Taiwan’s IPC Court Sheds More Light on Substantial Similarity Analysis for Artistic Work Featuring Natural Form

In its decision rendered on April 25, 2023 (111-Ming-Zhu-Su No. 50), Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) found that the plaintiff’s copyrighted drawing “sakura” was not infringed by the defendant’s product “sakura cup” by holding that the defendant’s product was not similar with the plaintiff’s asserted copyright based on the total feel and concept.

The plaintiff states that it is the author of the asserted artistic drawing “sakura” (see below, on the left), and that the flower featured on defendant’s product “sakura cup” (see below, on the right) is substantially similar with the copyrighted work. The defendant argues that plaintiff’s drawing demonstrates no originality because sakura flower and its petal are commonly seen in the nature, and plaintiff’s art work is no different from other pre-existing art works featuring similar flower.

The IPC Court finds for plaintiff on the issue of copyrightability, reasoning that the requirement of originality for copyright is different from novelty for patent, and as long as the author demonstrates a distinguishable difference in the work that is sufficient to show the author’s personality and individual uniqueness, such work would be eligible for copyright protection. Here, based on the entirety of the drawing, the IPC Court considers that plaintiff’s “sakura” demonstrates certain degree of creativity, such as the choice of color of the flower, the number of falling flowers, the size of the petal, the position and composition of these falling sakura flowers.

However, on the issue of “substantial similarity”, the IPC Court does not side with the plaintiff, holding that when conducting substantial analysis test on artistic work featuring natural form, one should be cautious as the forms of expression may be limited. Take “sakura” as example, the expression for the shape of the flower, the contour of sakura’s petal, the number of sakura’s petal, etc., may be restricted. As such, simply because the defendant’s product displays similar visual impression of falling sakura flowers does not necessarily mean the defendant’s product is substantially similar with plaintiff’s copyrighted art work. The IPC Court reasons that more emphasis should be placed on comparing the overall layout, configuration, and combination of these flowers.  

Based on the aforesaid standard, the IPC Court notes that while both plaintiff’s drawing and defendant’s product present falling sakura flowers and petals, the petals presented in defendant’s product have different color design, and the pistil of defendant’s flower is clearly visible. Further, the shape of the petal presented in defendant’s product is circular, while that of the petal presented in plaintiff’s drawing is slender and thin. Furthermore, the defendant’s arrangements of the falling flowers, including the overall layout, position, and space of the flowers and petals are also different from those demonstrated in plaintiff’s copyrighted work. Thus, in terms of total feel and concept, the IPC Court finds defendant’s product dissimilar with plaintiff’s asserted copyrighted work.

This case reminds us that when enforcing copyright of artistic work based on natural form, the scope of exclusivity would be thin, and the IPC Court will focus more on the details of the expression when comparing the total concept and feel of the copyrighted work against the accused work. A more thorough and in-depth infringement analysis before launching the lawsuit is encouraged and may be necessary.