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Dispute over the Right of Paternity in the Copyright Act

Esther Lin

On January 25, 2018, the Intellectual Property Court has made a decision on 2017 Min Gong Shang Geng (One) No.1, which is a civil case on copyright infringement. The Intellectual Property Court considers in the decision that the author has clearly written his name on his work, when the infringer did not clearly show the name of the author in a reasonable way in use of such work; the act is deemed as infringement on the author's right of paternity.


Plaintiff A is an importer and retailer of wine. The representative of Plaintiff A drafted relevant advertising for wine products imported and retailed by Plaintiff A. Plaintiff A claims that the public in Taiwan is unfamiliar with wine, so they mostly rely on the recommendation of the advising when purchasing wine. Therefore, the advertising at issue is of essential importance to wine sales. Plaintiff A surprisingly found Defendant B was dumping the wine imported by Plaintiff A at a price much lower than cost. At the same time, Defendant B was copying the advertising at issue on the social network run by Defendant B and disseminating it online. Plaintiff A claims that Defendant B copied its advertising at issue without authorization and also deleted the words stating the authorship of Plaintiff A. The acts of Defendant B thus infringed Plaintiff A's right of paternity.


In the first instance, the Intellectual Property Court concluded that Defendant B was not copying all of the advertising at issue. Defendant B had deleted part of the advertising at issue and added the content showing that the Defendant was selling wine. Defendant B did not infringe Plaintiff A's right of paternity. After appealing to the Intellectual Property Court, the second instance of Intellectual Property Court considered that infringement of the author's right of paternity should be determined from the actual use by the accused infringer, specifically, whether the accused infringer's action leads the public to mistakenly believe the real author of the work at issue does not own the copyright. Furthermore, Paragraph 4, Article 16 of the Copyright Act provides that the author of a work shall have the right to indicate no name. Even if the accused infringer has not indicated the name of the author, it does not necessarily constitute infringement of moral rights. The advertising used by Defendant B did not indicate the name of Plaintiff A; however, the advertising would not lead the readers to mistakenly believe that Defendant B was the author of the work. In addition, Plaintiff A marked its name when releasing or publishing the original work; thus, the use by Defendant B made no difference. Therefore, Plaintiff A's claim that Defendant B infringed on its right of paternity is inadmissible.


The Civil Division of the Supreme Court held that the advertising at issue had been published on the website of Plaintiff A and indicated the name of the author. If that is the case, it is debatable whether there was no mark of the name of the author.  If there was a mark of the author's name, since the content used by Defendant B has not indicated the origin, it should be further determined whether it made the public mistakenly believe the author is not the Plaintiff A. The original trial ruled that although Defendant B had not indicated the name of the author, such action cannot be deemed as infringement of moral rights based on Paragraph 4, Article 16 of the Copyright Act (providing that the author enjoys the right to not indicate the author's name), which is a dubious conclusion.


The Supreme Court remanded the case to the Intellectual Property Court, which rendered a new judgment (i.e. 2017 Min Gong Shang Geng (One) No.1) stating that when the advertising at issue was published on the website of Plaintiff A, Plaintiff A actively indicated the author's name, and therefore when Defendant B was using Plaintiff A's advertising at issue, Defendant B was obligated to respect Plaintiff A's moral rights and use a reasonable way to indicate the name of the author. Without the authorization or consent of Plaintiff A, Defendant B searched on the internet and copied the advertising at issue, intentionally used all the content of the advertising at issue, without indicating the name of the author, and deleted the wording showing the authorship of Plaintiff A before posting the content on Defendant B's Facebook and webpage. The act has led the relevant public or consumers to become confused and potentially believe the advertising at issue is the work of Defendant B. Defendant B intentionally not indicating or deleting the wording showing Plaintiff A's authorship constitutes infringement of Plaintiff A's right of paternity.