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How to Distinguish between Independent Work and Derivative Work?



While a creative work completed without reference to the previous works of others is considered an independent work, most of the creative works nowadays do contain references to the works of predecessors.  Should all these works be considered derivative works which may, or may not, infringe on adaptation rights?  The Supreme Court put forth the judging standard in the 2017-Tai-Shang-Zi No. 1635 Civil Judgment made on February 8th, 2018.

 

The plaintiff in this case claimed that it originally entrusted the defendant company to develop software.  Although the defendant delivered the software, the defendant used and adapted such software without the plaintiff's consent.  Such action infringed upon the plaintiff’s moral rights and economic rights of the work, and the plaintiff requested that the defendant company and its responsible persons should be jointly liable for compensation, and stop using the software.  The defendant contested that the software was continually changed, and new codes were added to meet the needs of the company.  The scope of the changes they conducted was so extensive that they far exceeded the extent of a mere adaptation, and should be considered an independent work.

 

After the First Instance and the Second Instance of the Intellectual Property Court reviewed the case, they considered that the defendant and its affiliates should be allowed to copy, modify, and use the software without compensation, according to the contract of the software development between both parties.  In general, a computer program is written in code and converted into the digital format that can be read by a hardware machine.  The former is called “source code” whereas the latter is called “object code.”  As both “source code” and “object code” are two sides of the same computer program, they should be regarded as the same work.  The aforementioned contract has already authorized the defendant and its affiliates to adapt the source code of such software.  In addition, according to the testimony of relevant witnesses, the software did not meet the needs of the defendant.  That's why the defendant continued to rewrite and expand the software.  The Intellectual Property Court further compared the user interface of the original software with that of the software used by the defendant, and considered that the two have completely different designs and expressions.  The software used by the defendant should be considered a new work.  In addition, the Intellectual Property Court pointed out that independent development does not necessarily mean that a new work must be created from scratch.  The plaintiff could only prove that the defendant’s personnel contracted the software.  What the plaintiff could not prove is whether the software used by the defendant was the same or similar to such software, nor did it prove whether the defendant distorted, mutilated, modified, or otherwise changed the content, form, or name of the work, thereby damaging the reputation of the plaintiff.  Therefore, the plaintiff’s claim was dismissed.  The plaintiff disagreed with the judgment and appealed to the Supreme Court.

 

After hearing the case, the Supreme Court still agreed with the holdings of the First Instance and the Second Instance of the Intellectual Property Court, and emphasized that: The so-called independent work refers to the fact that a work is completed independently without copying the works of other people during the creative process.  Surely an independent work is done on the condition that its author creates a work from scratch without any contact with works by others.  However, even if an author refers to others' works during the creative process, such a work can still be considered an independent work on the condition that (x) the author's work and the original work are objectively distinguishable and that such differences are not only nuanced ones, and (y) the author's work retains its originality.  In the latter case, if the work is a derivative work adapted from another’s work, it is possible that it constitutes infringement on the adaptation right.  Still, if the "adapted" work embraces a spirit and expression not found in the original work, and is not the same or substantially similar to the original work, such a work then has nothing to do with adaptation and should simply be considered an independent work.  There is no infringement on the adaptation right.  Stating thus, the Supreme Court affirmed the judgments of the First Instance and the Second Instance of the Intellectual Property Court.

 

Based on this case, a work can still be considered an independent one even if it contains references to others' work, as long as "if [it] embraces a spirit and expression not found in the original work, and is not the same or substantially similar to the original work."  The key to differentiating an independent work from a derivative one lies in the scope of the objective differences between the two works.  Only when "such differences are not only nuanced ones and such new work has its originality" can a new work be qualified as "independent" and thus have nothing to do with infringement on the adaptation rights of others.
 



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