I. Facts

Plaintiff: Bai Guangcheng Defendant: Beijing Daoxiangcun Foodstuff Co., Ltd. ("Daoxiangcun")

Beijing Bristle Doll (Zongren) is a traditional folk art of Beijing. It was included into the list of the intangible cultural heritage of the city in June 2007. Bai Guangcheng and his brother Bai Dacheng are the only successors of the art. The Donkey Dance is a traditional product of the art. In May 2007, Bai Guangcheng completed his work of the Donkey Dance, and inscribed on its seat "Beijing Zongren Bai" in Chinese characters. The work, which was exhibited for many times in public, was the subject matter disputed in the existing case.

In September 2009, Bai Guangcheng bought a case of "Old Beijing"-branded Guangdongstyle moon cakes at the unit price of 146 Yuan, which was manufactured by Daoxiangcun. The above work was used on the packaging box and the handbag of the product as follows: (1) It was used one time at the upper left on one side of the handbag. This side of the handbag also included another three pictures of "Old Beijing Leather Shadow Puppet," "Old Beijing Winter Grasshopper" and "Old Beijing Opera;" (2) It was used one time at the middle left of the packaging box. This side of the box also included six pictures of "Old Beijing Leather Shadow Puppet," "Old Beijing Winter Grasshopper," "Old Beijing Opera," "Old Beijing Rabbit'" "Old Beijing Swallow-tailed Kite" and "Old Beijing Rectangular Courtyard;" (3) Inside the box were 6 separate packets, and the work was used on the outside of each of them four times.

The above six pictures were also printed on each packet. Upon comparison, the Donkey Dance work used on the packages was coincident with the work made by Bai Guangcheng.

II. At Trial

The trial court found that Beijing Bristle Doll is a folk art that originated at the end of Qing Dynasty and has been circulated at Beijing region. It has been included in the list of intangible cultural heritage of Beijing. The handicraft is intangible as it was handed down from generation to generation. As a successor of the art, Bai Guangcheng completed the work of Donkey Dance by incorporating traditional artistic processes and styles. It was a folklore work expressed in a tangible vehicle.

A folklore work may be a subject matter for intellectual property protection. The Copyright Law of China directs that copyright protection measures for folklore works will be separately provided by the State Council, but such measures has not been promulgated so far. In this situation, a folklore work that meets the copyrightable subject matter requirements can be protected under the Copyright Law. In the case at hand, Bai Guangcheng was in possession of the original of the work, which, strengthened by his brother Bai Dacheng's testimony that plaintiff created the work, is prima facie that plaintiff authored the work. Although the Donkey Dance is a traditional work of Beijing Bristle Doll, there was no evidence that the work of Bai Guangcheng was identical with any pre-existing work on the same subject. Thus, the court found that the work of Bai Guangcheng was original and protected by the Copyright Law. Daoxiangcun used the work of Bai Guangcheng on its moon cake packages, and the Donkey Dance work shown on the packages was coincident with the work of Bai Guangcheng. In so doing, Daoxiangcun did not infringe upon Bai Guangcheng's right of adaption, but did reproduce the work by converting the threedimensional work into a two-dimensional one.

Daoxiangcun's claim that the moon cake packaging merely used a picture of the Donkey Dance, but without showing an authorized source of the picture was not admitted in court. To conclude, defendant used the work created by Bai Guangcheng without permission, without naming the author, and without remunerating the author, and therefore shall be liable for an injunction, apologize to Bai Gangcheng, and compensate for the loss sustained by Bai Guangcheng. In view of the above, in accordance with Articles 10.1.2, 10.1.5, 10.1.6, 47.11, 48.1 and 49 of the Copyright Law of the People's Republic of China, and Articles 7.1, 25.1 and 25.2 of the Interpretation of the Supreme People's Court on a Few Issues in the Application of Laws in the Trial of Civil Dispute Cases over Copyright, the court ruled as follows: (1) Effective as of the judgment, Daoxiangcun is enjoined from further using the Donkey Dance work of Bai Guangcheng on the packages of the "Old Beijing"- branded Guangdong-style moon cakes manufactured and sold by it; (2) Within 30 days of the effectiveness of this judgment, Daoxiangcun shall make a public apology to Bai Guangcheng on Beijing Evening News for its unauthorized use of the Donkey Dance work of Bai Guangcheng and for not presenting the name of the author of the work, on the packages of the "Old Beijing"- branded Guangdong-style moon cakes manufactured and sold by it; (3) Within 10 days of effectiveness of this judgment, Daoxiangcun shall pay damages, in the amount of 20,000 yuan, to Bai Guangcheng for the economic loss sustained by the latter; and (4) Plaintiff's all other complaints are dismissed. No party appealed after the first-instance judgment.

III. Different Views

Beijing Bristle Doll is intangible cultural heritage in the category of traditional skills. On February 25th, 2011, the Law on the Intangible Cultural Heritage was adopted, which marked the perfection of the administrative law system or the public law system for the protection of intangible cultural heritage in China. The bristle doll is also a folklore work, but the private law system for the protection of folklore works is still unclear. Only Article 6 of the Copyright Law provides that "Measures for copyright protection of folklore works will be established separately by the State Council." But, the measures have not been issued up to date. Thus, two opinions prevailed in the trial of the existing case: One view said that the work concerned was not a work protected by the Copyright Law, because the above measures have not been issued. The court should reject the complaint by the plaintiff in the absence of a legal basis for such complaint. The other opinion said that although the measures have not been issued, Article 6 suggests that folklore works may be protected by copyright, for which special protective measures will be needed, considering the peculiarity of folklore works from common works.

From the application of laws, before the issuance of such measures, where a folklore work complies with the requirements for works protected under the Copyright Law, the Copyright Law may be applied to protect such folklore work, with considerations given to the peculiarity of such folklore work. I agree with the second opinion, which was adopted finally by the court.

IV. Judge's Comments

The existing case was included by the Supreme People's Court into the 50 classic cases of intellectual property protection in 2010 in China. I will analyze this typical case on the following aspects: the principle that a judge shall never refuse to judge a case; whether or not folklore works are protected by the Copyright Law and the required elements for such protection; and how to coordinate between the protection of intangible cultural heritage and the copyright protection when the Copyright Law is applied to the judgment of a case.

A court should not refuse to entertain a case on account of the absence of statutory provisions

The delay in the making of the measures for the protection of folklore works is essentially due to the complicated coverage of such works and the great differences in international society on the protection for such works. However, on the modern principle of the rule of law, a judge shall not refuse to judge a case for the absence of statutory provisions. The German jurist Helmut Coing believed that in a country ruled by law, a judge will face three tasks:

a. He must present his argument on a valid claim he faces, but should not refuse it on the pretext of the absence or unclarity of relevant legal provisions;

b. He must obey the law, and render his judgment on the complaint placed before him in accordance with the law;

c. He must make his judgment in accordance with the law in a just and fair manner. Moreover, the codes of law of France and Switzerland both provide that a judge shall not refuse to judge a case on account of the absence of relevant legal provisions.

This principle determines that where a dispute is raised over a folklore work, a judge should not reject the IP Forum on Chinese Painting and Calligraphy 25 claims of a party simply on the grounds that no relevant legal provisions are available, but should employ legal construction approaches to correctly apply relevant laws and sufficiently discuss the issues disputed, so that the justification of the judicial determination can be manifested and the legislative deficiency in the protection of folklore works can be made good.

Folklore works are copyrightable Folklore work defined

Chief Judge, IP Division, the People's Court of Dongcheng District, Beijing

Folklore was defined in the Tunis Modal Law on Copyright for Developing Countries, jointly adopted by UNESCO and WIPO in Tunis in 1976 ("Tunis Modal Law") as "all literary, artistic and scientific works created on national territory by authors presumed to be nationals of such countries or by ethnic communities, passed from generation to generation and constituting one of the basic elements of the traditional cultural heritage." In addition, the concept of "expressions of folklore" was developed in the Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and other Forms of Prejudicial Action, jointly adopted by UNESCO and WIPO in 1982, which means productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community of a country or by individuals reflecting the traditional artistic expectations of such a community. The term "expressions of folklore" instead of "folklore work" was used to distinguish folklore (expressions) from traditional copyrighted works. In the traditional copyright system, copyright is granted to individual authors; to receive copyright protection, a work must be fixed and creative; and the protection is limited to a certain period. These required properties, however, can not be satisfied or satisfied insufficiently by, or are unsuitable to, folklore (expressions). In Chinese language, the concept of "folklore works" is the same as that of the "expressions of folklore" or "folklore," and is not restricted to folklore works qualifying for the protection of the Copyright Law.

Compared with folklore works, the concept of "intangible cultural heritage" has come from the Convention for the Safeguarding of the Intangible Cultural Heritage, adopted by UNESCO on October 17th, 2003. In China, Article 2 of the Law on the Intangible Cultural Heritage defines it as

    For the purpose of this law, the "intangible cultural heritage" means various expressions of traditional culture, and their related physical things and places, passed from generation to generation by all ethnic groups, and deemed as constitutive elements of their cultural heritage by such ethnic groups, including: i. traditional oral literature and the languages that are used as the vehicle for such literature; ii. traditional fine art, calligraphy, music, dance, opera, quy and acrobatics; iii. traditional skills, medicines and calendars; iv. traditional rituals, festivals and other folk customs; v. traditional sports games and entertainments; and vi. other intangible cultural heritage.

Pursuant to these provisions, folklore works are covered by the intangible cultural heritage.

Whether folklore works can be copyrightable subject matter

Regarding whether or not folklore works can be protected by copyright, one opinion is for the idea. The legislations of Tunis, Angola and Togo expressly state that folklore works are protected by their copyright laws. The other opinion is against the idea, stating that folklore works are incompliant with the copyright system and that substantial conflict and insurmountable hurdles exist between the two. Thus, a separate and special right for folklore works (for instance, the folklore work right) should be established side by side with copyright. In Russia, the Law on Copyright and Neighboring Rights (1993) expressly states that folklore works are not protected by copyright. The two opinions are both justifiable. I argue that the issue can be studied from theoretical basis, legislative mode and judicial application of laws.

First, from theoretical basis, the existence of folklore works is expressed as "works", sourced from traditional culture passed from generation to generation. The proponent of the above idea believes that a folklore work unique of an ethnic group or a region is distinctively ethnic or regional from that of other ethnic groups or regions. This makes the folklore work creative. The creativity is community-based, and is common creativity within the community. The traditional copyright system builds on personal rights, and the creativity of a work comes from an individual's creative effort. Thus, due to the required creative element of copyright protection, it is impossible to include all folklore works under the protection of the traditional copyright law. But I argue that folklore works that have specific successors and works that derive from folklore works can be protected by the Copyright Law. In the former's case, each successor may imbue his personal characteristics, understanding and improvements into his work, which satisfies the requirement of creativity for copyright protection. In the latter's case, new deductive works are made by collecting, sorting and rearranging folklore works. In light of the above, it is probable and feasible for the traditional copyright system to incorporate folklore works into its protection. However, due to the peculiarity of folklore works, the Copyright Law can protect only part other than all of the folklore works, and the folklore works unprotected by copyright will need protection by special legal provisions. That is, the copyright in special folklore works is peculiar, and is of a type and exercised in a way different from the traditional copyright. Professor Zheng Chengsi proposed that for a folklore work, the author can be granted the rights of reproduction and translation, but no right of adaption.

Second, from legislative mode, the Law on the Intangible Cultural Heritage can be applied as administrative protection for folklore works. In private law protection, in addition to the Copyright Law, a separate regulation has been expressly proposed. On one side, the separate legislative proposal is made with consideration for the peculiarity of folklore works. It will be a special regulation in relation to the Copyright Law. The usual copyright system has to be adjusted partially to accommodate folklore works. On the other side, the consideration has also been given to the balance of the system of the Copyright Law. The proposed legislation will be on the basis of the Copyright Law, and the two will work together to make the private law protection system for folklore works. The Copyright Law will be applicable in the absence of relevant provisions in the proposed legislation.

Last but not least, from judicial application of laws, the Copyright Law should be applied to protect works qualifying for its protection, before the separate regulation for folklore works is issued. The challenge and key is to what extent that the Copyright Law should protect folklore works. Professor Zheng Chengsi commented that when courts are dealing with disputes (over folklore works), it is very possible that they include into the private domain things that belong to the public domain, or vice versa. It will be wrong, if they are too lenient or too stringent. They can hardly find the true course to follow. In the existing case, Beijing Bristle Doll, as a traditional skill, has specific successors. As one of the successors, the plaintiff imbued his characteristics into the work concerned, improved it in certain ways, and expressed it in a tangible form. These elements fully complied with the requirements of works protected under the Copyright Law. The copyright of the work concerned should be protected in accordance with the Copyright Law. However, as the work concerned was intangible cultural heritage, the bench has to consider how to preserve, protect, spread, succeed and develop the heritage, and in determining infringement and awarding damages, balance the relationship between the copyright protection of the successor's private rights and the preservation, protection, spreading, succeeding and development of the heritage.

Reducing a three-dimensional work to a two dimensional one is reproduction

According to the Copyright Law, the right of reproduction means the right to produce one or more copies of a work by printing, photocopying, lithographing, making a sound recording or video recording, duplicating a recording, or duplicating a photographic work or by any other means. There are three types of reproduction: the first type is to reproduce a work by keeping its medium, or by changing its medium but keeping the way of its expression; the second is to reproduce a work that does not have a medium by adding a medium to it; and the third is to reproduce a work by reducing it from three-dimensional to two-dimensional or vice versa. In the present case, defendant used the work concerned by printing such work on its packages. The work, which was a handicraft, was reproduced by defendant by reducing it from three-dimensional to two-dimensional.