Ta Jan Publishing Society violated the Fair Trade Law for its book "The New Brainstormer" plagiarizing the complainant's book "The Brainstormer"
Chinese Taipei
Case:
Ta Jan Publishing Society violated the Fair Trade Law for its book "The New Brainstormer" plagiarizing the complainant's book "The Brainstormer"
Key Words:
counterfeit, familiar to the relevant public, symbol of another person's product
Reference:
Fair Trade Commission Decision of June 3, 1992 (the 34th Commission Meeting); Disposition (81) Kung Ch'u Tzu No. 007
Industry:
Publishing (8330)
Relevant Laws:
Article 20(1)(i) of the Fair Trade Law
Summary:
1. The complainant published a book called "The Brainstormer". By the time Ta Jan published its book "The New Brainstormer", the complainant had already published volume 12 of the The Brainstormer and sales of the book had already exceeded 1.2 million books. The complainant's book has been well known in the industry and among consumers. That is to say, the title of the complainant's book "The Brainstormer" had already attained the status of "commonly known to the relevant public".
Ta Jan simply added the word "New" to the title of the complainant's book "The Brainstormer". The two names are similar. The format of Ta Jan's book was copied from the format of the complainant's book: humorous cartoons are used along with the question/answer format where the question is stated on one page and the answer is stated on the following page.
When viewed as a whole, one could easily form a mistaken impression that the book, "The New Brainstormer" is a sequel to "The Brainstormer" or that they are part of the same series. Ta Jan used another person's expression which is commonly known to the relevant public, and such use was in connection with its own goods and done in a similar manner as such commonly known expression is used by the other party. The use led to the confusion of Ta Jan's goods with the goods of the other party and thus violates the aforementioned article of the Fair Trade Law.
2. Ta Jan defended the allegation by stating that the humorous content in the complainant's "The Brainstormer" was plagiarized from a third party, Hao Chiao Publishing Society and that Hao Chiao had already licensed Ta Jan to be its agent. The investigation showed:
2.1 The complainant already owned the editing, production and publishing rights to "The Brainstormer". This fact was not disputed by the parties. Whether or not the content of the "The Brainstormer" infringed on the copyright of a third party is a different issue. The agreement between Ta Jan and Hao Chiao was entered into in April 1992, after the publication of "The Brainstormer".
Furthermore, regardless of whether there was a license from Hao Chiao or from some of the original authors who formed the group that produced "The Brainstormer", the content of the license did not authorize Ta Jan to publish a book similar to "The Brainstormer" in name, format, and editing style. Therefore, the putative license has no effect on Ta Jan's liability for violating Article 20(1)(i) of the Fair Trade Law.
2.2 Ta Jan asserted that "The Brainstormer" is a very popular colloquialism indicating a humorous question-and-answer format. Ta-Jan further asserted that Article 20(2)(i) of the Fair Trade Law states that the Article 20(1) governing the infringement is applicable to the ordinary use of a generic name customarily associated with the goods themselves, or use of a symbol customarily used in trading of goods of the same category, or the sale, transport, import or export of goods bearing the said name or symbol.
Although there have been similar uses of the name "The Brainstormer", however, such use does not give rise to the status of "a generic name which is an ordinarily use of a name customarily associated with the goods themselves". This can be evidenced by the fact that similar humor books employing a question-and-answer format have used names other than "The Brainstormer". "The Brainstormer" has not become a generic name for this type of book; it is but one name used by this particular publisher.
Therefore, Article 20(2)(i) of the Fair Trade Law is not applicable to Ta Jan's use of the name "The New Brainstormer" in connection with its publications. Ta Jan's use of that name is in violation of Article 20(1)(i) of the Fair Trade Law governing the infringing use of product names. A deadline shall be set for Ta Jan to cease the infringing activity or take corrective action in accordance with Article 41 of the Fair Trade Law.
Summarized by Hu, Ming-hua
Supervised by Kuo, Shu-chen
＊ : For information of translation, click here
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