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THE DISTINCTION BETWEEN "REPRODUCTION" AND "PRAC-TICE"
In a recent appeal judgment, the Supreme Court considered the question of whether an act of making a printed circuit board from a circuit diagram should be regarded as "practice" as re-ferred to in the Patent Law, or as "reproduction" as referred to in the Copyright Law.
In the case concerned, the defendant had printed a circuit diagram, taken from the main board of a network patch plate, onto circuit boards, and had sold the resulting product to other persons. In an appeal against the original trial verdict, the Taiwan High Court had previously found in fa-vor of the defendant, on the grounds that a circuit board was a three-dimensional object, and its manufacture involved putting the circuit diagram into practice, rather than reproducing it. As such, the defendant's actions did not fall within the scope of the Copyright Law.
However, the Supreme Court held that the judgment of the Taiwan High Court did not ex-plore the distinction between "reproduction" and "practice" in sufficient depth. In its judgment, the Court stated that in order to determine whether the act of producing a three-dimensional circuit board from a circuit diagram should be regarded as "practice" as referred to in the Patent Law, or as "reproduction" as referred to in the Copyright Law, it is necessary to compare the two-dimensional pictorial work with the result-ing three-dimensional object; it is not the case that whenever a two-dimensional pictorial work is converted into three-dimensional form, such conversion is "practice" and not covered by the Copyright Law.
Article 3 Paragraph 1 Item 5 of the Copyright Law defines "reproduction" as reproducing a work by printing, reprography, sound recording, video recording, photography, or other means. It makes no distinction as to whether the result of such reproduction appears in two-dimensional or three-dimensional form. If the content of a pic-torial work is simply fixed in two-dimensional form on a three-dimensional object, or if the three-dimensional form of an object replicates in a simple manner the content of a two-dimensional pictorial work, then such re-production falls within the meaning of repro-duction as defined in the Copyright Law.
A circuit diagram is a pictorial work, and as such is protected by the Copyright Law. The district courts had determined that the layout, routing, subdivisions, and placement of subsections of the circuits on the circuit boards manufactured by the defendant were highly similar to those of the disputed circuit diagram, differing from them only in minor respects. In the courts' opinion, this similarity was due to plagiarism. In the Su-preme Court's view, the Taiwan High Court should have considered the following questions in determining whether the defendant's actions in making circuit boards on the basis of the dis-puted circuit diagram were indeed entirely "practice" as referred to in the Patent Law, and in no way "reproduction" as referred to in the Copyright Law: (a) whether the disputed circuit diagram was reproduced in a simple manner on the circuit boards made by the defendant; and (b) whether, in any part of the process of producing the circuit boards, the defendant had made use of printing, reprography, photography or other means to cause the content of the disputed circuit diagram (including its layout, routing, subdivi-sions, and placement of subsections) to be rep-licated on the circuit boards. These were im-portant criteria for determining whether the de-fendant's actions had violated the Copyright Law.
Furthermore, the Copyright Law also protects the right of adaptation. Adaptation is defined in Article 3 Paragraph 1 Item 11 of the law as the creation of another work on the basis of a pre-existing work, by translation, musical ar-rangement, revision, filming, or other means. If, in addition to reproducing the content of a two-dimensional pictorial work in three-dimensional form in a simple way, a three-dimensional object is also the expression of new creative endeavor, and if the innovative three-dimensional object so produced is also a work within the meaning of the Copyright Law, then its production is an act of adaptation, and the three-dimensional object is a "derivative work" that is also subject to the provisions of the Copyright Law. If the maker of the three-dimensional object does not obtain the consent of the holder of economic rights in the two-dimensional pictorial work, then his actions infringe on the right of adaptation, which is a part of copyright. For example, a sculpture made on the basis of a sketch is a derivative work.
When making the circuit boards based on the disputed circuit diagram, the defendant had in-troduced some minor differences of content, which were the expression of new creativity. However, if the content of the pictorial work (i.e. the disputed circuit diagram) was reproduced in three-dimensional form in a simple manner, then this would also appear to infringe on the right of adaptation.
The Supreme Court set aside the previous appeal judgment, and referred the case back to the Taiwan High Court for reconsideration. The Supreme Court's analysis provides useful guid-ance for similar cases in the future.