Unitalen wins copyright infringement case on behalf of OKBABY

December 18, 2008
Co-represented by Dandan Zhou and Yong Liang, the OKBABY S.R.L. wins a copyright action against Cixi Honeyway Baby Products Co., Ltd. The first instance was concluded by Beijing No. 2 Intermediate People’s Court on November 25, 2008. The court made an injunction to ban the defendant’s copyright infringement activities and ordered the defendant pay the plaintiff RMB 120,000 (USD 17,518) in damages and reasonable expenses.

Established in 1976, OKBABY S.R.L. has been engaged in the design, manufacture and distribution of baby commodities. The brand “OKBABY” has enjoyed high reputation internationally. The design of the involved products, namely, spidy potty, ducka water closet seat and buddy bath seat were completed in 1998, 2000 and 2001, and applications for design protection thereto were filed before WIPO. Those products had been put into Mainland market since 2001.

In March 2005, the parties entered into a license agreement, granting defendant to produce and sell a series of baby commodities including the above three types of products, under the consideration that the defendant pays 2% of the net sales as royalty fee. The defendant did not pay any royalty fee to the plaintiff after the year of 2007. Therefore, the plaintiff brought the defendant into court seeking injunction and damages in May 2008.

Success of this case stands for an advancement of copyright litigation in Unitalen. Compared to work of fine art, work of applied art illustrates more “industrial” features, and therefore the protection over the same will become more complicated. In addition, it is often the case that a right could be protected by claiming either work of applied art or design patent. It appears that the plaintiff in this case could have asserted its claims based on design patent. However, because OKBABY S.R.L. does not enjoy any design patent in China, the assertion could not rely on the same. Assuming that the plaintiff owned a design patent over the disputed products, there would leave a question on which approach could maximize the protection on the client’s rights and interests. Analysis on the two approaches of actions reveals that copyright action is a preferable solution for this case. This is because that the defendant would usually initiate an invalidation action against the plaintiff’s design patent to fight against litigation and the court would suspend the trial to wait for the decision on the review of invalidation, in which case the case would become more complicated. On the other hand, the approach of copyright action makes the proceeding streamlined, as all rebutment is made within court, without having any third party involved. In course of representation of this case, Unitalen lawyers reflected on all the above factors and made this case a success by asserting the defendant’s infringement on the plaintiff’s work of applied art.

　

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