Protecting intellectual property in foreign toys

Foreign toys dominate the market for medium and high-end toys in China, thanks in part to their novelty and safety.

In planning for the long term, foreign toy makers need to tap into the PRC toy market, and also to secure the protections accorded by the intellectual property (IP) laws of the PRC.

Copyrights and patents

Under the PRC’s framework of IP law, copyright is defined as the exclusive right in a work that its originator enjoys.

The object of protection is the work. Originality is the substantive criterion for determining whether a work is entitled to the protection of the PRC Copyright Law.

A patent right, meanwhile, is the exclusive right that an inventor enjoys in the achievements of a technical invention.

The object of protection is an industrial property right. To secure a patent, it is necessary for the product in question to satisfy such criteria as novelty, originality and practicality.

Copyright is conferred automatically, whereas a patent must be granted by a state authority.

Copyrights and patent rights are substantively different in terms of their objects, the mechanisms and conditions for obtaining the rights and the means by which those rights are protected.

If a patent is applied for and secured for a foreign toy pursuant to the Patent Law and the toy also satisfies the requirements of the Copyright Law in respect of the protection of works, that toy will be eligible for dual protection, and the securing of either right does not prejudice the other.

This dual protection was confirmed in the final judgment ([2002] Gao Min Zhong Zi No. 279) given by the Beijing Municipal Higher People’s Court in the copyright infringement case Interlego AG and Kegao (Tianjin) Toy Co Ltd vs Beijing Fuxing Commercial Centre. In this case, the court stated that “Although Interlego applied for a PRC design patent for its work of applied art, this should in no way prejudice its enjoyment of simultaneous or continued protection under the Copyright Law”.

Copyright protection central

Foreign toys for which a patent has not been secured in the PRC cannot receive protection under the Patent Law. As a patent application may take a long time, the documentary requirements are cumbersome and success is not assured, the timely protection of lawful rights is difficult.

In contrast, copyright arises automatically and is not conditional on registration in the PRC.

Accordingly, protection under the Copyright Law has become the predominant means of protecting the IP of foreign toys in the PRC.
Foreign toys can be accorded the protection of the Copyright Law either as a work of applied art or a work of fine art.

Although the current Copyright Law (amended in 2010) and its implementing regulations do not list works of applied art as objects of protection, article 2(7) of the Berne Convention specifies that signatory nations shall protect works of applied art.

The Berne Convention

The PRC is a signatory to the Berne Convention. On 25 September 1992, the State Council promulgated the Implementation of International Copyright Conventions Provisions, article 6 of which accords foreign works of applied art a copyright protection period of 25 years from the date on which they are completed.

Accordingly, if a foreign toy originates from a signatory nation of the Berne Convention, it is eligible for protection as a work of applied art in the PRC under the Copyright Law.

However, the Copyright Law does not define what constitutes a “work of applied art”. According to the Guide to the Berne Convention and the Glossary of Copyright and Related Rights Terms, as well as in copyright law and practice in the PRC, a “work of applied art” should first be a work, be reproducible and original, have been completed independently and be creative; and second should be both practical and artistic.

Of the foregoing characteristics, reproducibility, being independently completed and practicality are relatively visible and objective; however creativity and artistry can be ambiguous, and the assessment of them can easily be influenced by subjective perception and cultural background.

The writers believe that the mechanical listing of criteria by which to judge creativity and artistry is not realistic and that these matters should, in practice, be handled on a case-by-case basis.

Whether a toy is characterized by creativity can be determined by assessing the type of toy in combination with its purpose, and by considering such factors as the creativity involved in its production, and the method and means of expression. Artistry is based on creativity and requires the toy to have a certain degree of aesthetic appeal; this further requires a consideration of geographical, social and cultural factors, comparison with the artistic content of other works and an assessment of the public’s general aesthetic sense.

Works of fine art

Some foreign toys have been accorded protection as works of fine art under the Copyright Law, as demonstrated in the copyright infringement dispute case in which Lego sued Zhenhui.

According to the current Copyright Law, “works of fine art” means paintings, calligraphy, sculpture and other such artistic works consisting of elements such as lines and, either two-dimensional or three-dimensional, that have aesthetic appeal, and are one of the types of works protected by the Copyright Law. A toy must be created independently by the rights holder and must achieve the basic degree of intellectual creativity required by the Copyright Law, while falling within the specified scope of works of art.

The decision whether to apply for the protection of a foreign toy as a work of applied art or a work of fine art under the Copyright Law should be determined based on the features of the toy itself.

Wang Yadong is executive partner and Li Min is a partner at Run Ming Law Office