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Intellectual Property and Commercial Court



Decision No. 2009-Min-Zhu–Su-2
Date April 3, 2009
Decision Highlight

1. License by a copyright owner should be acquired before using such copyright owner’s photographic works, unless the situation constitutes fair use. Although there is a lot of information on the Internet and to reproduce or publicly transmit any sorts of information, such as words and pictures, is very easy, copyright is still equally protected in the world of the Internet. The expression of a work is usually fixed on a specific medium or carrier so as to make others perceive the existence and content of such work. No matter what type of medium a work is fixed on, the copyright owner of such work enjoys equal copyright protection for all subject matters, such as a book, a periodical, a compact disk, a tape, an electric storage medium (e.g., video tape, CD, VCD, DVD), and so on, all of which are physical objects. Furthermore, the concept of “medium” includes not only physical storage media but also communication or entertainment systems (e.g., broadcasting), and modes of expression. This is the concept of the “principle of media neutrality.” The media on which works could be fixed vary with the advance of technology. Based on such idea, “the principle of media neutrality” can be broadly interpreted as “the principle of technology neutrality.” Therefore, the copyright acquired by the plaintiff should exist in any media, existing presently or in the future, and is not influenced by the format of the medium, such as pictures, books, internet web pages, or by the emergence, transformation, or change of new media in the future. If the defendants, A Co. and B, cannot make sure who the copyright owner of the disputed web-page pictures is, they should refrain from using such pictures. Unless they can establish fair use, they did infringe the copyrights.

2. Fair use of a work shall not constitute an infringement of the economic rights on a work. In determining whether the exploitation of a work complies with the provisions of Articles 44 through 63, or other conditions of fair use, the court shall take into account all circumstances, especially the following facts: first, the purposes and nature of the exploitation, including whether such exploitation is of a commercial nature or is for nonprofit educational purposes; second, the nature of the work; third, the amount and substantiality of the portion exploited in relation to the work as a whole; fourth, the effect of the exploitation on the work's current and potential market value. These rules are expressly provided by Article 65, Paragraphs 1 and 2 of the Copyright Act.

3. As to the nature of the doctrine of fair use, there are three theories: limitation on the exclusive right, affirmative defense, or the user’s right. In theory, “fair use” is recognized by the Copyright Act as a limitation on the exclusive rights. Yet in considering the right creation, the appearance and implication of fair use, and enforcement of the right, the level of immunity granted by fair use cannot be said to have reached the leval of a “right.” Thus “fair use” is only a general interest granted by the Copyright Act. In addition, in light of the economic analysis of law and empirical analyses of the judicial decisions, the cost of adopting the user’s right theory can be higher, so the theory of affirmative defense should be more appropriate. To give interest-like protection to the fair user is enough; there is no need to recognize fair use as a right. Hence, an accused infringer who utilized the copyrighted work can raise the defense of fair use in litigation, and if the requirements of fair use are met, the liability for copyright infringement can be relieved. ”Fair use” is an affirmative defense to infringement (a defense to illegality) in nature.

4. The regulatory purpose of copyright and fair use are to encourage the delivery, exchange and share of knowledge and information so as to make the knowledge and cultural heritage of human beings sustainable, enriched, and refined. Thus, Article 65, Paragraph 2 of the Copyright Act provides the standard for determining fair use, focusing on the substantive evaluation of the various situations of use. Regarding the test under Subparagraph 1 of the same paragraph of the same article, the Supreme Court criminal decision No. 2005-Tai-Shang-7127 held, “Article 65, Paragraph 2, Subparagraph 1 of the Copyright Act provides, “The purposes and nature of the use [include] whether such use is of a commercial nature or is for nonprofit educational purposes.” The analysis of the purposes of use should rely on the legislative intent vested in the Article 1 of the Copyright Act. The categories of the use should not be simply divided into two categories, commercial or non-profit (or educational) so that the legislative purposes of copyright can be accomplished. In other words, if the purposes and nature of the use contribute to harmonizing the public interest of the society or to the nation’s cultural development, the court should favorably evaluate such use even if the purposes are not educational. On the other hand, if the purposes and nature of the use do not benefit the public interest of the society or the nation’s cultural development, even if the user does not profit from such use, the act should weight against a finding of fair use, because the act of reproduction does not contribute to other more important interests in order to justify the sacrifice of the copyright owner’s interest.” This decision clearly abandoned the dichotomy of commercial or non-commercial uses, and adopted a standard based on whether the use harmonizes the public interests of the society or the nation’s cultural development.

5. The determination of fair use should not rely on one single factor. One should focus on the public interest in developing human knowledge and cultural heritage, and on the type of the work used as well as the type and the content of such use. In other words, when determining fair use, the court should consider all circumstances surrounding the use of the work, and should consider all the four factors provided in Article 65, Paragraph 2 of the Copyright Act. In additional, Subparagraphs 2 and 3 of Paragraph 2 are the objective factors, and they are supplementary to the determination of the Subparagraph 4 factor. The factor of Subparagraph 1 emphasizes the subjective purpose of the user and the objective nature of such use, and the evaluation of the nature of the defendant’s work, the court should consider the original purposes of the copyright owner in creating such a work and whether the copyright owner expressly or impliedly consented to the use by others without his prior permission. Besides, the court should consider the result of such use and the overall influence of such result on the knowledge and cultural heritage of human beings, as well as other circumstances, to make an overall evaluation of the entire subjective and objective factors.

6. Here, at their web pages for business, the defendants, A Co. and B, used pictures that are identical to the plaintiff’s copyrighted “termite” photographic works. Such use was simple reproduction without any productive or transformative contribution, and the expression was presented on pictures. The defendant’s purpose is not different from the plaintiff’s original purpose— to show the appearances of insects by photographic works. The exploitation of the plaintiff’s works by the defendants, A Co. and B, did not result in any new creation, and the defendants did not create a work. The defendants’ act was not a use of the plaintiff’s works for transformative or productive purposes, but was simply a use of the plaintiff’s photographic works with the same purpose as that of the plaintiff’s. The plaintiff published a book named “Insect Picture Encyclopedia” collecting the photographic works which the plaintiff made a great effort on, and such book is labeled at the last page with “Publisher’s copyright is preserved; illegal users are liable.” so as to show that the plaintiff does not allow others to use his or her works without permission. Moreover, one single photograph constitutes a single work. The defendants, A Co. and B, completely reproduced the disputed pictures at their web pages without permission and allowed others to reproduce and download the pictures. The quality and quantity of the use of the plaintiff’s photographic works are one hundred percent. The fact that the defendants, A Co. and B, completely reproduced the plaintiff’s photographic works at their web pages without permission, provided viewing, downloading, and reproduction by users free of charge. These would decrease the probability that users buy the book “Insect Picture Encyclopedia” or acquire a license from the plaintiff to use such works, so the potential, economic value of the plaintiff’s royalty market of its photographic works would be damaged. The defendants, A Co. and B, raised a fair use defense by arguing that the pictures at their web pages purported to educate people, whose houses have pest problems, to know the appearances of those pests. However, the defendant, A Co., used its web pages for business purposes. According to the contents of the web pages, the main content introduces its business to Internet users so that the users can know about the defedant’s business and then maybe become its consumers. Though their web pages also provided an introduction of pests, covering the appearances and habits of various pests, such introductory content is merely a supplementary business tool of affiliated nature, and is not particularly for educational purposes to cite the published photographic works within a reasonable scope. It is hard to recognize that the use of the plaintiff’s photographic works by the defendants, A Co. and B, encourages or contributes to the creation by following authors, or enhances the dissemination and flow of information. In conclusion, this Court holds that the scope of fair use asserted by the defendants, A Co. and B, is narrow and that the protection of the plaintiff’s copyright trumps such fair use defense so that the copyright owner’s incentive for creation can be preserved.

Related Provision

Copyright Act: Article 52; Article 65, Paragraphs 1, 2

  • Release Date:2020-11-13
  • Update:2020-12-03