The registration of copyright in China can be a useful weapon for brand owners in the protection of intellectual property rights.
Copyright protects literary, dramatic, musical and artistic works, sound recordings, films, television and sound broadcasts and allows creators to control how their works are used, by whom, and on what terms. For brand owners, copyright subsists in stylised trade marks such as logos and devices as well as product images.
Copyright protection takes effect from the date of its creation and by default, copyright subsisting in a particular work is owned by its creator. China, like Australia, is a party to the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) so that copyright subsisting in an artistic work created in Australia will generally entitle the owner to automatic copyright protection in China.
While it is not mandatory to register copyright in China, there are key advantages in holding a Copyright Certificate of Registration issued by an official government body, the Copyright Protection Center of China (CPCC).
- The Copyright Registration Certificate can be used as prima facie proof of copyright ownership and validity in legal proceedings involving the enforcement of copyright before local administrative bodies and the Chinese courts. By contrast, if evidence of copyright creation from foreign sources is submitted, it must first be notarised, legalised and translated. However, this would not be required if the owner can simply produce a Chinese registration certificate.
- It can assist in the enforcement of rights by way of cease and desist letters and it will generally assist with online complaints to e-commerce platforms such as Alibaba and JD.com.
- The Copyright Registration Certificate can be lodged with Chinese customs to assist in blocking potentially infringing goods from being imported into or exported from mainland China.
- A Copyright Registration Certificate can also be used as evidence of prior rights in trade mark oppositions and cancellation proceedings. By way of example, against third party bad faith applications filed and/or registered by pirates; where a pirate having acquired the mark in bad faith takes infringement action against the true owner of the mark; or, in the unusual situation where another party has filed an application to register a trade mark for the same or similar goods/services on the same date your application was filed, and a decision must be made as to which party has the earliest rights.
- Registration of copyright will provide you with some rights in a logo or device mark in circumstances where it has not been possible to secure a trade mark registration. Irrespective of whether a trade mark registration is held, while copyright registration will provide limited rights against infringers to identical or near identical marks, copyright is not limited to particular goods and services as is the case of a trade mark registration - which are typically obtained in respect of the owners core goods and services.
- The process of obtaining a registration is relatively low in cost and can often be obtained in several months as there is no substantial examination of applications for copyright registration in China and it is not necessary to establish that the copyright work was published in China.
- In the event that a third party pirate registers your copyright in bad faith using forged documents it can be a very difficult and expensive exercise to have it cancelled by the CPCC. If a third party registers your copyright in bad faith, the true owner may also face allegations of copyright infringement from the pirate.
Creation and ownership of copyright
Prior to seeking registration of copyright, it is crucial to check that you are in fact the owner of the copyright subsisting in the relevant work. Accordingly, where a third party is commissioned to create the artwork for you, it is prudent to ensure that assignment of copyright is part of the contract. If not, it will be necessary to obtain a retrospective assignment from the creator, which may not be forthcoming.
What is required to obtain a Copyright Certificate of Registration in China?
Where copyright is acquired by way of an assignment from the creator the following documents are required:
- A copy of the copyright assignment agreement executed by both parties and which includes details of the work, the date of first publication of the copyright work and the date the work was completed.
- An original Chinese application form (Application for Recordation of Copyright) which details the assignor and assignees name in English and Chinese, contact details, type of work and the scope of the ownership.
- An original Power of Attorney executed by the Applicant (assignee).
- Copies of the Certificates of Incorporation of the Assignor and Assignee with original signatures and company seal (if available).
If the copyright is created in-house:
- An original Chinese application form (Application for Recordation of Copyright) which details the applicant’s name in English and Chinese, contact details, whether the work has been published or not, date of first publication, place of first publication, method of obtaining the right (i.e. original creation, inheritance, transfer), method of ownership i.e. legal entity’s creation/employment creation and scope of the ownership.
- An original Legal Person Creation Explanation confirming the work was created by a company employee on the Applicant’s instruction.
- An original Description of the Work document which includes the date the work was completed by the employee; the date the work was first published and where; a clear representation of the logo; a statement of originality of the work; an original Power of Attorney and a copy of the Applicant’s Certificate of Incorporation with original signature or company seal.
Recording registration of copyright with Chinese customs
The following documents are required to record registration:
- A copy of the Copyright Certificate and a photo of the work certified by the copyright registration authority.
- Documents which show proof of the completion date of the work, such as a contract or correspondence between the Applicant and the design company regarding design of the logo and completion.
- A colour copy of an executed Power of Attorney.
- A copy of the Applicant’s Certificate of Incorporation.