derivative work must be enough for others to, upon seeing such work, think of the copyrighted work. Meanwhile, in a case where defendant argues the work is independently created but the degree of substantial similarity involved is high, the supporting documents must contain sufficient information like the stages of creation, trails of modifications, and dates of authorship, for such evidence to be found credible by the Court.