On October 8th, 2011, Beijing Chaoyang District People's Court (Chaoyang Court) rendered the first-instance judgment in connection with the copyright infringement case (Case) brought by the plaintiff Xue Huake against the defendant Yan Yaya, ruling that the existing evidence was not sufficient to prove that Yan has used some contents of the photo Old Woman taken by Xue, in her painting Grandma and that Yan has not infringed upon the copyright of Xue. Therefore, the Chaoyang Court rejected the plaintiff's claims.

In the Case, the Chaoyang Court made the ruling mainly based on the following facts: 1. The plaintiff did not provide evidence showing that his photographic work Old Woman had been published before, nor did he prove that the defendant had access to the plaintiff's work; 2.Both the plaintiff and the defendant visited the Pamirs in 2005 and made creations with local residents as subjects; 3. The defendant provided sketches, witnesses and testimonials from the old woman's family, photographs of the old woman and a contract between the defendant and the old woman granting the right to use the portrait; 4. The defendant's work and the plaintiff's work were different from each other in sufficient detail.

Wang Zhuo, Judge with the IP Division of Beijing No.1 Intermediate People's Court

These evidentiary facts aside, the main legal basis for the ruling was Article 15 of the Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Civil Cases Involving Copyright Disputes, namely, "Where different authors create works with the same materials and the expression of the works is completed independently and demonstrates creativity, the authors shall each be entitled to independent copyright."

This seemingly simple case has reflected an important legal issue relevant to the trial of copyright infringement cases, namely, the determination of copyright infringement. In China's judicial practice, the standard of "access plus substantial similarity" has always been adhered to in the determination of copyright infringement. According to the principle of "The burden of proof is on anyone who claims" in the Civil Procedure Law, the plaintiff has to prove not only that the defendant has actual access to the plaintiff's work, but also that the works of the plaintiff and the defendant (Works) are substantially similar. The so-called "substantial similarity" rule does not refer to substantial similarity between the Works in their entireties, but substantial similarity between the defendant's work and the creative part of the plaintiff's work, because the Copyright Law only protects creative expressions. The following will discuss this distinction in further detail.

I. Elements in Determining Copyright Infringement

1. Standard of "access" evidence

As regards "access," the plaintiff has the burden of proof to show that the defendant has had access to the plaintiff's work. The burden of proof is met when the plaintiff has produced direct or indirect evidence showing that the defendant has factually had access to or has a reasonable opportunity or reasonable likelihood of access to the plaintiff's work. If the defendant objects to the application of this rule, then the burden of proof will shift to the defendant who must prove that the allegedly infringing work is a result of his/her "independent creation." In general, the direct "access" evidence includes reading or viewing the plaintiff's work by the defendant, or the fact that the defendant once worked with the plaintiff.

Indirect evidence includes: (1) The plaintiff's work has been made public through publication, exhibition, performance, screening and broadcasting prior to the creation of the defendant's work, which is often seen in China's judicial practice; (2) The defendant does not have the ability to independently create the alleged infringing work. Under certain circumstances, the court may presume that the defendant has had access to the plaintiff's work if: (a) the defendant's work and that of the plaintiff are basically the same, sufficient to rule out the possibility of the defendant making independent creations; (b) the defendant's work has the same errors as that of the plaintiff, and these errors are difficult to be explained as a result of coincidence. However, the Author thinks that the court should use "presumption" with caution.

2. Whether the works constitute "substantial similarity"

If the defendant has access to the plaintiff's work, but the Works are neither identical nor similar, no infringement occurs. In judicial practice, it is easy to determine the sameness of works, but it is difficult to determine the similarity of works. In this regard, judicial practice usually adopts the standard of "substantial similarity." Simply put, the rules is that if works impress the general public as basically the same, then it can be determined that they constitute substantial similarity. It should be emphasized that "substantially similarity" refers to the creative part of the plaintiff's work, because even if the plaintiff is able to prove that the works are "substantially similar" in their entireties, the defendant can also defend the similarity by proving that the same or similar contents arise from the public domain or a third party. If successfully argued, there is no infringement.

An example of the application of this rule can be found in the copyright dispute filed by Beijing designer Zhu Zhiqiang against Nike over the "Stickman" cartoon figure. In that case the court examined the "Stickman" materials produced by Nike and ruled that Nike's Stickman and Zhu's Stickman were similar after comparison, but also found that the identical contents of both could be found in the public domain and should not be protected; therefore, the court ruled that the defendant did not commit infringement.

In US judicial practice, courts often divide the issue into two levels: First, there is a determination of whether the defendant has copied the plaintiff's work. The courts, at this level, usually adopt the standard of "probative similarity," namely, two independently created works are similar under general circumstances and the level of similarity has been sufficient to assume that the defendant has actually copied the plaintiff's work. As a matter of fact, if the defendant has access to the plaintiff's work, it will be easier to establish the similarity. If the evidence is insufficient to prove that the defendant has access to the plaintiff's work, the level of similarity should be "striking" to assume that the defendant has copied the plaintiff's work. In the process, both the part protected by the copyright law and the part unprotected by the copyright law should be taken into account.

The second level then involves a determination of whether the defendant has unlawfully appropriated the part protected by the copyright law. In other words, whether the Works are "substantially similar" only in connection with the part protected by the copyright law. In this regard, the US courts insist on the standard of response of the ordinary "lay person," namely, whether the lay person who has viewed both would conclude that the defendant has unlawfully appropriated the part protected by the copyright law.

3. Whether the creative part belongs to "expression"

Apart from the two aforesaid standards, judicial practice needs to determine whether the substantially similar part of the Works belongs to "expression" and the only or limited way of expression. The question arises out of the dichotomy of "expression" and "idea" in the copyright domain. The second paragraph of Article 9 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides that, "Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such." Article 6 of Computer Software Protection Regulations also provides that "Protection provided by these Regulations over the software copyright shall not extend to include any idea, process, operating method, or mathematical concept, etc. employed during software development."

An example of the application of this analysis can be found in the copying right dispute filed by Xiang Baiping against the National Palace Museum and Beijing Ideal Design Art Company (Beijing Idea). There the Beijing Higher People's Court ruled that both Xiang's work and Beijing Idea's work used the Chinese character "宮" as the main design object to express magnificence and broadness of the main building of the Forbidden City, but this fell into the scope of ideas and was not an issue of copyright protection. Therefore, the court ruled that the act of the defendant did not constitute infringement.

II. Second Thoughts on the Case

Based on the aforesaid analysis, let's go back to the Case. The Author is of the view that the Case involves the following legal issues:

1. Issue on proving "access"

The core legal issue of the Case is that the plaintiff failed to provide evidence to prove that the defendant has "access" to the photo Old Woman. On the contrary, the defendant was able to prove that the artistic work Grandma was independently created by the defendant. In the Case, the plaintiff's photo had not been made public before and thus could not be assumed that the defendant had "access" to the plaintiff's work. The plaintiff could provide other direct or indirect evidence of "access," for example, there was evidence that the defendant visited the plaintiff's home and viewed the work at issue or the plaintiff had given his work as a present to someone or has sent the same to newspapers, magazines so that the defendant might have access. However, in the Case, the plaintiff failed to provide such "access" evidence, making it "rather difficult" to determine infringement at the outset.

2. On the issue of exemption from "burden of proof" on the plaintiff over "access" due to "striking similarity" between the Works

The Author expresses reservations over this view, mainly because copyright law does not prohibit two identical or similar works of art from having separate copyright so long as the works are independently created. Therefore, the Author is of the view that strict standards should be set as to determine the level of similarity between two works in connection with exemption of the plaintiff from providing "access" evidence, which means, only when the Works are identical (including identical errors) can the principle be applicable. As far as the Case is concerned, though the Works are relatively similar in general, they are different in details; therefore, the plaintiff is not entitled to exemption from obligations of providing "access" evidence.

3. How creativity of a photo is embodied

China's copyright law protects many types of works, including fine arts and photos. In the Case, the plaintiff claimed that his work was a photo, a representation of an existing person or object. The person or object does exist factually and is not a result of intellectual labor, and thus should not be protected by copyright. The question then is how to embody the creativity of a photo? The Author thinks that the creativity, taking a portrait of a person for example, lies in the overall "design" by the photographer of the subject. Relevant factors should include elements indicative of artistic proficiency, such as choice the site, and arrangement of the subject's expressions, poses, clothes, time, lights, views and backgrounds. In addition, for some subjects with limited "design" space, differences in otherwise diminutive details are very crucial.

In the Case, both the plaintiff and the defendant chose an old woman in the Pamirs as a creation subject and the scope of creation fell basically within the closeup of the face. The two works were different in the manner of depiction of the old woman's eyes, arms and finger rings; in addition, the defendant's Grandma was an oil painting, a creation using many colors. Therefore, as for the creative part of the plaintiff's work, the defendant did not commit "unlawful appropriation."

Profile: Wang Zhuo graduated from Peking University 2001 as an undergraduate student, and received a master degree in 2004 from the graduate school of the China University of Political Science and Law. In 2007, Wang Zhou began to serve as a judge with the IP Division of Beijing No.1 Intermediate People's Court. In 2011, he went to Hong Kong, America, European and elsewhere to seek further education as a graduate student majored in common law. Wang Zhou has heard cases such as Hong Kong and Taiwan Records Companies v. Baidu, Inc. for infringements upon the music copyrights, and Sohu. Com Inc. being sued for copyright infringing with its MP3 search engine. He has also drafted on behalf of Beijing No.1 Intermediate People's Court articles on network copyright infringements, the scope of patent right protection and other issues.