In Taiwan, there is no definitive, established law regarding whether the appearance of a product is eligible for copyright protection as artwork, or whether a remedy for such copying is available under Fair Trade Act. Recently, the Intellectual Property and Commercial Court (“IPC Court”) revisited these issues and provided valuable insight in its judgment 114-Ming-Chu-Su-Zi No. 89.
In this case, the Plaintiff, Ex-Greenroom Ideas Cooperation, alleged that its backpack products (“Plaintiff’s Product”, see below) were designed based on aesthetic concepts. By blending elements such as ropes, adjustable buckles, pocket structures, and zip ties, Plaintiff’s Product forms the impression of camping and hiking, making it an original artwork eligible for copyright protection. The Defendant, Waypoint Sports Co. Ltd., without consent of the copyright owner, distributed a similar backpack (“The Accused Product”, see below) as a gift to the participants of “CHALLENGE TAIWAN” Triathlon event. Upon review, the Plaintiff claimed the Accused Product infringed its copyright and are likely to make the consumer confused for the reason that both products targeted athletes within the same market. Consequently, the Plaintiff sought damages under the Copyright Act, Fair Trade Act, and Civil Code.
The Defendant denied any illegal copying, arguing that the Plaintiff’s Product was a mass-produced industrial item. The size, interior space, straps, and pocket design are quite common in the consumer market and lack originality. Additionally, the Defendant contended that the Accused Product was gifted, not sold, so the Defendant did not commercially benefit. The two products were not competing in the same market, and the Defendant’s actions did not constitute unfair competition.
The IPC Court ruled in favor of the Defendant, rejecting all of Plaintiff’s claims:
- Copyrightable artwork must demonstrate artistic skills or express individual thoughts or emotions:
To be protectable under Copyright Act, an artwork must feature aesthetic traits expressing distinct emotions or concepts. A work is not copyrightable if it does not demonstrate the author’s artistic skills or convey individual thoughts through that skill. The shape of utilitarian products, without demonstrated artistic craftsmanship, should not be copyrightable. If the shape of the product is necessary for achieving its function, such shape should be an applied design to such product, not for demonstrating individual thoughts or feel. Product shape or design based on utilitarian or functional purposes are ineligible for copyright protection.
- The appearance of Plaintiff’s Product serves a utilitarian function and lacks individual thought or feeling:
The IPC Court observed that the outer appearance of the Plaintiff’s Product features a rectangular shape, a military green upper front cover, an invisible interior zip, a central body pocket, two circular buckles with elastic strings at the bottom, and a top triangular fixing strap with clasps on its left and right ends to couple with the shoulder and adjustable chest straps. The primary purpose of the above design is functional, namely, to facilitate mobility and transport, not for demonstrating artistic skills or personal expression. Besides, rectangular bags with shoulder and adjustable chest straps are quite common. The Plaintiff’s Product lacks originality required for copyright protection.
- The Plaintiff failed to prove the Plaintiff’s Product has been well-known:
The Plaintiff asserted that the Accused Product is a knock-off of the Plaintiff’s Product and may harm the trade order. However, the court noted that a rectangular bag with shoulder and adjustable chest straps is a conventional design that is not created by the Plaintiff. It is clearly doubtful if the Plaintiff’s Product constituted a well-known trade dress, and the court found the Plaintiff failed to prove its appearance has become well-known among the relevant consumers. Further, on the front of the Accused Product, there is label prominently displaying the official logo of the “CHALLENGE TAIWAN” event. It is thus groundless for the Plaintiff to accuse the Defendant of causing confusion, free-riding, or other unfair competition.
The above decision once again underscores the high bar to seek remedies under Copyright Act and Fair Trade Act based solely on similarity of overall shape or appearance of a product. If such shape or design is of utilitarian or functional purpose, and is quite common in the market, it would be challenging to rely on copyright or unfair competition. From a strategic standpoint, businesses looking to protect their products design should explore multi-layered intellectual property rights, such as trademark and design patent, establish the fame of the product, and focus on specific product feature, such as pattern or color, so as to improve the chance of enforcement action.