The Application of the Idea-Expression Distinction

Under Chinese Copyright Law

 

Jerry Feng Xia

 

 

The Center for Intellectual Property Law (CIER)

Utrecht University, the Netherlands

2002.1 – 2002.5

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I.                    Introduction

 

The distinction between “expressions” which copyright protects and “ideas” which copyright does not protect has long been a part of the mature copyright systems[1] that are governed by the Berne Convention, a most significant international treaty on copyright protection.[2] Nevertheless, by reviewing China’s present Copyright Law[3] we observed that the statute actually does not contain a provision explicitly stating that copyright protection extends only to expression and not to ideas, processes, methods or facts. Then can we accordingly say China has not realized this distinction yet or ideas can thus be protected under China’s copyright law? The answer to this question is, however, negative.  On the contrary, the major principles underlying the recognized distinction theories have long been adopted in practice by Chinese courts and other authorities even since the first passage of its Copyright Law in 1991.[4]  In comparison with the classic US copyright case law as well as a few international copyright agreements as regards the idea-expression distinction, this essay seeks to briefly look at its contemporary application under China’s copyright regime.

 

II.                 Application in Copyright Legislation

 

We have understood that copyright law in China is quite young. The centerpiece of China’s copyright legislation is the 1991 Copyright Law and its implementing regulations.[5] This short history, however, on the other hand allows China to be able to learn from and absorb many positive elements of the developed copyright systems in the EU and the US. In respect of the distinction between idea and expression, to penetrate the veil it is one of the numerous mechanisms that intellectual property regimes contain for maintaining the balance between the society’s interests in inducing initial creations and its interests in inducing follow-on creations.[6]  Along with other two ways of achieving this delicate balance in copyright law, i.e., creativity-based originality standards for copyright protection and certain exceptions or limitations to the rights of authors such as the right of fair quotation,[7] the idea-expression distinction is in its very essence an important approach to foster ongoing innovation. Chinese copyright law, like American copyright law, contains a purpose provision indicating that this law is intended to promote innovation,[8] which in legislation has provided a sound ground for the incorporation of the idea-expression distinction.

 

Although there is now lack of a clear addressing in China’s principal copyright statute, such an express article can still be found in its supplementary copyright law sources. For instance, China’s regulations for the protection of computer software state that copyright protection for software “cannot be expanded to encompass the ideas, concepts, discoveries, principles, algorithms, processing methods and operations used in the development of software.”[9] This provision is very similar to the US copyright provision that excludes from the scope of copyright protection “ideas, procedures, processes, systems, methods of operation, concepts, principles and discoveries”, which however may be embodied or illustrated in a work.[10] Recognizing this a case such as Apple v. Microsoft[11] would then likely be resolved the same way in China since Chinese software regulations provide for that similarities in computer programs should not be infringing when only “limited categories of expression” are possible.[12] To some extent, this regulation also coherently embodies the spirit of the “merger doctrine” in copyright law, which holds that when an idea only has unique or very limited categories of forms of expression the merger of the necessary expression with its ideas that are expressed as a whole is not protectable under copyright law.[13]

 

Nevertheless this does not mean that the ideas and methods in non-software works of authorship can be protected under Chinese copyright law. In accordance with the General Principles of Chinese Civil Law, the international treaties and international practice that have been concluded or acceded to by China shall be applicable to the matters for which Chinese law does not have any provisions.[14] With regard to copyright protection, China is already party to several important international conventions that embrace the idea-expression distinction. These conventions first include the Berne Convention[15] and the Universal Copyright Convention (UCC),[16] both of which China acceded to in 1992. Moreover, China participated in the deliberations leading up to the adoption of the World Intellectual Property Organization (WIPO) Copyright Treaty in Geneva in 1996 that included a provision endorsing the principle that “[c]opyright protection extends to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such.”[17] After China eventually entered the World Trade Organization (WTO) and became its 143^rd member state on 11 December 2001,[18] also binding to China is the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which addresses the idea-expression distinction in its Article 9(2).[19] As a matter of fact, commentary by Chinese authorities has long shown that China’s copyright law only protects the expression of authors, not their ideas.[20]

 

III.               Application in Copyright Case Law

 

The idea-expression distinction has proven easier to articulate than to apply. It is often true that the most valuable aspects of a copyrighted work are its ideas, facts, or processes so the copyright owners will sometimes assert that an aspect of a work is expressive in order to get protection for it.[21] Adopting this stratagem may be tempting partly because the distinction between ideas and expressions, while clear in the abstract, does not always shimmer with clarity in the context of any particular dispute. Yet, that temptation should be resisted. Were it not for copyright law’s denial of protection to ideas, processes, methods of operation, and other functionally constrained designs, competition and ongoing innovation in copyright-dependent industries would be seriously curtailed. Throughout the US history of copyright protection, several important rules for determining the idea-expression distinction have stemmed from a number of classic cases, which now are broadly recognized by many other copyright systems in the world. A review of Chinese case law reveals that Chinese courts have substantially applied most of these rules over the last decade.

 

For example, the US Supreme Court’s ruling in Baker v. Selden [22] in 1879 first established the modern concept of idea-expression distinction and concluded the so-called doctrine of “idea-expression dichotomy” that copyright only protects creative and specific expressions of ideas and not stops others from using the ideas or knowledge embodied in copyright owners’ works.[23] A representative Chinese case in this regard should be the Macro[24] copyright case in 1998. The plaintiff was a former English translator of Macro Electronics Co. who ingeniously translated the company’s Chinese name “Wan Jiale” into an English vocabulary “MACRO” and also independently designed “Wan Jiale – MACRO” as a fixed Chinese-English verbal combination into the company’s logo for its first publication in 1991. He, however, left Macro Electronics Co. in 1992.  Six years later in 1998 “MACRO” was registered as a trademark and became nationally well known for its good business reputation. Soon after the plaintiff sued Macro Electronics Co. for infringing his copyright over the design of “Wan Jiale – MACRO” and claimed that “MACRO” is part of an original “work” which has combined his creative translation solution and abstract aesthetic concepts into one and therefore should be protected under copyright law. He further clarified that MACRO is a unique group of letters that constitute the abbreviation of “Macro Applause from Customers Resound On” or “Massive Ace Chinese Realm Oriental” and these connotations are original creations of the plaintiff.  The court ruled that 1) MACRO is a long existing English vocabulary with fixed meanings, which belongs to cultural heritage in public domain and therefore is not protected under copyright law; 2) the combination of letters “M, A, C, R, O” in itself does not convey any ideas and feelings and does not constitute a literal work under copyright law; 3) the plaintiff’s explanations of “MACRO” based on his above mentioned understanding can only be considered as his personal thoughts or ideas which are not reproducible and therefore cannot be protected under copyright law.

 

Furthermore, several internationally recognized doctrines that were developed by the US courts for exactly distinguishing ideas against expressions have ever been classically applied in Chinese case law as well. For instance, we all know the US 2^nd Circuit Court of Appeals proposed in Computer Associates v. Altai (1992)[25] a widely followed three-step process to gauge the similarity of works (primarily of computer programs), i.e., “abstraction-filtration-comparison”. This process first describes the two works at various levels of abstraction, i.e., to set aside ideas from ideas’ expressions; then, at each stage, filters out the elements that are not subject to copyright, i.e., elements in public domain; finally, it compares the results – if similar there is infringement. Very remarkably, Beijing West City District Court even had an earlier adoption of this process in Li v. Wang[26] in November 1990, only two months after China first passed its copyright law, although it involved the copyright infringement of books instead of computer programs. In this case, the plaintiff Li sued to the court that the defendant Wang’s book “The Rest Life of The Last Emperor” infringed on the copyright of her pre-published work “The Rest Life of P’uYi” (P’uYi is the name of the last emperor of China). The procedure that the court took to try the case happened to be perfectly consistent with the three-step process adopted in Computer Associates v. Altai. The court first ruled out the likelihood of protection for “the rest life of the last emperor P’uYi” as a biographical subject (abstraction); secondly, the defendant demonstrated to the court that he had the legitimate sources of the information he used in the parts of his book that were sued by the plaintiff for plagiarism – from public domain[27] (filtration); finally, the court compared the leftover contents of the two books and found no substantial similarity (comparison). As a result the court finally ruled that the plaintiff’s claims could not be upheld under copyright law.

 

IV.              Closing Remarks

 

In conclusion, with respect to the idea-expression distinction in China, generally speaking, there has been no substantial problem with its recognition and application by Chinese legislative and judicial authorities.  Particularly, a review of Chinese case law in this article has revealed that courts have denied copyright claims in a few instances because the second author had only taken facts or ideas from the first author’s work, not his expression.[28]  In academic circle, however, Chinese legal scholars have been active with their arguments on the matter of what copyright protects and what it does not protect. For example, Professor Bu Shou of Shanghai University came up with a theory of “six concepts and one diagram” in 1996 in which he systematically outlined in a diagram the antithetic, stratiform and logical-derivative relationships between six fundamental copyright concepts “idea, expression, author, work, content, and form”.[29]

 

Perhaps it is necessary to mention that China recently amended its copyright law to prepare for the WTO entry in October 2001.[30] Although 53 out of the 56 stipulations of the original copyright law were revised and 4 more clauses were added, the amended law still does not include an explicit provision with regard to the idea-expression distinction as the TRIPS Article 9(2) prescribed. As to the reasons, no authoritative remarks have been heard from both official and academic sources. The writer personally perceives that it might be due to the extraordinary difficulty to codify a clear definition of idea and its complex determination and thus it is basically left to the discretion of courts based on the general copyright principles.[31] As we reviewed above so far Chinese courts have been well oriented in their relevant rulings, which accordingly makes it merely a small legislative flaw that expects to be soon perfected in the near future.

 

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