The assignment of claims or intangible property rights constitute "quasi-real rights," and legal consequences directly result in the transfer of such rights.  Therefore, intangible property rights such as patents, copyrights, or trademarks, shall take effect upon the transfer of rights when the transferor and transferee mutually express their agreement to the transfer. As for the existence of the "causal relationship," it does not affect the quasi-real right contract that has already produced the effect of transfer.  Even if the causal relationship is retroactively extinguished due to the transferor exercising the right of rescission, the quasi-real right contract does not thereby lose its validity.  The transferee is merely obligated to restore the original status pursuant to Article 259 et seq. of the Civil Code.  The above are confirmed by Supreme Court Judgments Nos.: 113-Tai-Shang-719, 108-Tai-Shang-1654, etc.

 

In the case facts of Judgment No.: 113-Ming-Chu-Su-86 rendered by the Intellectual Property and Commercial Court ("IPCC"), the Plaintiff and the Intervenor executed an assignment agreement for the disputed work, transferring the copyright of the disputed work to the Plaintiff in 2006. The Intervenor asserted that he terminated the assignment agreement in 2007, and that the effect of return arose upon service of the notice of termination and demand for return of the disputed work to the plaintiff. The Intervenor subsequently authorized the Defendant to use the disputed work.  The IPCC stated in this judgment that, since the Plaintiff denies that the Intervenor was entitled to terminate the assignment agreement, the parties' expressions of intent regarding the return of the disputed work have not been mutually agreed upon.  Even if the causal relationship (i.e., the assignment agreement) was lawfully terminated by the Intervenor, in the situation where the quasi-real rights transferring the disputed work's property rights differs from its causal relationship (assignment agreement), this cannot directly result in the already-transferred disputed work automatically reverting to the Intervenor's ownership. Therefore, the property rights to the disputed work remain vested in the Plaintiff by virtue of the quasi-real rights.

 

According to the rulings of the Supreme Court and the Intellectual Property Court cited above, in similar cases where the parties fail to reach an agreement on whether the intellectual property transfer contract is terminated and whether the intellectual property should be returned, since the relevant intellectual property remains owned by the transferee based on quasi-real rights, the assignor may first need to initiate litigation to seek confirmation of the termination of the assignment agreement and request the return of the intellectual property rights.  That is, the assignor may not directly utilize such intellectual property rights until a final court judgment is rendered or an agreement is reached between the parties. Otherwise, the assignor may face claims of infringement by the assignee.