Dual Protection for Industrial Designs Confirmed by Court

In a recent decision, the appellate court, Beijing High People's Court affirmed the decision made by the trial court, Beijing First Intermediate People's Court in INTERLEGO AG v. Tianjin COKO Toy Co., Ltd. relating to copyright infringement of the Lego bricks. In its landmark decision, the high court confirmed dual protection under the patent law and copyright law for industrial designs as works of applied art.

The Swiss company INTERLGEO AG is a related company of the Lego Company, a Danish toy giant famous for its interlocking brick toys. The Lego toys were imported to China as early as 1992. INTERLGEO discovered that interlocking bricks, which were very similar to Lego bricks, were used in a range of children's play sets provided by a Chinese company, Tianjin COKO Toy Co., Ltd. With the evidence obtained from a big department store in Beijing, INTERLGEO brought a lawsuit against COKO for copyright infringement.

The trial court confirmed that as a member of the Bern Convention for the Protection of Literary and Artistic Works, China was obligated to protect works of literature and art originated from member states of the convention. In accordance with the convention, works of literature and art include works of applied art. The Regulation of Implementing International Copyright Convention of China also stipulated that foreign works of applied art were protected in China for 25 years from the date when the works were made within the members of the Bern Convention. The trial court recognized 50 pieces among the 53 pieces of the Lego bricks submitted to the court by the plaintiff were qualified as works of applied arts. The court is of the opinion that to be qualified as works of applied art, industrial designs must meet the following requirements: 1) practical applicability; 2) artistic quality; 3) originality; and 4) reproducibility. The trial court held that 33 pieces out of the 50 pieces of the Lego bricks were infringed, as COKO's products were substantially similar to the Lego's. However, the rest 17 pieces of the Lego bricks were not infringed since there was no substantial similarity between the COKO's and the Lego's. Furthermore, the 17 pieces could not enjoy copyright protection because the level of the originality is not high enough and considering the balance of interests between the parties. The court ruled that COKO must stop manufacturing and selling the infringing products, publish an apology in Beijing Daily, and pay 50,000 RMB (equivalent to about $6,000) damages to INTERLEGO.

COKO and INTERLGEO did not satisfy with the decision and appealed to the appellate court. COKO argued that the Lego bricks did not qualify as works of applied arts and works of applied arts even could not be protected by the Chinese copyright law. In practice, industrial designs should be protected by the patent law. There is no evidence showing that industrial designs could enjoy "dual protection" under the copyright law and the patent law in the judicial history of China. INTERLEGO had applied patent applications for the Lego bricks. Therefore, they could not be protected by the copyright law. INTERLEGO made an argument that the 3 pieces of the Lego bricks which were not recognized by the trial court as works of applied art were qualified and therefore should be protected. INTERLEGO alleged that the trial court was wrong when judging the 17 pieces of the Lego bricks were not infringed on the basis that the level of the originality is not high enough to be afforded copyright protection with the consideration of "balance of interests".

The appellate court, Beijing High People's Court, upheld the trial court's ruling. Regarding the issue of "dual protection", the court is of the opinion that there is no evidence showing that Chinese laws prohibit providing dual protection under the copyright law and patent law to foreigner's works of applied art. Although patent applications were filed for the Lego bricks, they can enjoy copyright protection simultaneously and continuously.