Beijing Internet Court recently closed a case arising from the right to transmit information on the internet, in which the defendant Shenzhen Shushu Technology Co., Ltd. (“Defendant”) transmitted a continuous series of pictures from the TV series Three Lives and Three Worlds Woven Together by Secrets (“Episodes in Dispute”) by using the method of “explaining a movie with pictures”, infringing the right to transmit on the internet proprietary information of the plaintiff Youku Network Technology (Beijing) Co., Ltd. (“Plaintiff”). The court decided the identity of the infringing person and the exclusion of reasonable use for good reasons. However, I have noticed that the type of works in question and the plaintiff’s eligibility decided by the court is questionable and worth discussion.

1.Facts

Episodes in Dispute was a very popular screen work and became a hit and hot issue in the public after they were on TV. Episodes in Dispute became available online on 30 January 2017 and reached a view volume of 600 million only twelve hours later and a total view volume of 30 billion a month later so that it was a phenomenal screen work. Plaintiff bought the exclusive right to transmit information on the internet and seek protection for it from the copyright owner of Episodes in Dispute.      

The app and the website of “explaining movies with pictures” operated by Defendant are software for explaining and commenting films and movies with words and pictures. The homepage of the Defendant’s website said that “you can appreciate a good movie in ten minutes”. Type “Three Lives and Three Worlds Woven Together by Secrets” in the app of “explaining movies with pictures”. Click “play” and pull the progress bar and you can see the corresponding collection of pictures (“Collection of Pictures in Dispute”). Collection of Pictures in Dispute contained 382 pictures all from the first episode of Episodes in Dispute covering main parts of its video. Words in the lower parts of the pictures were added to by the person making Collection of Pictures in Dispute. You can watch the pictures by letting them move at a rate of five, eight, etc. seconds per picture or clicking on the next picture by using the software for “explaining movies with pictures”.

During the trial Plaintiff claimed that the type of the works in dispute were made in a way similar to production of movies (“Screen Work Equivalents”), while Defendant claimed that the act of providing a collection of pictures “used to explain a movie” did not mean providing a Screen Work Equivalent. The court finally decided that the act of making a collection of pictures from others’ Screen Work Equivalents amounted to providing such Screen Work Equivalents and the Defendant’s act was within the boundaries of the right to transmit online information on the internet and therefore an infringement of the Plaintiff’s right to transmit online information on the internet. Defendant lost the lawsuit. The court did not discuss or decide who owned the copyright in Collection of Pictures in Dispute in any part of the judgement.       

2.Ownership of copyrights in pictures from TV series

Article Fifteen of the Copyright Law of our country provides that copyrights in Screen Work Equivalents are owned by their producers, but scriptwriters, directors, photographers, writers of lyrics, composers and other authors have the right to show their names on the works; and writers of scripts, music and Screen Work Equivalents which can be used as single works could perform a single exercise of the copyright in these works.

Authors of pictures from TV series and movies are usually photographers. According to the above provisions, photographers of TV series and movies are independent authors. Can pictures from TV series and movies be used as “single works”? Some scholars believe that “works co-created by directors, photographers, editors, sound producers and other people are integrated into movies and cannot perform any single exercise of copyrights in these works, none of which can be “used as a single work”①. In fact there are countless cases of use of pictures from TV series as single works, for example in commercial ads for products. The example case above is a typical one. There is no difficulties in single exercise of copyrights by photographers, either logically or practically.   

In fact Defendant used pictures from TV Series in Dispute, not episodes. Plaintiff claimed that the works in question were Screen Work Equivalents and the court decided that Defendant infringed the Plaintiff’s right to transmit information on the internet without considering the owner of copyrights in the pictures from Episodes in Dispute. The court’s decision is illogical in this respect. 

Reasons for this stated in the judgement are that “the act of providing works to the public online or offline should not be narrowly construed as providing works in complete forms because it is original and creative expressions that are protected under the Copyright Law so that all uses of original and creative expressions in a work are under the control of the right to transmit information connected with the work on the internet” and that “in this case Collection of Pictures in Dispute did not contain any sound in Episodes in Dispute but contained 382 pictures from Episodes in Dispute which were not work elements available in the public domain but were part of creative and original expressions in Episodes in Dispute and therefore the act of Collection of Pictures in Dispute constituted a provision of a works”.

To follow the logic of the judgement, copyrights in “creative and original expressions in a work” or “work elements that are not available in the public domain” are absorbed into copyrights in the work as a whole, which is obviously against Article Fifteen of the Copyright Law. 

3. How legal authorities decide owner of copyrights in pictures from screen works?

Which type of works are pictures (or each picture) from movies and TV series? How could be copyright owner identified? To the best of my knowledge and practical experience, the issue originally arose from finding a legal way to protect animation images in our country over recent years.  

In the US and Japan, two traditional animation giants revenue from derivatives of animation images are main sources of income of animation producers. How is the right to develop derivatives of animation images, also known as “right of commercialization” protected in our country? In early stages of discussion, some people believed that animation images were represented by a series of pictures in the animation and therefore the animation owner was copyright owner. Legal authorities finally negated this belief and have gradually established the model of copyrights in art works.    

Some overseas companies are at advantage. For example, in the US Disney Company v. Mickele Company, the infringement happened in 2005, over fifty years after the debut of Mickey Mouse in the Steamboat Willie②, but the image of Mickey Mouse was an art work co-created by Walt Disney and UB Iwerks who were co-owners of copyrights in the original work which should be valid until the fiftieth anniversary of the death of UB Iwerks, ie. 31 December 2021, and therefore Defendant infringed the copyrights③. Others are at disadvantage. Typical cases are Ultraman④and Doraemon⑤cases. In each of the cases the plaintiff only had proof of having obtained a license from the owner of copyright in the TV series without a license from the designer of the Ultraman image and the owner of copyrights in Doraemon cartoon books, and consequently lost the lawsuit. With growth of the domestic animation industry and increasing attention to derivative products, in Afanti, Calabash Brothers and other cases, the same issue were to be dealt with by courts in the same way. This article will not further discuss it. 

All the above cases involved development of derivative products. Infringing products include not only products made by using pictures from original items but also ones made by changing them. There are typical cases of original items in which pictures from TV series are used. In the NCM Television Culture Investment Co., Ltd. v Yangzhou Kangkai Commerce Co., Ltd. and Zhejiang T-Mall Network Co, Ltd. infringement of the right to transmit work related information on the internet case, Hangzhou Internet Court decided that the act in question was an infringement arising from unauthorized use of pictures from the TV series Small Husband by a T-Mall shop in its advertisements for “plush baby squirrel toys of the same type as the one Small Husband Yao Lan had”. As stated in the written judgement, the originality of Screen Work Equivalents is reflected by moving images which essentially consist of static pictures which are not captured in static positions but reflect photographer’s selection and arrangement of essential elements of a work such as structure and light and can be original. TV series are physical images recorded in special medium. If the originality of a particular picture in them is adequate to meet the requirements of copyright law, the picture has all essential elements of photographic and other works under the copyright law and its implementation rules. Based on this pictures from movies and TV series should be protected as photographic works. In this case the plaintiff won because related authors and creators stated that TV series and photographic works and pictures from them were owned by the plaintiff. The case was recognized as one of top ten classic cases decided by the Hangzhou Internet Court.

Therefore, if “original and creative expressions” or “work elements” in Screen Work Equivalents including art and photographic works can be used as single works, owners of copyrights in these expressions or elements and Screen Work Equivalents may be different, which has been affirmed by legal authorities. 

4. Unreasonable reduction of the plaintiff’s burden of proof

In the example case Defendant did not argue against the Plaintiff’s eligibility but the court could be aware of it because the written judgement explains reasons why provision of pictures from Screen Work Equivalents is provision of Screen Work Equivalents. The court finally adopted a way that was in contrary to law and legal practices. I guess that the judge did so in order to facilitate the proceedings.  

People claiming the right to transmit information connected with TV series or movies on the internet are usually video platforms with exclusive licenses, not copyright owners. A platform having had the right to transmit information on the internet only need to sign a contract with copyright owner, ie. producer to obtain a written license with no need to obtain approval of copyright owners of elements in the screen work. Producers would not attach contracts or licenses signed with or by people creating such elements to documents of licensing the right to transmit information on the internet. 

The plaintiff’s burden of proof in a litigation case could not be reduced on this account. In Ultraman and Doraemon cases, plaintiffs were licensees of the right of commercialization and the licensed work and the infringing work were definitely used in the same way, but the court ordered the plaintiff to present additional proof of licenses from copyright owners of the characters. If the plaintiff and the defendant used the works in different ways, it would be more necessary to investigate the scope of licensed copyrights of the plaintiff, or otherwise, unfair to plaintiffs having lost. 

I don’t know the underlying facts of the case. Producers usually sign written contracts with photographers who are important to screen works. Copyright owners should be set out in the contracts. It is no impossible task for plaintiffs to give proof of that. The court could have been admired for its accepting Collection of Pictures in Dispute as a material substitute for Episodes in Dispute to exclude reasonable use of them. Unfortunately, the court did not differentiate copyrights in them or investigate the plaintiff’s rights. If copyright owners of Episodes in Dispute and pictures from it were different, the court would have made a mistake in deciding the case. 

①A Study of Single Use of Screen Works by Chen Shaoling, https://www.zhihedongfang.com/9377.html, last visit date: 11 August 2019

②The image of Micky Mouse first appeared in the Crazy Plane, which became available to the public on a later day than the Steamboat Willie, so its debut was in the latter.

③(2006) S.Z.F.M.S.C.Z.No.32, see quotations from the above article by Chen Shaoling

④ (2013) M.S.Z.No.368, (2012) E.M.S.Z.Z.No.23

⑤Bai Fan, IPR DAILY, 30 June 2014, http://www.iprdaily.cn/article_2464.html, last visit date: 11 August 2019