Constituent Elements of Works Series(11)

"Hurricane" Element Case: Application of the Counterfeit Confusion Clause

Article 6, Paragraph 1 of the Anti-Corruption Law stipulates that business operators shall not carry out the following acts of confusion to lead people to mistakenly believe that they are the goods of others or have a specific connection with others: (1) unauthorized use of marks that are identical or similar to the names, packaging, decorations, etc. of goods that have a certain influence on others. The name of a trade with a certain degree of influence protected by the Anti-Unfair Competition Law refers to a name that has a certain degree of distinctiveness and can identify the source of the goods.

On the issue of whether the use of the title of "Hurricane" in the alleged infringing video constitutes an act of unfair competition by counterfeiting and confusion, the court held that:

• Although the title of a TV series is a highly concise content of the series, it can also play a role in identifying the source of goods or services. TV dramas are highly time-sensitive cultural commodities, and whether they meet the requirements of having a certain impact can be determined through relevant factors such as the broadcast platform, publicity, ratings, clicks, and social media discussion during the premiere or popular broadcast period.
• "Hurricane" is a common Chinese word, which usually means a sudden storm and does not have high significance. However, through the plaintiff's investment of massive resources in publicity, distribution, and marketing, "Hurricane" has now acquired a second meaning, that is, it directly refers to the "Hurricane" TV series.
• Based on the following circumstances, it can be determined that "Hurricane" can play a role in identifying the source of goods after extensive use and publicity, and falls under the "identification of commodity names, packaging, decorations and other marks that have a certain degree of influence" as provided for in Article 6, Paragraph 1. As the rights holders of "Hurricane", the two plaintiffs have invested a lot of business resources in the publicity, dissemination and user reach of the series, and should enjoy the market popularity, commercial interests and competitive advantages condensed in "Hurricane".

1) The data submitted by the plaintiff on Kuyun data, Yunhe data, lighthouse data, watermelon data, Baidu index, Weibo topics, Douban, Zhihu on ratings, broadcasts, market share, popularity, discussion and other data show that "Hurricane" has established a very high degree of popularity and public discussion topics during the premiere period. meantime

2) "Hurricane" was also rated as the "2022 Weibo Night Festival Annual Drama" and "Drama Yao Dongfang ·2023 TV Drama Quality Ceremony Quality Model Play", and many media such as "People's Daily", "Guangming Daily", "Workers' Daily", "Wen Wei Po" and other media have also reported extensively on "Hurricane".

• As to whether the use of "Hurricane" in the alleged infringing video will cause confusion, the judgment first cited Article 12, Paragraph 3 of the Anti-Law Judicial Interpretation, proposing that the scope of protection of the Anti-Law on the "certain impact" mark is dynamically changing—the higher the distinctiveness and popularity of the mark, the wider the categories of goods or services it covers; Then it is pointed out that the unauthorized use of "Hurricane" in a field far away from film and television may also lead to confusion among the relevant public for the following reasons: "Hurricane" has been widely used by the two plaintiffs, and has a very high popularity in terms of clicks, broadcasts, comments, topics and other fields in a short period of time.
• Based on the following analysis, the court found that the use of "Hurricane" in the alleged infringing video would cause confusion:

1) The intention of using "Hurricane" in the alleged infringing video is to climb the popularity of "Hurricane" and attract traffic to the game "King of Glory", so the key to whether there is confusion lies in determining the relevance of the game service of "King of Glory" and the film and television service of "Hurricane";

2) Film and television and games both belong to the entertainment industry, and the integration and development of the two is an important development trend in the current cultural field. In the entertainment market, there are often cross-border cooperation in which the rights holder of film and television works authorizes others to develop games, or the game rights holder organizes cross-border cooperation in the production of films, which shows that there is an extremely close correlation between games and film and television, and the unauthorized use of "Hurricane" can easily lead to misunderstanding by the relevant public about the source of the game "King of Glory" promoted by the allegedly infringing video. moreover

3) The alleged infringing video is also marked with words such as "Hurricane Version" and "1:1 Restoration of Hurricane Plot Gameplay", which are likely to cause confusion among the relevant public, and the subjective intention of attaching the popularity of the right work and misleading consumers to make a choice of the game product based on misidentification is obvious, which is sufficient to cause the relevant public to mistakenly believe that the game service promoted by the allegedly infringing video has a specific connection with "Hurricane" such as commercial alliance or licensed use.

On the issue of whether the use of plot elements of "Hurricane" in the alleged infringing video constitutes an act of unfair competition by counterfeiting and confusion, the court analyzed as follows:

• The two plaintiffs claimed that the alleged infringing video contained the names of characters such as "Li Xiang", "Gao Qiqiang" and "Xu Jiang", props and environmental elements such as "The Art of War", "Jiuchang Street", "PHS" and "Bai Jinhan", and plot elements such as "Lao Mo Lollipop" and "Fish Seller", which also belonged to the identification of the source of the goods; Although the above elements run through the episodes of "Hurricane", they are still common names of people, objects or places, and do not have high distinctiveness;
• Although "Hurricane", as a cultural commodity name, can play a role in identifying the source of the product through extensive use and publicity, it does not indicate that the relevant public has established a stable connection between the names of individual characters, place names or other plot elements in the play and "Hurricane", or that the aforementioned elements have specific reference or identification functions;
• However, it should be pointed out that although the use of the above-mentioned elements alone cannot directly establish a stable connection with "Hurricane", the concentrated use and display of the above-mentioned elements in large quantities will easily lead to confusion and misidentification of the source of the goods by the relevant public, and still constitute unfair competition.

To sum up, the court held that the defendant Qi, as the actual controlling entity of the Douyin account "Little Cousin Says Legend", still used the name of the "Hurricane" episode on a number of allegedly infringing videos produced and released by the defendant, and marked the "Hurricane version" and the characters, props, environment and other elements of "Hurricane", which was an act of unfair competition by counterfeiting and confusion, knowing that "Hurricane" had a high market reputation.

On the issue of the liability of the other defendants, the Court commented as follows:

• Although the company argued that it did not participate in the production and release of the allegedly infringing video, it was not liable for the actions of the third party. However, according to the law, it constitutes joint infringement as an advertiser:

1) Article 1168 of the Civil Code stipulates that "if two or more persons jointly commit a tortious act and cause damage to others, they shall be jointly and severally liable." Article 31 of the Advertising Law stipulates that "advertisers, advertising agents and advertisement publishers shall not engage in any form of unfair competition in advertising activities." ”

2) In this case, the company entrusted Qi to produce and publish videos for the promotion of the game "King of Glory", and it was also agreed that Qi would guarantee that the advertising materials would not infringe. Accordingly, the focus should be on examining whether a certain company constitutes joint infringement. Joint infringement refers to the act of jointly committing infringement and causing damage to others, and mainly examines whether there is a correlation between the infringers in terms of subjective fault and objective acts.

3) Based on the following review, it can be determined that a certain company constitutes joint infringement:

A. In the subjective aspect, there is obviously a fault on the part of the playing company. The fact that the alleged infringing video uses a large number of elements of "Hurricane" is obvious, especially in the legendary mobile game in the alleged infringing video showing the alleged infringing game "King of Glory" as the "Hurricane version", and a certain company, as the operator and advertiser of the alleged infringing game "King of Glory", needs to bear a certain limit of review obligations in the advertising activities, and should be aware that the alleged infringing video may constitute infringement, rather than transferring the review obligation and the subject of infringement liability through agreement;

In order to prove that the company and the company only have a cooperative relationship with the company for advertising services, the company submitted the "Advertising Information Service Contract" signed by the two parties, and the contract stipulates that "Party B guarantees that its promotion methods do not violate national laws, regulations and policy provisions, and that the advertising materials produced or published by Party B and its entrusted/authorized third parties do not contain illegal information, bad information, or illegal content such as suspected infringement or unfair competition." Party B shall not use malicious fraud, defamation of goodwill, false publicity, malicious bidding, posting publicity, infringing copywriting inducement, false brushing, misappropriation and grafting of third-party content resources, illegal use of other people's trademarks or setting associated search keywords with other people's trademarks and other infringing or unfair competition methods in the process of advertising and promotion, so as to ensure that it does not infringe upon the legitimate rights and interests of Party A and any third party. (Party B refers to a certain company).

B. From the objective aspect, although the company did not directly carry out the infringing act, it should have known that the alleged infringing video might be infringing, but did not take countermeasures, which ultimately led to the infringement result.

C. The above is enough to show that there is a close connection between playing a certain company and infringement.

• About Xue's company and Qun's company. Because the evidence in the case only shows that the allegedly infringing video produced and published by Qi Company contains a large number of elements related to "Hurricane", and Xue and Qun did not carry out work related to the production and release of the allegedly infringing video, it does not constitute unfair competition.

Tomorrow, we will look at the application of Articles 8 and 2 and the determination of legal liability.

Reference: December 29, 2023 (2023) Xiang 0105 Min Chu No. 2875