Guangzhou Exception Industrial Co, Ltd is a manufacturer of bags and suitcases. It registered the word EXCEPTION in Class 18, but on its wallet and handbag products and packaging it used a reversed version of the word, with "de MIXMIND" written beneath (see below).
Mao Jihong claimed that he owned the design, which he alleged was created in 2002 and registered on February 11 2015 as a work of fine art with the Copyright Administration of Guangdong Province. On March 3 2015 Mao filed a complaint against Exception before the Guangzhou cultural market comprehensive law enforcement team.
The law enforcement team inspected Exception's premises and consulted with the Copyright Association of Guangzhou, which confirmed the copyright infringement.
On May 14 2015 the team issued a penalty decision, finding copyright infringement. It confiscated one handbag and 321 packages, and imposed a fine of Rmb30,000.
Exception filed an administrative lawsuit against the decision before the Guangzhou Tianhe People's Court.
On January 15 2016 the Tianhe court dismissed Exception's claims on the grounds that the reversed design – which does not comply with the English alphabet norm – may be categorised as a design, rather than an English word. The court considered that the reversed design was of artistic value and was therefore copyrightable.
Exception appealed before the Guangzhou IP Court and argued that the sign did not qualify as a copyrightable work of art.
Guangzhou IP Court noted that, in principle, copyright is generated on the date that the creation of a work is completed and, in the absence of contradictory evidence, the registrant may be considered its owner. However, the court also stated that registration is not subject to substantive examination and therefore does not prove that the registered subject necessarily falls under the category of works. In addition, the court observed that the Copyright Association of Guangzhou, to which the law enforcement team had referred the case, could have advised only on factual matters and had no jurisdiction on whether copyright infringement had occurred.
The court considered that the disputed design, despite the slight artistic arrangement of the characters, was essentially the expression of an idea as much as it was a design, and therefore demonstrated little originality in expression and no aesthetic value as a work of fine art. On October 28 2016 the Guangzhou IP Court therefore found that Mao's design did not qualify as fine art and repealed the first-instance judgment and the penalty decision.
Although this case involved a copyright registrant acting against a trademark user, the sole focus was whether the disputed design was copyrightable as a work of art.
The second-instance court recognised the principle that a copyrightable work should display a fundamental level of intellectual creativity. In this case, using existing letters and presenting them in the same order in their reversed position did not constitute creativity. It is probable that the Copyright Bureau did not realise that the design was merely the mirror image of the English word 'exception'.
Copyright is a powerful right, since it allows the owner to challenge an identical trademark used in any category of goods (whereas a registered trademark is limited to identical or similar marks used on identical or similar products). This decision is therefore welcome, as it sets a precedent for the possibility of claiming a copyright on any kind of visual representation. However, reversed capital letters cannot be considered art.
