Brief introduction of the case:
New Oriental School refused to accept the judgment of the Beijing Middle Court, and appealed to the Beijing High Court, arguing that ETS (Educational Testing Service) did not enjoy the copyright of its TOEFL test questions, and the test questions could not be protected as works by Chinese law. Fourth, New Oriental School only uses the word TOEFL declaratively or descriptively in the relevant training materials, and does not use TOEFL as a trademark, which will not cause the possibility of confusing the source of the product, and does not constitute an infringement of ETS trademark rights. Sixth, New Oriental School only sells the relevant training materials to people other than students. However, the first-instance judgment ordered us to apologize in the Legal Daily, which is published nationwide, which is not fair and reasonable. ETS complies with the original judgment.
The court of second instance found that the New Oriental School copied and distributed the TOEFL test in the form of public sale for the purpose of commercial operation without the permission of the copyright holder ETS, and its use of the work exceeded the scope of fair use in classroom teaching. New Oriental School's reproduction and public sale of TOEFL test has violated ETS's copyright and should bear the corresponding legal responsibility. However, the Court should also point out that in view of the special nature of the TOEFL test and the special form and purpose of New Oriental School's use of this work, New Oriental School's explanation of the TOEFL test in the classroom teaching without the use of infringing materials should fall under the fair use of related works stipulated in Article 22 of the Copyright Law, and does not constitute infringement of the copyright of others. In addition, although ETS legally registered the TOEFL trademark on publications and audio tapes, and New Oriental School prominently used the word "TOEFL" in the "TOEFL Series of teaching materials" and "TOEFL Listening Tapes", New Oriental School used the word "TOEFL" in a descriptive or narrative way. The purpose is to explain and emphasize that the content of the publication is related to the TOEFL test, so as to facilitate readers to know the content of the publication, rather than to indicate the source of the publication, and will not cause readers to misidentify and confuse the source of the product. The relevant action of New Oriental School does not infringe the exclusive right of ETS trademark.
Several legal issues involved in the case:
1. Whether ETS has copyright on the TOEFL test
ETS is a foreign corporation because it is a legal entity incorporated under U.S. law and is not registered in accordance with relevant laws such as the Company Law. If ETS has the copyright of TOEFL test question in our country, we need to decide according to our country's Copyright Law. According to the provisions of Article 2, paragraph 2, of China's Copyright Law, the copyright in the works of foreigners and stateless persons enjoyed under an agreement concluded between the country to which the author belongs or has his habitual residence and China or an international treaty to which both countries are parties shall be protected by this Law. The United States and China, the home countries of ETS, have jointly participated in the Berne Convention, so China provides legal protection for ETS's works.
As to whether the appellant New Oriental School's claim that "ETS does not enjoy the copyright of its TOEFL test questions, and the test questions cannot be protected by Chinese law as works" is correct, we need to judge according to the Copyright and its implementing regulations. Article 2 of the Regulations on the Implementation of the Copyright Law stipulates that the term "works" as used in the Copyright Law refers to intellectual creations in the fields of literature, art and science that are original and can be reproduced in a tangible form. Under normal circumstances, for some simple facts arranged but lack of originality of the test questions, it is difficult to be honored by the copyright law, such as many history questions in the college entrance examination, civil service examination "public basic knowledge" and so on. In this case, according to the facts identified, the TOEFL test question is developed and designed by ETS, in terms of design and creation process, each test question needs many people to go through multiple steps and pay creative labor to complete, with originality, belongs to the meaning of China's copyright law works, should be protected by our country's law. The TOEFL test questions are compiled by ETS in a certain order according to a certain structure. According to Article 14 of the Copyright Law, a number of works are compiled. The works whose contents are selected or arranged reflect originality are compiled, and the copyright of the works is enjoyed by the assembler. This shows that ETS owns the copyright for each TOEFL question and set of TOEFL tests it creates.
In addition, the TOEFL listening test part is also a work. The producer of the audio and video recording of the listening test as a recording, with the consent of ETS and after the recording is completed, enjoys the rights related to the copyright Law, the so-called "adjacent rights", and enjoys the right to license others to reproduce, distribute, rent, disseminate to the public through the information network and receive remuneration in accordance with Article 41 of the Copyright Law. Therefore, when using the audio recording, New Oriental must not only obtain the consent of the producer of the audio recording, but also obtain the permission of the original test question copyright holder ETS.
2. Whether New Oriental's action infringes ETS's copyright
According to the provisions of our country's Copyright Law, if the use of a work without the permission of the copyright owner does not belong to fair use, legal or compulsory license (for "compulsory license", there is no clear provision in our country's Copyright Law, However, according to Article 4 of the Annex to the Berne Convention, which China has acceded to, the compulsory licensing of the translation and publishing rights of other people's works is emphasized, and the situation in which our government authorities can of course take compulsory licensing upon application) constitutes an infringement of copyright. Without the consent of the producer of the TOEFL listening tape and ETS, New Oriental copied and distributed the audio tape without authorization, which is indeed a violation of the adjacent rights and Copyrights of both.
At the same time, it should be noted that not all acts of copyright infringement constitute infringement of the neighboring rights of the neighboring rights of the neighboring rights. According to the copyright theory, copyright (copyright in a broad sense includes neighboring rights, and this article will analyze neighboring rights in a broad sense) is statutory, the most important content of which is the content, term and restriction of copyright are statutory, so are neighboring rights. Compared with the content of copyright in the narrow sense, the law has less content for different kinds of neighboring rights, and the content of different neighboring rights is also different. For example, Article 10 of the Copyright Law stipulates the right of publication, authorship, modification, integrity protection, reproduction, distribution, rental, exhibition, performance, projection, broadcasting, information network communication, filming, adaptation, translation, assembly, and other rights that should be enjoyed by copyright owners (cover clause). Article 37 of the Act provides that performers have the right to "(1) identify themselves as performers; (2) To protect the image of the performance from distortion; (3) to permit others to broadcast live and publicly transmit their live performances, and to receive remuneration; (4) to permit others to make sound recordings and video recordings, and to receive remuneration; (5) to permit others to reproduce, distribute and record a sound recording or video recording of his performance, and to receive remuneration; (6) The right to authorize others to disseminate their performances to the public through information networks and receive remuneration. Article 41 provides that producers of sound recordings and video recordings shall have the right to authorize others to reproduce, distribute, rent and disseminate sound recordings and video recordings to the public through information networks and receive remuneration. In this case, the appellant New Oriental School copied, distributed and spread the TOEFL test through the information network, and the copyright infringed is exactly the content stipulated by the copyright and the neighboring right. If the neighboring right does not have the stipulated right and the related infringement act, and others have carried out the act, it does not belong to the infringement of the neighboring right.
For New Oriental School to explain the TOEFL test in class does not constitute infringement, which is also permitted by Article 22 of the Copyright Law, which stipulates that "for the purpose of school teaching or scientific research, translation or a small amount of copies of other people's published works for the use of teaching or scientific research personnel" can be without the permission of the copyright owner and without payment of remuneration, but may not be published and distributed. And shall not infringe upon the copyright owner's right of authorship and other rights. It is legal for New Oriental to use the TOEFL test appropriately for the purposes of school instruction (although New Oriental is a private school, this does not affect its "benefits" provided by copyright law as a school). It is illegal to copy, distribute, and sell TOEFL tests.
3. Whether New Oriental infringes ETS trademark rights
Article 52 of the Trademark Law lists several violations of the exclusive right to use a registered trademark, including "without the permission of the trademark registrant, using a trademark identical or similar to its registered trademark on the same kind of goods (also including services, the same below) or similar goods" and "selling goods that infringe on the exclusive right to use a registered trademark." Since the services provided by New Oriental schools and ETS are the same or similar, does New Oriental mark the word "TOEFL" on the cover of its teaching materials belong to the first situation above? And does the sale of these teaching materials belong to "selling goods infringing on the exclusive right to use registered trademarks"? And if so, then should these actions belong to the case of trademark infringement?
First of all, it is necessary to determine whether New Oriental's use of the TOEFL trademark is a case of "use on goods" under the Trademark law. According to Article 3 of the Regulations on the Implementation of the Trademark Law, the use of trademarks referred to in the Trademark Law and these Regulations includes the use of trademarks on commodities, commodity packaging or containers and commodity transaction documents, or the use of trademarks in advertising, exhibitions and other commercial activities. The behavior of New Oriental is to use the TOEFL trademark on the goods (teaching materials) and their decoration, which according to the regulations belongs to the "use of the trademark" of ETS, and further belongs to the behavior of "using the same trademark on the same kind of goods or similar goods without the permission of the trademark registrant" and "selling the goods infringing the exclusive right to use the registered trademark". It belongs to trademark infringement.
Second, the unavoidable question? New Oriental interprets, reproduces, distributes, and sells TOEFL test questions to a specific audience, which is referred to in trademark law as the "relevant public." It may be clear to the public that the TOEFL tests that New Oriental copies, distributes and sells are from ETS, and it seems that New Oriental does not want to borrow ETS's goodwill by marking TOEFL on the cover of its textbooks. Because New Oriental is the top authority in providing TOEFL test guidance in China and has a very high reputation, the relevant public will not mistake the TOEFL teaching guidance materials provided by New Oriental and the TOEFL test questions sold by ETS. From this point of view, the relevant public, as consumers, will not confuse the distinction between the two, that is, New Oriental teaching materials on the cover of the TOEFL words will not cause ETS to sell TOEFL test questions or harm the interests. It is also in this sense that the Beijing High Court found that "New Oriental School prominently uses the word" TOEFL "in the" TOEFL Series teaching materials "and" TOEFL listening tapes ", but New Oriental School is using the word "TOEFL" in a descriptive or narrative way. The purpose is to explain and emphasize that the content of the publication is related to the TOEFL test, so as to facilitate readers to know the content of the publication, rather than to indicate the source of the publication, and will not cause readers to misidentify and confuse the source of the product. The relevant actions of New Oriental School do not violate ETS's trademark rights." This designation makes sense, even if it is against the law.
In fact, through the above superficial analysis, it can be seen that the provisions of Article 52 of the Trademark Law may be unreasonable. Because Article 52 basically stipulates some elements of the act of using another person's trademark in appearance, such as "(1) without the permission of the trademark registrant, using a trademark identical or similar to its registered trademark on the same kind of goods or similar goods; (2) selling goods that infringe upon the exclusive right to use a registered trademark; (3) forging or manufacturing without authorization the marks of a registered trademark of another person or selling the marks of a registered trademark forged or manufactured without authorization; (4) replacing its registered trademark without the consent of the trademark registrant and putting the goods with the replaced trademark back on the market; (5) Causing other damage to the exclusive right to use a registered trademark of others ", but it does not take into account the essential elements of infringement of trademark rights may cause the relevant public to misidentify the source of goods or services, which is also the trademark owner's least tolerance, because it will directly lead to the expected benefits of the trademark owner into the pockets of others. Even if another person uses another person's trademark on the goods, if it does not cause the relevant public to misidentify the source of the goods provided by the trademark owner, then the law cannot always identify this infringement, and this case is such an example. What is interesting is that Article 50 of the Regulations on the Implementation of the Trademark Law stipulates that "on the same or similar goods, the use of the same or similar logo with another person's registered trademark as a commodity name or commodity decoration to mislead the public" is an act of infringement of the exclusive right to use a registered trademark referred to in Article 52 (5) of the Trademark Law. Article 1 of the Interpretation of the Supreme People's Court on Several Issues relating to the Application of Law in the Trial of Trademark Civil Disputes provides that the following acts are acts that cause other damage to the exclusive right of another person to use a registered trademark as provided for in Article 52 (5) of the Trademark Law: (1) using words identical or similar to another person's registered trademark as the enterprise's shop name on the same or similar goods, which is easy to cause misidentification by the relevant public; (2) copying, imitating or translating a well-known trademark registered by another person or a major part thereof is used as a trademark on different or dissimilar goods, thus misleading the public and causing possible damage to the interests of the registrant of the well-known trademark; (3) registering the same or similar words as the registered trademarks of others as domain names, and conducting e-commerce transactions of related commodities through the domain names, which is easy to cause misidentification by the relevant public. It can be seen that the regulations and their interpretation without exception make "creative provisions" different from the first four items of Article 52 (5) of the Trademark Law, which is somewhat similar to the provisions of Article 13 of the Trademark Law: "Where a trademark applied for registration of the same or similar goods is a copy, imitation or translation of another person's well-known trademark that has not been registered in China, it is easy to cause confusion." Not registered and prohibited. Where a trademark applied for registration in respect of a different or dissimilar commodity is a reproduction, imitation or translation of another person's well-known trademark already registered in China, misleading the public and causing possible damage to the interests of the registrant of the well-known trademark, it shall not be registered and shall be prohibited from use." Perhaps, these provisions are more reasonable than the provisions of the first four items of Article 52 of the Trademark Law, and are more in line with the legislative purpose of trademarks, and truly enable the trademark law to reflect the fair value and benefit value of its intermediary. Therefore, it is necessary to re-examine the first four unreasonable provisions of Article 52 of the Trademark Law during the three amendments.