As China is a member of the Berne Convention, most aspects of the Copyright Law will be relatively familiar to IP practitioners. Dan Plane and Shelagh Carnegie of the MARQUES China Team highlight some key aspects to note.

Types of copyrightable works

In China, any intellectual works that are (a) original in (b) the field of literature, art and science, and (c) can be expressed in a certain form can be protected by copyright.

As enumerated in Article 3 of the PRC Copyright Law, copyrightable works include:

1. Written works;
2. Oral works;
3. Music, drama, folk art, dance, acrobatic works of art;
4. Fine arts and architecture works;
5. Photographic works;
6. Audio-visual works;
7. Engineering design drawings, product design drawings, maps, schematic diagrams and other graphic works and model works;
8. Computer software; and
9. Other intellectual achievements that conform to the characteristics of works.

Importantly for IP enforcement work and fighting trade mark piracy, a distinctive logo is generally recognised by Chinese authorities as eligible for copyright protection.

Automatic protection upon creation or first publication

For a work created by a Chinese citizen, legal entity or other organisation, China protects copyright upon creation of the copyrightable work.

For works of foreigners or stateless persons, China extends protection to works falling within one of the following categories:

1. works created by foreigners and stateless persons that enjoy copyright protection according to an agreement signed between the country of origin or the country of habitual residence of the author and China or the international treaty to which they are both parties;
2. works of foreigners and stateless persons that are first published in China; and
3. works of authors and stateless persons from countries that have not signed an agreement with China or jointly participated in an international treaty but are published for the first time in a member state of an international treaty to which China is a party or are simultaneously published in a member state and a non-member state.

Registration not required but recommended

China has a voluntary copyright registration system which permits, but does not require, registration of works with the Copyright Protection Center of China (CPCC). The registration process with the CPCC is straightforward and usually only takes one to two months from the date of filing, providing a Chinese-language certificate that is readily enforceable in the PRC.

In theory, registration of a copyright is not a prerequisite for any work to obtain protection under the Copyright Law in China. However, in practice, copyright registration is accepted as prima facie evidence of copyright ownership and can be extremely helpful in enforcing against infringements in China.

For example, a copyright registration certificate can be: (a) used to support takedown requests filed with online platforms against infringers using the copyright-protected work without authorization; (b) used as evidence of prior TM rights sufficient to support oppositions or invalidations against pirated marks; and/or (c) recorded with China’s General Administration for Customs (GAC) to stop infringing goods being exported from or imported into China.

While Chinese authorities generally recognise foreign copyright registrations, for evidence originating outside of China, formality requirements (e.g., certification, apostille, and translation) must be met for that evidence to be admissible with courts and administrative authorities.

Further, in handling take-down requests, Chinese platforms generally make it difficult for complainants to submit foreign copyright registrations through their online systems, with them often simply ignoring the documents or raising excessive questions over the authenticity, scope of protection. Therefore, IP owners are advised to register their works with the CPCC where circumstances permit.   

Other supporting documents

Registration of copyright with the CPCC is typically conducted without substantive examination of originality. Given that, a registration certificate issued by the CPCC per se cannot serve as proof of originality. To this end, it is recommended that the copyright owner retain original, dated design drawings, manuscripts and/or other materials from the author(s) creating the works, even though these documents are not required in the registration with the CPCC.

For works created by employees, it is advisable to obtain a copy of their employment contract clarifying ownership of all intellectual property created by the employee during their tenure, as well as a confirmatory assignment of all such works (ideally at the time the work is created, but at least before they leave the company’s employment in any event).

If an external design firm was involved in the creation, it is important to retain the commissioning agreement and/or copyright assignment contract confirming ownership by the commissioning party/transferred ownership to the current owner. 

Copyright versus trade mark

If budget permits, consideration can be given to registering both copyright and trade mark for the same sign (logo). This is especially recommended for two types of right holders:

1. for those seeking cross-class protection of their registered trade marks or even for entirely unregistered trade marks. In China, unless a trade mark is deemed “well known”, a very high threshold that is increasingly difficult to meet, the rights holder does not enjoy cross-class protection (i.e., protection on goods or services dissimilar to those specifications designated in trade mark registrations. Obtaining a copyright for the logo effectively serves as an exception to this rule, permitting rights holders to extend protection to for the copyright work/trade mark to dissimilar goods and services.
2. for those who have works with designs that are highly artistic/aesthetic (and generally entirely non-functional), such as furniture, toys or apparel products, but for which Chinese registered design rights are lacking, expired, etc. For these right holders, a copyright certificate could be used to support a claim that the product qualifies as a “work of applied art.” It could also serve as a sword to attack a pirated trade mark or design patent application for a rights holder’s logo/product, and a shield to defend against attacks by pirates attempting to enforce their ill-gotten IP rights. Indeed, adjudicators in China, including courts, commonly rely on copyright in registry and enforcement actions.

Dan Plane is a lawyer with East IP Limited in Hong Konga and Shelagh Carnegie is a partner of Gowling WLG in Toronto. Both are members of the China Team. The Team frequently posts updates on IP developments in China on the MARQUES Class 46 and Class 99 blogs.