Press Enter to Center block

Intellectual Property and Commercial Court


2012 Xing Zhi Shang Su Zi No. 68

Decision No. 2012 Xing Zhi Shang Su Zi No. 68
Date December 27, 2012
Decision Highlight

1.According to Article 3 Paragraph 1 Subparagraph 1 of the Copyright Act, "Work" means a creation that is within a literary, scientific, artistic, or other intellectual domain. If the test questions fit the aforementioned definition of “work”, and are not “test questions and alternative test questions from all kinds of examinations held pursuant to acts or regulations” as stated in Article 9 Paragraph 1 Subparagraph 5 of the Copyright Act, then they should be considered as literary work and to be protected by the Copyright Act. In addition, as stated in Article 3 Paragraph 1 Subparagraph 11, Article 6 and the forepart of Article 28 Copyright Act, the so-called "adaptation" means to create another work based upon a pre-existing work by translation, musical arrangement, revision, filming, or other means. A creation adapted from one or more pre-existing works is a derivative work and shall be protected as an independent work; protection of a derivative work shall not affect the copyright in the pre-existing work. Authors of works have the exclusive right to adapt their works into derivative works or to compile their works into compilation works. According to the aforementioned stipulations, pre-existing works and derivative works are two independent works, and the copyright of the pre-existing works and that of the derivative works are two independent copyrights. According to Article 10 of the Copyright Act, the author of a work shall have copyright upon completion of the work. When a citizen of this country is licensed to translate a work of a foreign author, that translation is a derivative work, and thus is an independent work. Therefore, the copyright of that translation is different from that of the pre-existing work. (Referred to Supreme Court decision No. 1999-Tai-Fei-378.) In addition, copyright is a kind of private right. The economic right and the licensed exploitation to the work should be part of the private contract. Consequently, based on the principle of the freedom of contract, the parties can decide the economic right and the licensed exploitation to the work by themselves as long as they follow public order and good morals. Also, the author and the economic right holder are not necessarily the same person. These principles are originated from Article 11 of the Copyright Act, where an agreement stipulates that the author should be which party shall govern; Article 12, where the ownership of the economic right to the work can be assigned through contractual stipulation; Article 26, where the details of the license are regulated.

2.The copyright owner of AMC English test questions is the Mathematical Association of America. According to Article 4 Paragraph 2 of the Copyright Act and WTO “Agreements on Trade-Related Aspects of Intellectual Property Rights” (TRIPS), these test questions belong to “oral and literary works” and are protected by our Copyright Act. The aforementioned statements are made clear by the agent of Bo-Kai Publisher in the first trial, and are not disputed by the two defendants. (See Volume 1 of the first trial, p. 171). Article 1 Paragraph 1 of the March 12, 2009 agreement also stated that: “The ASSOCIATION PROGRAM grants to the PUBLISHER(a) the rights, licenses and privileges to translate or cause to be translated in the Taiwanese-Chinese language, and (b) the right to organize the translated WORK by mathematical topic as determined by the PUBLISHER, (c) the sole and exclusive right to print, publish, and sell or cause the cause to be printed, published, and sold in book form in said language the above WORK.” Article 5 of the agreement stated that: “The translation of the WORK shall be faithfully and accurately with slight modifications on the original text as may be necessary to achieve a competent and idiomatic translation. Such modifications shall no materially alter the test. Prof. Peter Shiue will serve as a chief translator for translation into Chinese. THE WORK may not be abridged or altered without the written consent of the ASSOCIATION PROGRAM and the PUBLISHER and the ASSOCIATION PROGRAM must mutually agree on the content and selections of any abridged version. The PUBLISHER shall copyright the WORK and take whatever steps necessary to protect such copyright.” The forepart of Article 9 of the agreement stated that: “The license is granted for period of 5 years from the date of the agreement and shall automatically terminate at the end of this period.” Article 10 of the agreement stated that: “The PUBLISHER absolves the ASSOCIATION PROGRAM of any responsibility from any liability arising from publication of the WORK in Taiwanese-Chinese language.” In addition to the previous agreement on March 12, 2009, the agreement on March 15, 2002 and the agreement on August 12, 2011 both have the same or similar commitments as well. Thus, when the two defendants committed the act in August and September, 2008, Bo-Kai Publisher had been licensed by Mathematical Association of America to translate the AMC8 English test questions into a Chinese edition. According to Article 11 of the Copyright Act, this derivative work should be viewed as an independent work and thus have an independent copyright.


Independent Work, Derivative Work

Relevant statutes Article 11 of the Copyright Act
  • Release Date:2020-11-13
  • Update:2020-12-03