1. Introduction

Although copyright is an intellectual property right, there is a significant difference between copyright and patent right. Copyright is based on the principle of completion of a work. As long as the work is completed by an author without plagiarizing the work of a third party, even if they are similar, the work will still be protected by the Taiwan Copyright Act, and the copyright can be obtained without registration. The appearances of numerous works are derived from objects that exist in nature, such as the pineapple in the present case. Because of the homophonic nature of the word “Wanglai” in Taiwanese, meaning both “prosperity and good luck” and well as “pineapple,” many items for use in religious ceremonies are designed in the shape of a pineapple to appeal to consumers. However, the possible variations of the pineapple shape are very limited, so it seems that the idea and expression have been merged into one so the scope of copyright will naturally be restricted, as can be seen in the following example (2018, Min Zhu Su Zi, No. 86 by the Intellectual Property Court).

2. Facts

(1) The “Wanglai Bottle” artistic work (hereinafter referred to as the “disputed work”) claimed by the plaintiff was registered with the competent authority, namely the Copyright Committee of the Ministry of the Interior, in accordance with the Taiwan Copyright Act in 1995. The plaintiff obtained the economic rights of the disputed work through inheritance.

(2) The plaintiff claimed that the defendant had infringed its copyright by supplying A Candle Factory with a “Votive Lamp” candle product in the shape of a pineapple (hereinafter referred to as the “disputed product”), and claimed that the defendant and A Candle Factory committed joint tort. Therefore, the plaintiff brought this lawsuit, requesting the defendant and his legal representative to jointly compensate NT$500,000 in compensation for damages, and requesting the defendant to cease its infringing behavior and to bear the expenses, and to publish part of the judgment in the newspaper.

3. Main Issues

(1) Is the disputed work protected by the Taiwan Copyright Act?

(2) If the disputed work is protected by the Taiwan Copyright Act, does the disputed product infringe the copyright of the disputed work?

(3) Is the disputed product manufactured by the defendant company?

(4) If the above issues are all affirmative, did the defendant intentionally or negligently infringe the copyright of the disputed work?

(5) If the defendant should be liable for compensation for damages for infringing the copyright of the disputed work, what is the amount of the compensation for damages?

(6) Are the plaintiff's requests for injunction and the request to publish part of the judgment in newspapers reasonable?

4. Summary of the judgments

(1)  Although the economic right of the plaintiff’s disputed work was registered in 1995, according to the provisions of the Taiwan Copyright Act at that time, the registration of the economic right of the disputed work did not cause this right to be absolutely effective. If it is found that the economic right of the disputed work does not comply with the provisions of the Taiwan Copyright Act after registration, whereby its registration could still be revoked according to law.

(2) The shape of the plaintiff's disputed work is derived from the pineapple shape that exists in nature, which is obviously a transformation. Different people draw inspiration from the same creative material, and there may be different forms of expression. In addition, because the Taiwan Copyright Act has very low requirements for creativity, it should be considered that the transformation and presentation of the pineapple in the plaintiff's disputed work already has originality and thus should be protected by the Taiwan Copyright Act. However, comparing the disputed work and the disputed product as shown below, we can find that both of them represent a pineapple body that is wide in the middle and narrow at the top and bottom, but the pineapple top diverges wider upwards, and there are diamond-shaped patterns on the surface of the pineapple body as well as star-shaped protrusions in each square. As for the impression created by the disputed work and the disputed product as a whole, after comparing the photos, they are actually slightly similar representations (the star-like protrusions on the pineapple are not obvious), that is, they are not different from the original material, i.e., the pineapple. Accordingly, these works are not in the scope of copyright protection.

(3) The court further carried out a detailed comparison and determined that both the disputed work and the disputed product are quite similar with regard to the top of the pineapple and the pineapple leaves presented by the pineapple top connected in a half-moon shape. However, in the disputed work, the word “Wanglai” appears in a large size in the middle of the pineapple body, and the diamond-shaped pattern on the body are smoothed out, and the same pattern at the bottom of the pineapple body is smoothed out and replaced with vertical lines. Such visual representation is not found in the disputed product. Furthermore, the bottom of the disputed work is completely flat, but the bottom of the disputed product has an image of a trigram (not shown in the attachment of this judgment), which are further differences.

(4) From the above detailed comparison, it can be determined that the appearances of the disputed work and the disputed product are different. Therefore, the court held that the two works were not substantially similar, and it should be considered that the disputed product did not infringe the copyright of the disputed work. As for the second item of the issue, the court judged that the disputed product does not infringe the copyright of the disputed work, and the court could directly make a judgment against the plaintiff, whereby it was not necessary to continue to judge other issues. 

Reference: Anthology for the 70th Anniversary of Tai E's Law Practice