[Case Number]

First instance: The Primary People’s Court of Pudong New Area of Shanghai Municipality (2018) Hu 0115 Min Chu No. 14920

Second instance: Shanghai Intellectual Property Court (2020) Hu 73 Min Zhong No. 544

[Basic Facts]

The plaintiff T* Productions Co., Ltd. (hereinafter referred to as “T* Productions”) is the copyright owner of the original Ultraman character images. The defendants Guangzhou B* Animation Media Co., Ltd. (hereinafter referred to as “B* Animation”) and some other companies produced the film Dragon Force: So Long, Ultraman using the alleged Ultraman images and screened it. In addition, it also organized the actors to wear masks and body painting of Ultraman images to perform at the release conference. T* Productions claimed that the Ultraman images used by B* Animation et al. were adaptations of its original Ultraman character images, and their use of the alleged Ultraman images to make the film infringed on the filming right of its works and their act of organizing actors to perform by wearing masks and body paint of Ultraman images infringed on the performing rights of its works. T* Productions therefore filed a lawsuit with the court, requesting that B* Animation et al. be ordered to cease their infringement, eliminate the adverse impact, and jointly and severally compensate RMB 10 million including economic losses and reasonable expense. 

[Judgment]

The court of first instance ruled that B* Animation et al. should cease their infringement, eliminate the adverse impact, and compensate T* Productions RMB 2 million of economic losses and RMB 500,000 of reasonable expense. Both T* Productions and B* Animation et al. refused to accept the judgment of first instance and appealed. 

In the second instance, Shanghai Intellectual Property Court held the view that the court of first instance made no improper judgment in applying Japanese laws to determine the ownership of intellectual property rights involving employment or commissioned creation based on the maintenance of certainty in the ownership of intellectual property rights, and that T* Productions acquired the copyright to the original Ultraman character images based on the Letter of Confirmation concerned. The alleged Ultraman images was modified from the original Ultraman character images, with the main features remaining unchanged, and thus constituted a copy of T* Productions’s work. B* Animation et al.’s use of the alleged Ultraman images to shoot a film constituted an infringement of T* Productions’s filming rights to its works. B* Animation et al.’s organization of actors to wear masks and body painting of Ultraman images was merely a reproduction of Ultraman images through the special medium of human body, and the actors did not reproduce the works through their movements, sounds or expressions, which did not constitute an infringement of the performing right but the reproduction right to the works. Therefore, Shanghai Intellectual Property Court dismissed the appeal and affirmed the original judgment.

[Significance]

This case involves the determination of copyright ownership of works created abroad. Article 48 of the Law of the People's Republic of China on the Laws Applicable to Foreign-related Civil Relations stipulates that the ownership and content of intellectual property rights shall be governed by the law of the place where the protection of such intellectual property rights is requested. As the plaintiff T* Productions filed an infringement lawsuit in China, the Chinese law should, in principle, be applied to determine the ownership and content of the copyright in the works concerned. However, the determination of copyright ownership in this case also involves the determination of whether the relationship between T* Productions and the natural person who actually created the works is a relationship of employment or commissioned creation. If the law of the place where the protection is requested is applied in determining the above-mentioned relationship, there may be different right owners to the same works because laws are different in the place where the protection is requested. Therefore, the judgment specified that when the issue of copyright ownership involves contractual relationships such as employment and commissioned creation, in order to maintain the certainty of copyright ownership, the law applicable to the contractual relationship should be applied to determine the ownership of the copyright.