(By Albert Chen) In 2010, Getty Images China (“Getty China”) filed a copyright infringement suit against Sinotrans Chongqing Co. (“Sinotrans Chongqing”). After the first instance, second instance, and review, the Supreme Court confirmed the copyright held by Getty China over the pictures involved in the case. The point that deserves the most attention in the case is the different understandings on whether the creation date of the copyright is an essential requirement for showing infringement.

Case summary:

Getty Images Inc. (“Getty”) is a globally known photo agency. It licensed Getty China to use its branded pictures in mainland China for the period of August 1, 2005 to June 30, 2010. In 2006, Sinotrans Chongqing (“Sinotrans”) signed an agreement with Chongqing Jiaheng Advertisement Co., Ltd. (“Jiaheng”) entrusting it to plan, design, and manufacture the company’s brochure. In the process of designing the brochure, Jiaheng used stock photos that Getty China believed were part of the “Photodisc” series licensed to it by Getty.

For this reason, Getty filed a lawsuit in the Chongqing No.1 Intermediate People’s Court (the “Intermediate Court”), accusing Sinotrans of infringement and demanding an apology as well as compensation. After the hearing, the Intermediate Court ruled that the focus of the dispute is whether Getty China had the copyright over the picture involved in the case. But, the current notarized evidence provided by Getty China was only of Getty’s website, www. GettyImages.com, from March 23, 2009. Furthermore, the pictures themselves had no upload date. For this reason, with no other evidence presented to show the time, the current evidence could only prove Getty China had a copyright over the picture from March 23, 2009. However, the design of the defendant’s brochure was in 2006, earlier than the proved date. On these grounds, the Intermediate Court refused all Getty China’s claims.

Getty China then appealed to the Chongqing Higher People’s Court (the “Higher Court”) and also submitted the following evidence:

1. The copyright certificate: used to prove that Getty China had but was not limited to the right to exhibit, sell or license others’ use of the picture involved in the case within the period of August 1, 2005 to June 30, 2010.

2. The CN domain name certificate: used to prove that Getty China registered and was awarded the domain name www.GettyImages.cn starting on August 4, 2005.

3. Two written notarizations issued by offices in Beijing and Dalian: used to prove that Getty China uploaded the pictures to its website on August 25, 2005.

4. Other agreements and related materials: used to prove that Getty China put the pictures into the commercial operation in mainland China after it was licensed.

After hearing the case, the Higher Court held that, comparing the notarized pictures from thefirst and second instance, the only difference is the watermark “GettyImage ” on the upper lefthand corner, which was only present on the picture presented in the second instance. Furthermore, the pictures were notarized on “admin.GettyImage.cn,” which is the editing platform of Getty China where all of the pictures and their information could be edited by the company itself. Considering this, the claim that the pictures’ upload in 2005 could not be adequately proved. Therefore, the second instance court refused Getty China’s appeal and sustained the decision made by the first instance.

Dissatisfied with the judgment, Getty China applied to the Supreme People’s Court (the “Supreme Court”) for review. After receiving the application for review, the Supreme Court decided to hear the dispute. With the evidence submitted in the previous instances, as well as verification of the factual investigation, the Supreme Court decided that Getty China had the copyright over the picture for the following specific reasons:

1. As to ownership of the copyright, the Copyright Law provides that if there is no adverse evidence, anyone who indicates his/her name on the work is deemed as the author. The picture in this case all had Getty watermarks and right reservation claims. Therefore, the Copyright Law, Getty Inc. is the rights holder, and Getty China also holds rights because of the license.

2. As to the creation time of the copyright, the Supreme Court held that Sinotrans neither presented evidence to prove its rights over the picture nor disproved the rights claimed by Getty China. Therefore, it can be found that the pictures were published before the brochure’s use in 2006, so the specific time of publication is not important in the case.

3. On whether Sinotrans infringed, the Supreme Court held that although Sinotrans argued that it did not design and manufacture the brochure, the brochure was actually used by Sinotrans in its daily operations, which infringed the right of copy and publish the work. Therefore, the Supreme Court held that infringement was established, and Sinotrans must accept legal liability.

Lawyer comments:

The largest focal point in the case is the courts determination of the ownership of the copyright and the establishment of the infringement based on the existing evidence due to a lack of proof submitted to demonstrate the creation date of the work. Furthermore, the different opinions among the first and second instance courts over the issue show different typical opinions on this problem, and this difference deserves study:

1) In terms of the copyright ownership of the pictures, all three courts decided that it was Getty’s work, and the main basis for this decision was that the Copyright Law regulates that the one affixing his/her name to the work is the work’s rights holder. But, the way that Getty and Getty China indicated authorship in the case can also be a reference; there must be a watermark of the holder’s name on the work and the right reservation claim attached.

2) With regard to the copyright creation time’s influence on the infringement decision, it can be seen from the Supreme Court’s opinion that when the period of the infringement is long, the right holder does not necessarily have to prove the work’s creation date, which, in law, is the work’s right creation date. When the user cannot prove his/her right to use the work or disprove the holder’s rights over it, it can be deduced that the user has adopted the picture without a license from the holder. In other words, the user has infringed the lawful rights of the owner. Put in a different way, a demonstration of the work’s creation date is only required when the unlicensed user claims his/her use of the work has stopped before the holder acquired the copyright.

3) Aside from whether Getty exceeded the protection term of the work, the main problem with Getty China’s right protection is the criteria for compensation. Although according to China’s laws and regulations, the right holder of the work, including the user licensed by the holder, may demand the infringer to cease use, only the copyright holder or exclusive licensee may claim compensation. While Getty China has many works, all have been licensed nonexclusively. Therefore, when filing the lawsuit, the infringer will defend itself by claiming that Getty China is not the rights holder or the exclusive licensee, and thus demand the court refuse the plaintiff’s compensation claims. According to the cases we have studied and our communications with judges and lawyers, Chinese courts have granted Getty and Getty China super-national treatment, which means that even though the plaintiff cannot prove itself to be the rights holder or have the exclusive licensing rights, the court will tend to judge in Getty’s favor.

Lawyer Contacts

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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