(By You Yunting) China is large consumer of software, and, as indicated by the statistical display of the Copyright Protection Center of China (note: the link is in Chinese), in the first half of 2012 alone, China completed 58, 333 software copyright registrations. Today, we will introduce the legal issues concerning the rules for software naming during copyright registration, the conflicts between software names and trademarks, and the special position of software names within the online game industry.
I. Software naming rules
Currently there is no nationwide legislature concerning software naming. The most representative local rules are the Rules on Software Product Naming of Beijing (the “Rules”) promulgated by Beijing Software Association. According to the Rules, the newly developed software’s name shall include “brand, product features and functions, and version number,” which shall be arranged as “brand + product features and functions + version number.” When the software is developed for a third party, it is permitted to add the “client’s name” before the “product features and functions.”
Furthermore, the Rules also make the following demands on the three main elements described above:
The brand must include the logo of the software company, and it may also contain the logo of the product as well as the letters or pinyin. The brand shall not solely indicate “China,” local names, or other proprietary names.
2. Product features and functions
This element shall concisely explain the software’s applicable industry and its feature and function. Such explanations shall not be vague or all shown in letters, and when an abbreviation is used, it shall be shown in brackets. The product model can be placed before the product feature and function and does not need to be placed in brackets. Internationally recognized names such as LINUX and WINDOWS can be shown in this part and do not need to be bracketed.
3. Version number
Within the name of software product, the version of the software shall be indicated in VX.X format, and the X shall be the specific numbers.
II. Legal issues concerning identical or similar software names
1. Is it possible to see two items of software of the same name or similar names?
There are no clauses on how to handle this situation within the Computer Software Copyright Registration Measures and other relevant regulations. In practice, there has not yet been a case where two items of software have had the same name. But, if the names of two items of software are similar, such as having the same brand, generally their application for copyright registration will be approved by the Copyright Protection Center, the institute affiliated with the National Copyright Office and in charge of copyright registration.
2. Conflicts between software names and trademarks or trade names.
In practice, the Copyright Protection Center will not look up whether there is a conflict between the software and other rights before issuing the software registration certificate. So, even if the name infringes others’ trademark or trade name, it will still not influence registration of the copyright or edition number. But, the rights holder of the trademark or trade name can protect their rights through the Trademark Law, the Company Law and Anti Unfair Competition Law. Additionally, if a party believes its rights are being infringed by a similar name, it can file a lawsuit against the holder of the registered software claiming trademark infringement, trade name infringement, or unfair competition. Afterwards, if the party is successful in the case, they can use the effective judicial decision to demand that the Copyright Protection Center change the name change of the software.
3. The special commercial value of software names in the online game industry
The Chinese government carries out fairly strict supervision over the online game industry. According to the existing laws and regulations, an electronic publication edition number approved by the General Administration of Press and Publication of China is required before the online game can start operation. When the game is publicized and run by the operator, the game shall be named according to the approval, and the name of the game cannot be easily changed without the Administration’s approval. The first requirement to receive the electronic publication edition number is to obtain Software Copyright Certificate, and the name of the electronic publication shall also follow the name indicated in the copyright certificate.
Therefore, when battling over brands, many game companies pay great attention to software name. Many popular games will receive objections from their competitors and be drawn into protracted litigation while in the process of trademark application, which leaves the game companies with no means to receive trademark protection. At that time, the electronic publication edition number issued by the authority plays a prominent role in the dispute because it is issued in the government, and the party possessing it can take a dominant position in market competition. The most representative case is the dispute between T3 and 9You over Audition. Both sides were licensed to run the game in mainland China from different licensers. When both parties filed opposition to other’s trademark application, 9You, who got the edition number from the Administration, took the leading position in the dispute.