It is generally recognized that painting and calligraphy works in China are under the protection of copyright, which is naturally regulated and adjusted by the copyright law of the PRC. However, some art works have aesthetic feeling and are fit for industrial application, which may be confused with design in concept. In practice, some art works possess the feature of practicability, artistic creation, originality and reproducibility at the same time, resulting in an overlap in the protection of design patent and copyright in the fields of art works protection.

 

So, what is the difference between the protection of painting and calligraphic works by way of patent design and copyright? Is there any overlap? Are there factors that would help guide right holders make a choice if an overlap does exist? Bearing these questions in mind, China IP conducted an interview with Mr. Zhao Jiaxiang, Director of the Sub-Committee of Industrial Design of Academic Committee of All-China Patent Agents Association.

 

China IP: What are the major differences between the design patent under the Patent Law and works of fine arts under the Copyright Law in terms of protection in China?

 

Zhao Jiaxiang: Firstly, the differences come from the different intent and purpose of the two laws. Article 1 of the Patent Law stipulates as follows:

 

This law is enacted for the purpose of protecting the legitimate rights and interests of patentees, encouraging inventions, giving an impetus to the application of inventions, improving the innovative capabilities, and promoting scientific and technological progress as well as the economic and social development.

 

The intent, the purpose stated here is distinguishable from Article 1 of the Copyright Law, which provides that

 

This Law is enacted, in accordance with the Constitution, for the purpose of protecting the copyright of authors in their literary, artistic and scientific works and the rights and interests related to copyright, encouraging the creation and dissemination of works conducive to the building of a socialist society that is advanced ethically and materially, and promoting the progress and flourishing of socialist culture and sciences.

 

Secondly, the differences originate from the difference between the two objects that the two laws are intended to protect. In accordance with Paragraph 3 of Article 2 of the Patent Law, design refers to any new design of a product’s shape, pattern or a combination thereof, as well as the combination of the color and the shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application. In addition, Item 8 of Nonpatentable Situations for Design for Patent under Guidelines for Patent Examination (2010) stipulates that “any work which belongs wholly to the field of fine arts, penmanship or photography” “is ineligible for patent protection for design.”

 

It can be seen from the above provisions that pure fine arts and penmanship are excluded from the protection of patent design. Article 2 of the Implementing Regulations of the Copyright Law of the People’s Republic of China provides that the term “works” used in the Law shall mean original intellectual creations in the literary, artistic and scientific domain, insofar as they are capable of being reproduced in a certain tangible form. Therefore, a work is generally under the protection of the Copyright Law where it belongs to the scope of art work.

 

Thirdly, the differences derive from different period of protection under the two laws. Article 42 of the Patent Law provides that the protection duration of design shall be ten years, counted from the date of application, whereas the Copyright Law stipulates that the term of protection for the right of publication and the rights shall be the lifetime of the author and fifty years after his or her death, expiring on December 31st of the fiftieth year after the date of death.

 

Finally, the differences stem from the different requirements of the two laws. Article 23 of the Patent Law provides:

 

Any design for which a patent is granted shall not be attributed to the existing design, and no entity or individual has, before the date of application, filed an application with the patent administrative department of the State Council on the identical design and recorded it in the patent documents published after the date of application. As compared with the existing design or combination of the existing design features, the design for which a patent is granted shall have distinctive features. The patented design may not conflict with the lawful rights that have been obtained by any other person prior to the date of application.

 

The term “existing design” as used in this Law refers to a design known to the general public both at home and abroad prior to the date of application.

 

The copyright generates protection immediately upon the date of the completion of the work and is automatically protected under the law. Article 2 of the Copyright Law stipulates that Chinese citizens, legal entities or other organizations shall, in accordance with this Law, enjoy the copyright in their works, whether published or not. Therefore, the principle of no formalities applies to the generation of copyright in China, which means that the copyright shall automatically generate as of the date of the completion of the work without any requirements, such as registration, submission of work samples, fees, or other procedures.

 

China IP: What is the difference between products and works, between the mass production of products and reproduction of works?

 

Zhao Jiaxiang: There should be consideration of applicability, namely, the use, and the choice of materials, technique, and mass production, when the product is designed. That is to say, applicability shall proceed over the aesthetic feeling; otherwise, it would be a bad design. Under any circumstances, applicability comes first, then the aesthetic feeling. Usually, the author expresses his ideas and feeling on his works in order to influence his readers or audiences. It is very common that there is only one original copy of the fine artworks or photography and that original one can be reproduced later on. And there is huge difference between the original and the copy. Of course, it seems that there is little difference between them in terms of appearance. However, there is a different scope of legal protection. Therefore, we should not mix the reproduction of works of fine art and photography with the mass production of products, not to mention their different attributes.

 

China IP: Is there an overlap between design patent and copyrights in terms of protection?

 

Zhao Jiaxiang: It should be said that industrial products are made in pursuit of aesthetic feelings in the stage of design in order to achieve an appropriate and innovative design relative to the product. Therefore, it can be seen sometimes that artwork may be used in industrial products, including introducing the works of fine art to product packaging, the photography for the hood, mouse pads, cups, and calligraphic works for stamp, commemorative coins, memorial badges and the inclusion of product design in glass patterns, works of architecture in brick screens and wall carvings, and other such industrial designs. Therefore, to this extent there is an overlap of protection of design between the Patent Law and the Copyright Law.

 

There are also uncertainties in practice. Patent has not been granted to statues, trinkets, art postcards, and woodblock New Year pictures in recent years, though they may be deemed as the objects of design or work in accordance with the Patent Law and the Copyright Law at first glance. Of course most of these products stand on two thresholds of the two laws. The means used to provide for their protection depends on the designer’s choice.

 

Design under the Patent Law mainly refers to industrial products according to classification for industrial designs, which include handmade products with mass production in a broad sense. It has three elements, namely, shapes, patterns and colors which belong to the aesthetic category. However, the Patent Law focuses on the use of pattern and color on products. It can be seen from the point of design that most of the world’s countries require that shapes (plastic arts), patterns, colors must be used on products. Therefore, the specific product, purely works of fine art and photographic works, are not the design under the Patent Law if they are separated from specific products. A Chinese flowerand- bird painting or a design shall be deemed as a piece of artwork or work of fine art if it is not combined with a product. And it will become a part of a design if it is embedded on wallpaper or a coffee utensil, where the purpose can be connected to marketing, a pattern may be deemed as a design in a broad sense of the word. Therefore, works of fine art and photographic works can be protected as a design under the Patent Law. However, it should also be noted that under such circusmstances the artistic feature of such paintings or photographic works cannot be changed, no matter how they are combined with the products. And this is precisely in line with the requirement of the creation of an aesthetic feeling according to Paragraph 3 of Article 3 of the Patent Law. Therefore, the design of an industrial product design has inherent similarities to works of fine art. However, the design shall be inferior to the work of fine art where the former has only aesthetic feeling instead of artistic creation as that of the latter.

 

China IP: For purposes of maximizing protection, how should applicants deal with the conflict between design patent and copyrights in practice?

 

Zhao Jiaxiang: Paintings, calligraphic and photographic works have consistently been protected under the Patent Law. However, attention should be paid to prevent them from being found to be in conflicted with preexisting copyright. In other words, a design shall not be granted a design patent if it is found that there has been an use of painting and photographic works in the design where the painting and photographic works have prior right according to law. It is believed that this will not impair the relevant legitimate rights and interests enjoyed by the prior obligee where such grant is denied.

 

There was a case that provides a good example of this rule. The Patent Reexamination Board of China rendered a decision for invalidation of patent No. 2599 on September 11^th, 2000 that patent right should be granted where the patent was consistent with the provisions of the Patent Law and not infringed upon the prior rights. Shanghai Higher People’s Court ruled in its judgment (No. 38 of IP of last resort) in 1999 that the defendant, a Shenyang-based health care products company, infringed upon the copyright enjoyed by the author by way of using the main parts of Jia Mei (Zhong Kui Marrying off His Sister), a Chinese painting, on its products as package decoration and on its packing boxes for the purpose of producing and selling its “Hubaoye” health care products in order to make profits without authorization of the author. Since then, it has been a consistent rule under such circumstances that a design shall be invalidated in accordance with Paragraph 3 of Article 23 of the Patent Law which stipulates that “Any design for which patent right may be granted must not be in conflict with the legitimate right obtained before the date of filing by any other person.”

 

China IP: In your opinion, which law is more appropriate for the protection of painting and calligraphic works in practice?

 

Zhao Jiaxiang: People have valued IP more and more in recent years. They are now more concerned about the effective protection of painting and calligraphy works. How to establish a more effective system to achieve that end? This is not only a question for our discussion but also a real issue for the industry. Authors want to know how to make a choice between design patent and copyright to that end. I think patent should proceed over copyright because it has a more specific legal basis than copyright, and it has relatively stronger evidence for enforcement in safeguarding rights and interest and in lawsuits as well.

 

It may be safe to say that the right holder may enjoy more protection from patent than from copyright. However, patent protection is inferior to copyright in terms of its shorter protective period. The person concerned may apply for a design patent for the protection of his painting and calligraphy works at first, and cite copyright for protection when the ten years of patent protection period expires. Therefore, he should make a choice between design patent and copyright according to specific circumstances, subjective desires of the author and designer should be considered as well. Of course, we should provide artists and designers with interpretations and guidance as before.

 

 

Zhao Jiaxiang is now the Director of the Sub-Committee of Industrial Design of Academic Committee of All-China Patent Agents Association. He was employed by the China Patent Office after his graduation from university majoring in arts and crafts design. In 1985, he was appointed as an examiner for design patent examinations and was transferred to the Patent Reexamination Board to act as examiner in charge of design review and invalidation and appointed as examiner and the Deputy Director of the Comprehensive Division of the Patent Reexamination Board.

 

His educational credentials include being appointed as an associate researcher and the Director of Design Complaint of the Patent Reexamination Board from 1994 to 2004. In addition, he has been engaged in research and served as the Director in charge of design and has been teaching as a guest professor and researcher at the Intellectual Law School of East China University of Political science and Law since 2005.

 

In practice he has adjudicated more than 2400 cases of invalidation and reviewing in design, including the first case involving the application for the announcement of an invalidation of design in China. In addition he has studied and investigated the application of the patent reviewing systems of Japan, Germany and Korea, and has written more than 30 articles in this regard. He has published several books, including A Collection of Reviewing and Invalidated Cases in Design, A Guidance for the Agent in Application of Patent Design, and others.