Google was the registrant of the domain name – “gmail.com” which was registered on 13 August 1995. Google launched its “Gmail” email service on 1 April 2004, and firstly used the GMAIL logo - on the website – www.gmail.com on 6 April 2006. On 14 May 2010, Google registered its GMAIL logo as an art work with the Chinese National Copyright Administration.
Ai Si Mei, whom Google had no relationship with, was the current registrant of the domain name – “gmail.cn” and the operator of the website – www.gmail.cn. On 14 March 2006, Google found the GMAIL logo, and the words - “Welcome to use ISM Gmail” and “Gmail login” on this website. On 3 July 2009, Google found the words “Gmail China” and “Gmail email login” and the button – “Register Gmail E-mail”. When clicking the button, a new website – www.1997.cn popped up, showing “Gmail China”, “Gmail new E-mail”, “Gmail China’s website: Business Channel Gmail China”, and “Gmail China launched a new Gmail webmail based on Google technology”. This website was hosted by Ai Si Mei as well.
The Beijing No.1 Intermediate People’s Court concluded that, despite Google having registered it with the Chinese National Copyright Administration, the GMAIL logo did not constitute an artistic or literary work protectable under the PRC Copyright Law, since the five letters and their colors were an expression already existing in the public domain and were originally created by Google. Further, the court concluded that the work lacked sufficient artistic creativity to qualify for copyright protection. The court went on to conclude that Ai Si Mei could continue to use the domain name – gmail.cn - to provide email services, since he had been doing this since 2003 in China, long before Google’s provision of Gmail email services. The court said that Ai Si Mei should not mark its email services as “Gmail” though, since Google’s Gmail email already had a certain reputation through publicity when Ai Si Mei first marked its email as “Gmail” on 19 May 2004 (which Ai Si Mei should have known about). The court concluded that clearly Ai Si Mei’s change of its email name to “Gmail” was a deliberate attempt to obtain a free ride on Google’s reputation and property. Further, Ai Si Mei had the obligation to add distinctive marks to its email services, so that consumers could distinguish the email services provided by Ai Si Mei and Google’s Gmail service.
Based on the above, the Intermediate Court ordered Ai Si Mei to immediately stop using the GAMIL logo and Gmail marks in its email services, stop using “Gmail China” as the name of its website, cease carrying out false and misleading advertising, and to compensate Google the amount of RMB50,000.
Both parties appealed to the Beijing Higher People’s Court, and in June 2013, its decision was handed down. The court found that the GMAIL logo was originally created by Google and constituted an artistic work under the PRC Copyright Law. The court went on to say that the test for judging whether a logo constituted an artistic work should be judged from looking at the work as a whole and that even if some element of the work lacked originality or creativity, this did not mean that the work as a whole could not be protected under the PRC Copyright Law as an artistic work. Regarding the use of “Gmail” on the site, the court held that this was use of a “specific name of a known commodity” under Article 5(2) of the PRC Law Against Unfair Competition, and that Ai Si Mei did not use the Gmail mark in its email services under its domain name in good faith or some other legal manner.