Contributed By Deep & Far Attorneys-at-Law
The Copyright Act is the governing copyright statute in Taiwan. No other principal sources of law regulate copyright.
Taiwan became a member of the WTO in 2002, and as such the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is directly applied in this country; the Berne Convention for the Protection of Literary and Artistic Works is also indirectly applied, in accordance with TRIPS.
The Taiwan Copyright Act provides: "Works of foreign nationals that comply with one of the following conditions may enjoy copyright under this Act; provided, where the terms of a treaty or an agreement that has been ratified by resolution of the Legislative Yuan provide otherwise, such terms shall govern: 1. Works that are first published in the territory under the jurisdiction of the Republic of China, or are published in the territory under the jurisdiction of the Republic [of] China within 30 days [of] their first publication in territory outside the jurisdiction of the Republic [of] China; provided, this shall only apply where the country of such foreign national extends protection under identical circumstances to the works of persons of the Republic of China, and such protection has been verified. 2. Where by treaty or agreement, or under the domestic acts, regulations, or standard practice of the home country of the foreign national, works of persons of the Republic of China enjoy copyright in such country" (Article 4).
The essential elements required for a work to benefit from copyright protection are that it must be:
These elements apply to all works of art.
No registration or formal requirements are required for copyright protection.
Copyrightable works in Taiwan’s system include:
The above list is exemplary for types of copyrightable works established by Article 5(1) of the Copyright Act. Specifically, the law recognises protection for non-categorised works of art, provided that they meet the general requirements for protection.
The protection is not limited to fixed works. For example, speech, performance and choreography can be directly protected under the Taiwan Copyright Act.
Software benefits from copyright protection and may be a derivative variety of copyright. Accordingly, the requirements for software are not the same in nature as those for other types of copyrights. Any part of software, such as the object code or source code of a program or compiler, may be protected either by computer programs or by literary work. Certainly, the visual results shown by a program are similar to pictorial and graphical works or audio-visual works, which are eligible for copyright protection.
Invention Patent, Design Patent or Trade Secret
Software may also be protected in forms of the invention patent, design patent or trade secret. For example, a novel and inventive computer program that has technical characteristics for industrial application may be protected by an invention patent. Likewise, a novel and creative icon or graphical user interface (GUI) that has artistic characteristics for industrial application may be protected by a design patent. For copyright protection, a software work does not require higher standards of novelty, inventiveness and industrial applicability. A program, either in object code or source code, may be protected by trade secret if it may be used in the course of production, sales or operations, and if it meets the following requirements:
While the object code and source code of a program are both copyrightable and may cumulate to gain overlapping protection for software, it may be interesting or controversial to consider whether software is protectable under different categories of copyright.
Cumulation of Protection
While the differences between protections of patent and copyright for software may be readily identifiable, it is easy to imagine that their protections may cumulate when specific software has both technical characteristics and artistic characteristics. The demarcation between the icon or GUI design patent and graphic copyright, however, may be fairly vague when it comes to determining how their protections may differentiate from or cumulate with each other. The delimitation between trade secret and copyright may be directly inferred from their legal requirements and it may be easy to deploy their protections in cumulation.
Computer Programs as an Exception
Specific features are applicable to software rights, eg, the author’s exclusive right to reproduce the works does not apply to the transient and incidental temporary reproduction required in a technical operation process without independent economic significance where there is a sole purpose of lawful network relay transmission or lawful use of a work; however, this rule does not apply to computer programs (Article 22(3), Copyright Act). The owner of a legal copy of a computer program may alter the program where necessary for utilisation on a machine, or may reproduce the program as necessary for back-up; however, this is limited to the owner’s personal use (Article 59(1), Copyright Act). Normally, owners of originals or lawful copies of works may rent out such original works or copies; this rule does not, however, apply to computer programs (Article 60(1), Copyright Act).
Protection as a Literary Work or Compilation
Databases benefit from copyright protection in the form of a literary work or compilation work. Article 7(1) of the Copyright Act provides that "[a] compilation work is a work formed by creative selection and arrangement of materials, and shall be protected as an independent work". Article 7(2) provides that "[p]rotection of a compilation work shall not affect the copyright in the work from which the material was selected and arranged". Therefore, the requirements are the same as those for a literary work or compilation work.
Protection under the Fair Trade Act
If a database simply collects some pure information or uncopyrightable works and cannot be characterised as a literary work or compilation work, it might be protected under the Fair Trade Act, in which Article 25 provides: “In addition to what is provided for in this Law, no enterprise shall otherwise have any deceptive or obviously unfair conduct that may affect trading order.” Under this article, the database owner may claim injunctive relief or damages only when the whole or a substantial part thereof has been misappropriated without authorisation.
Protection under Copyright Law and Unfair Competition Law
The protections for a database under copyright law and unfair competition law may cumulate because when there is some creativity in the selection, compilation or arrangement of related information in the database, either copyright law or unfair competition law may be used to deal with the plagiarism on the database.
Some types of industrial designs may benefit from copyright protection, but the designs per se should not be used to perform technical functions, while the idea of the design creation is easily separable from the expression of the copyrighted work. In Taiwan, industrial designs are mainly protected in the form of design patents, which require higher standards of novelty, inventiveness and industrial applicability in comparison to the originality required for copyright. In addition, a similar or identical industrial design may infringe a design patent even though the industrial design is independently designed, but it will not infringe copyright because an independently designed work cannot constitute copying. Accordingly, cumulative protection between design patent and copyright is possible.
Fictional characters may be protected under literary works or pictorial and graphical works.
TV formats, etc may be protected as compilation works.
Sporting events are a more complicated copyright issue. Sports events per se are facts or news and may not be protected under copyright. If a programme for reporting a sporting event has originality, however, it is eligible for copyright protection. If the programme does not have enough originality, the economic interests of the sporting event may still deserve a contract or trigger protection under the Fair Trade Act.
These do not belong to any statutory categories of work in this country. In view of the characteristics of multimedia work, it may obviously be protected as a literary work, musical work, artistic work, photographic work, pictorial or graphical work, audio-visual work, sound recording, computer program, compilation work, or any combination thereof.
Museums and exhibitions are not widely discussed in this country, but they may be protected under architecture works and compilation works respectively. For exhibitions, the idea/expression dichotomy may be introduced to decide their copyrightability. If an exhibition falls into the idea domain, the designer may also consider seeking protection under the Fair Trade Act.
Websites per se, or the contents thereof, may be protected as musical works, artistic works, photographic works, pictorial and graphical works, audio-visual works, computer programs, compilation works, or any combination thereof.
Recipes may be protected as literary works, artistic works, pictorial and graphical works, compilation works, or any combination thereof.
Perfumes may not be protected under copyright in this country even though some scholars have written articles to support their protection.
Maps may be protected as pictorial and graphical works. If handmade, they may be subject to protection under literary or artistic works.
The eligibility of pornographic works for copyright protection has been a subject of debate. An IP court decision in 2014 settled for copyrightability, except for "hardcore pornography" that involves violence, abuse and bestiality.
The author is the person who creates the copyrightable work, and is normally the first owner of copyright. Where a person's name or a pseudonym familiar to the public is represented in a normal way as the author on the original of a work, or on a published copy of the work, or in connection with a public release of a work, the person shall be presumed to be the author of the work.
A joint work is a work that has been completed by two or more persons where the creation of each person cannot be separately exploited (Article 8, Copyright Act). In other words, where the creation of one or more persons on a work completed by two or more persons may be separately exploited, the work may not be a joint work but a set of different works.
Article 19 of the Copyright Act provides as follows: "Moral rights in a joint work may not be exercised without the consent of all the joint authors. A joint author shall not refuse consent without a legitimate reason. Authors of a joint work may select an author from among the joint authors to be their representative for the purpose of exercising moral rights. Limitations imposed on the representative powers of the representative referred to in the preceding paragraph shall not be effective against a third party acting in good faith."
Under Article 40 of the Copyright Act, it says: "In the case of a joint work, each author's share of the ownership of such a work shall be as stipulated by the joint authors; where no stipulation has been made, ownership shares shall be determined according to the degree of each author's creative contribution. Where the degree of each author's creative contribution is not clear, it shall be presumed that each author owns an equal share. Where an author of a joint work abandons its share of the ownership of the work, that share shall be apportioned among the other joint authors in proportion to their respective shares. The provisions of the preceding paragraph shall apply mutatis mutandis where the author of a joint work dies with no successor or is extinguished with no receiver."
Under Article 16 of the Copyright Act, the author of a work shall have the right to indicate its name, a pseudonym, or no name on the original or copies of the work, or when the work is publicly released. The author has the same right to a derivative work based on their original work.
Currently, there is no provision regarding orphan works. Nevertheless, on 9 September 2016, the Taiwan Intellectual Property Office (TIPO) sent a draft amendment of the Copyright Act to the Executive Yuan for preliminary examination as a formal draft bill before the Legislative Yuan. The draft amendment includes a provision related to a compulsory licence for works whose property rights owner is unknown.
In addition, under Article 24 of the Development Act of Culture and Creation Industries, if a copyright user fails to obtain authorisation for a published work despite exhaustive efforts to identify the copyright owner or their location, the user shall present their case before the TIPO to obtain a grant of licence to utilise the work within the grant scope on remuneration for its use.
Article 7 of the Copyright Act provides the following: "A compilation work is a work formed by the creative selection and arrangement of materials, and shall be protected as an independent work. Protection of a compilation work shall not affect the copyright in the work from which the material was selected and arranged."
A corporate body can be the author of a work. For example, when a work is completed by an employee within the scope of employment, if an agreement stipulates that the employer is the author, this agreement shall govern. In addition, when a work is completed by a person under commission, if an agreement stipulates that the commissioning party is the author, this agreement shall also govern.
Article 11 of the Copyright Act provides the following: "Where a work is completed by an employee within the scope of employment, such employee is the author of the work; provided, where an agreement stipulates that the employer is the author, such agreement shall govern. Where the employee is the author of a work pursuant to the provisions of the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; provided, where an agreement stipulates that the economic rights shall be enjoyed by the employee, such agreement shall govern. The term 'employee' in the preceding two paragraphs includes civil servants."
Under Article 12 of the Act: "Where a work is completed by a person under commission, except in the circumstances set out in the preceding article, such commissioned person is the author of the work; provided, where an agreement stipulates that the commissioning party is the author, such agreement shall govern. Where the commissioned person is the author pursuant to the provisions of the preceding paragraph, enjoyment of the economic rights to such work shall be assigned through contractual stipulation to either the commissioning party or the commissioned person. Where no stipulation regarding the enjoyment of economic rights has been made, the economic rights shall be enjoyed by the commissioned person. Where the economic rights are enjoyed by the commissioned person pursuant to the provisions of the preceding paragraph, the commissioning party may exploit the work."
The agreements mentioned above are not required to conform to specified standards.
Authors' and Performers' Rights
Authors have the exclusive right to reproduce, distribute, publicly broadcast, publicly transmit and rent their works. Authors of oral and literary works have the exclusive right to recite their works publicly. Authors of audio-visual works have the exclusive right to present their works publicly. Authors of oral and literary, musical and dramatic/choreographic works have the exclusive right to perform their works publicly. Authors may claim payment for use from the persons who publicly performed a sound recording. Authors of unpublished fine art or photographic works have the exclusive right to display the original and copies of their works publicly. Authors of works have the exclusive right to adapt their works into derivative works or to compile their works into compilation works. Performers have the exclusive right to reproduce their performances by means of sound recording, video recording or photography. Performers have the exclusive right to distribute, transmit publicly and rent their performances reproduced in sound recordings. Performers have the exclusive right, by means of loudspeakers or other equipment, to perform their works publicly; however, this shall not apply to public performances by means of loudspeakers or other equipment after that performance has been reproduced or broadcast publicly.
Just as categories for works under Article 5(1) are merely exemplary, the above is a comprehensive list of economic rights established by law under Article 22(1) stipulating that "the author exclusively enjoys the rights of reproducing its work unless otherwise provided in this Act," which means that the author exclusively enjoys the rights of reproducing their work in whatever form, medium or channel unless expressly limited or provided in the Act. Accordingly, new rights that are not currently listed in the law but may arise due to technological progress will certainly be vested in the author automatically.
Economic rights generally last for the life of the author, plus 50 years after their death. If a work is first publicly released between the 40th and 50th years after the author’s death, the economic rights shall last for a term of ten years beginning from the time of the public release. The economic rights in a work authored by a juristic person last for 50 years after the public release thereof, but if the work is not publicly released within 50 years from completion of the creation, the economic rights shall subsist for 50 years after its completion.
In addition, the economic rights for photographic works, audio-visual works, sound recordings and performances last for 50 years after the public release of the work. As in the case of a juristic person, however, if the work is not publicly released within 50 years from completion of the creation, the economic rights shall subsist for 50 years after its completion.
There is no circumstance allowing for the non-consensual termination of grants and/or recapture of the economic rights.
The Taiwan Copyright Act establishes different terms mostly according to the author(s), and a small part according to the type of copyrighted work.
Economic rights may be transferred in whole or in part to another person and may be jointly owned with other persons. The transferee of economic rights obtains economic rights within the scope of the transfer. The transfer scope of the economic rights is to be stipulated by the parties; rights not clearly covered by such stipulations shall be presumed as not having been transferred. Specifically, although there is no express formal requirement, clear stipulation of an economic rights' transfer between or among parties is required for a successful or exact transfer.
The economic rights-holder may license others to exploit the work. The territory, term, content, method of exploitation and other particulars of the licence shall be stipulated by the parties; particulars not clearly covered by such stipulations shall be presumed as not having been licensed. Again, although there is no express formal requirement, clear or exact stipulation of the copyright licence between the parties is required for a licence to be effective as intended.
Upon the death of the economic rights-owner, because the economic rights are a type of property, inheritors of the owner will jointly own the economic rights according to general rules provided in the Civil Code. Joint economic rights in a work shall not be exercised except with the consent of all joint economic rights-holders; no economic rights-holder shall transfer its share to another person or establish a pledge of its share in favour of a third party without the consent of all other joint economic rights-holders. A joint economic rights-holder shall not refuse consent without a legitimate reason.
There is no minimum age requirement to enjoy copyright protection. Nevertheless, minors under the age of 20 years have limited capacity and need a statutory agent to act on their behalf for valid exercise of the transfer/licence/sale of copyrights (Article 13, Civil Code). There is no other applicable provision regarding competency. There is no provision for specific types of contracts for the transfer/licence/sale of copyright. Nevertheless, there are regulations for recording plate rights to obtain a locus standi to act against a third party.
A person having obtained ownership of an original or lawful copy of a work within the territory under ROC jurisdiction may distribute it by means of transfer of ownership (Article 59 semel, Copyright Act). Owners of originals or lawful copies of works may rent out such originals or copies; however, this does not apply to sound recordings or computer programs (Article 60(1), Copyright Act).
Normally, importing an original or any copy of a work legally reproduced abroad without the authorisation of the economic rights-holder will be an infringement. This rule does not, however, apply if the original or a specified number of copies of a work are imported for the private use of the importer, not for distribution, or if such an importation occurs because the original or copies form part of the personal baggage of a person arriving from outside this territory (Article 87 semel, Copyright Act).
Moral rights include the right to:
The list above is a comprehensive list established by law (Article 17, Copyright Act).
Even though an author has died or been extinguished (eg, when the author is a company), the protection of moral rights shall be as valid as if the author is living or in existence, and shall not be infringed upon by any person. That is, the moral rights will last forever in any case.
Moral rights belong exclusively to the author and are not alienable (Article 21, Copyright Act).
Moral rights belong exclusively to the author and are not transmissible upon death.
“Technological protection measures” means equipment, devices, components, technology or other technological means employed by copyright owners to effectively prohibit or restrict others from accessing or exploiting works without authorisation (Article 3(1)(XVIII), Copyright Act).
Article 80 bis(1–4) of the Copyright Act provides as follows: "Technological protection measures employed by copyright owners to prohibit or restrict others from accessing works shall not, without legal authorisation, be disarmed, destroyed, or by any other means circumvented. Any equipment, device, component, technology or information for disarming, destroying, or circumventing technological protection measures shall not, without legal authorisation, be manufactured, imported, offered to the public for use, or offered in services to the public. The provisions of the preceding two paragraphs shall not apply in the following circumstances:
1. where to preserve national security;
2. where done by central or local government agencies;
3. where done by file archive institutions, educational institutions, or public libraries to assess whether to obtain the information;
4. where to protect minors;
5. where to protect personal data;
6. where to perform security testing of computers or networks;
7. where to conduct encryption research;
8. where to conduct reverse engineering;
9. where to exploit works of others in accordance with the provisions of Articles 44 through 63 and Article 65; and
10. under other circumstances specified by the competent authority.
The content in the subparagraphs of the preceding paragraph shall be prescribed and periodically reviewed by the competent authority."
Article 96 semel of the Act provides: "In any of the following circumstances a sentence of up to one year imprisonment or detention shall be imposed, or in lieu thereof or in addition thereto, a fine of not less than TWD20,000 and not more than TWD250,000:
1. violation of Article 80 semel; and
2. violation of paragraph 2 of Article 80 bis."
“Electronic rights management information” means electronic information presented on the original or copies of a work, or at the time of communication of the content of a work to the public, sufficient to identify the work, the name of the work, the author, the economic rights-holder or person licensed thereby, and the period or conditions of exploitation of the work, including numbers or symbols that represent such information (Article 3(1)(XVII), Copyright Act).
Electronic rights management information made by a copyright owner shall not be removed or altered except in the following circumstances:
Whoever knows that electronic rights management information of a work has been unlawfully removed or altered shall not distribute it or, with intent to distribute, import or possess the original or any copy of such work. He or she also shall not publicly broadcast, publicly perform, nor publicly transmit the same (Paragraph 2) (Article 80 semel, Copyright Act).
In the circumstances of violating the provisions regarding electronic rights management information and technological protection measures, a sentence of up to one year's imprisonment or detention shall be imposed, or in lieu thereof or in addition thereto, a fine of not less than TWD20,000 and not more than TWD250,000 (Article 96 semel (I), Copyright Act).
Economic rights-holders may, with the approval of the competent agency in charge of copyright matters, establish copyright collective management organisations (CMOs) for the purpose of exercising rights or collecting and distributing remuneration for use. Exclusive licensees may also join copyright collective management organisations. Approval for establishment and organisation and capacities of the organisations, as well as supervision and guidance thereof, are regulated under the Copyright Collective Management Organisation Act or CCMOA (Article 81, Copyright Act).
Taiwan’s system allows for the existence of several collecting societies. CMOs provide copyright collective management services, including those for the management of economic rights on behalf of multiple economic rights-holders, in which uniform royalty rates and methods for distribution of royalties are adopted as the basis for collection and distribution of royalties, and in which license agreements with users are established in the name of those providing the management (Articles 3(1) and 3(2), CCMOA). A CMO may prepare an individual license agreement, under which the exploitation of specific economic rights under management of the CMO is licensed to a user in return for remuneration (Article 3(3), CCMOA). Likewise, a CMO may prepare a blanket license agreement, under which all economic rights under management of the CMO are licensed to a user for a specific period without restriction on usage (Article 3(4), CCMOA). A CMO may also prepare an agreement on the management of economic rights and the distribution of the fees for usage awarded to their rights-holder (Article 3(5), CCMOA).
The CMOs' powers and functions are as follows:
Examples of CMOs are as follows:
Synchronisation rights are a part of the rights of reproduction and public transmission, provided this shall not apply when a broadcaster communicates to the public through public broadcasting or synchronous public transmission an advertisement in which a work has been reproduced under authorisation (Article 37(6)(IV), Copyright Act).
Taiwan’s system provides both a general clause and a list dealing with exceptions to copyright. Article 65(1) of the Copyright Act provides that fair use of a work shall not constitute infringement of the economic rights in the work, while Article 65(2) of the Act provides that in determining whether the exploitation of a work complies with the reasonable scope referred to in the provisions of Articles 44–63 of the Copyright Act or other conditions of fair use, all circumstances shall be taken into account. The statutory list, namely Articles 44–63 of the Copyright Act, is comprehensive but not exhaustive.
The following should be considered in determining whether the use of a work in a particular case is fair or allowable without the copyright holder’s consent:
The list, namely Articles 44–63 of the Copyright Act, provides types of exceptions of copyrights, each of which is related to one or more copyrights.
To a reasonable extent, central or local government agencies may reproduce the work of another person if it is considered necessary for internal reference for the purpose of legislation or administration (Article 44, Copyright Act). To a reasonable extent, and for the sole purpose of use necessary for judicial proceedings, the works of another person may be reproduced (Article 45(1), Copyright Act). To a reasonable extent, and where necessary for the purpose of teaching in schools, all levels of legally established schools and their teachers may reproduce the works of another person that have already been publicly released (Article 46(1), Copyright Act). To a reasonable extent, and for the purpose of preparing pedagogical texts for which review and approval by an education administrative agency are required by act or regulation, or where an education administrative agency prepares pedagogical texts itself, the works of another person that have been publicly released may be reproduced, adapted, or compiled (Article 47(1), Copyright Act). The owner of the original legal copy of an artistic work or photographic work, or a person authorised by the owner, may publicly display such original or legal copy of the work (Article 57(1), Copyright Act). The owner of a legal copy of a computer program may alter the program where necessary for utilisation on a machine used thereby, or may reproduce the program as necessary for back-up; however, this is limited to the owner’s personal use (Article 59(1), Copyright Act). Owners of originals of works and lawful copies of works may rent out such original works or copies; however, this shall not apply to sound recordings and computer programs (Article 60(1), Copyright Act).
Artistic works or architectural works displayed on a long-term basis on streets, in parks, on the outside walls of buildings, or other outdoor spaces open to the public, may be exploited by any means except under the following circumstances:
Connection Service Provider
A connection service provider shall not be liable for damages for infringement of the copyright or plate rights of another by a user of its service if: "1. the transmission of the information was initiated by or at the request of the user; and 2. the transmission, routing, provision of connections, or storage is carried out through an automatic technical process, without any selection of the material or modification of its content by the connection service provider" (Article 90 quinquies, Copyright Act).
Caching Service Provider
A caching service provider shall not be liable for damages for infringement of the copyright or plate rights of another by a user of its service if: "1. the service provider does not make any modification to the cached information; 2. when the person who made the original information available subsequently updates, deletes, or blocks access to it, the cached information is done in the same way as a result of an automatic technical process; and 3. the service provider responds expeditiously to remove, or disable access to, the allegedly infringing content or related information upon notification by a copyright holder or plate rights-holder of the alleged infringement by the user of the service provider" (Article 90 sexies, Copyright Act).
Information Storage Service Provider
An information storage service provider shall not be liable for damages for infringement of the copyright or plate rights of another by a user of its service if the service provider: "1. does not have knowledge of the allegedly infringing activity of the user; 2. does not receive a financial benefit directly attributable to the infringing activity of the user; and 3. responds expeditiously to remove, or disable access to, the allegedly infringing content or related information upon notification by a copyright holder or plate rights-holder of the alleged infringement by the user of the service provider" (Article 90 septies, Copyright Act).
Search Service Provider
A search service provider shall not be liable for damages for infringement of the copyright or plate rights of another by a user of its service if the service provider: "1. does not have knowledge that the searched or linked information may be infringing; 2. does not receive a financial benefit directly attributable to the infringing activity of the user; and 3. responds expeditiously to remove, or disable access to, the allegedly infringing content or related information upon notification by a copyright holder or plate rights-holder of the alleged infringement by the user of the service provider" (Article 90 octies, Copyright Act).
Internet Service Provider
An internet service provider shall not be liable for damages to the allegedly infringing user if the service provider: "1. removes, or disables access to, the allegedly infringing content or related information in accordance with Articles 90 sexies to 90 octies; or 2. upon obtaining knowledge of suspected infringement by the user, acts in good faith to remove, or disable access to, the allegedly infringing content or related information" (Article 90 decies, Copyright Act).
Taiwan does not establish an exception to copyright for satire and/or parody. The TIPO has proposed to add these exceptions into an amendment draft in the past, but the proposal was protested by many copyright owners because they are unwilling to have their works altered, distorted or mutilated. Finally, the TIPO withdrew the relevant proposal, so satire and/or parody still need to be dealt with under general fair-use provisions.
In Taiwan’s system, when there is a violation of freedom of speech/right of information/other human rights, this is mainly evaluated under general fair-use provisions, as discussed in 7.5 Satire and Parody. The Copyright Act also provides that to a reasonable extent, works that have been publicly released may be quoted where necessary for reports, comment, teaching, research, or other legitimate purposes (Articles 44–47 and 52, Copyright Act).
Protections of neighbouring rights for performers, producers of phonograms and broadcasting organisations are not implemented through an independent chapter or regime, but through independent articles or paragraphs in the Copyright Act (eg, for a performance work, Articles 7 semel, 22(1), 24(1), 26(2), 26b(2), 28b(2) and 29(2) of the Copyright Act).
Since neighbouring rights are protected as regular copyrights, their protection for economic/moral rights is basically the same as that of regular copyrights. Accordingly, they are alienable, and transmissible on death. Nevertheless, they are subject to some exceptions, ie, some rights are relatively restricted. For example, while performers have the exclusive right to publicly perform using loudspeakers or other equipment, this is inapplicable to public performances using loudspeakers or other equipment after that performance has been reproduced or publicly broadcast (Article 26(1), Copyright Act).
There are societies that specifically manage neighbouring rights:
Since neighbouring rights are protected as regular copyrights in Taiwan, there are no specific types of contracts to transfer, license or sell neighbouring rights, in view of the fact that some specific exceptions have been explicitly provided in the Copyright Act.
Since neighbouring rights are protected as regular copyrights in Taiwan, exceptions to copyright are generally applicable to neighbouring rights.
The following cases constitute an infringement of copyright:
The following cases are also deemed an infringement of copyright (Article 87(1), Copyright Act):
The defences against infringement can generally be categorised into the following two types.
The following kinds of proceedings are available to the author or economic rights-holder of a work:
According to Article 7 semel of the Copyright Act, a performance by a performer of a pre-existing work or folklore creation shall be protected as an independent work. Therefore, a performer of a work shall be protected as an independent author (economic rights-holder) of a work, and neighbouring rights (economic rights of a performer) thereof shall be protected as independent rights (economic rights). The same remedies and judicial procedure applicable to copyrights shall apply mutatis mutandis to neighbouring rights.
Moral rights are protected in Taiwan (Articles 15(1), 16(1) and 17(1), Copyright Act) and can be enforced by the author (moral rights-holder) in court proceedings (Article 85, Copyright Act).
There is a particular type of copyright that has a different regime, namely plate rights. Specifically, for a literary or artistic work having no or extinguished economic rights, a plate-maker, who arranges and prints the literary work or reproduces it by photocopy, print or the like and first publishes the original artistic work, and causes it to be recorded in accordance with this Act, shall have the exclusive rights to reproduce the plate by photocopy, print or the like under Article 79(1) of the Copyright Act. Accordingly, the burden of proof for plate rights in infringement proceedings may be heavier, but it is nonetheless clear cut in curbing any rights dispute. The regulations governing recordation of plate rights, their transfer, their trust, and other requisite matters shall be prescribed by the competent authority (Article 79(5), Copyright Act). Without such recordation, the plate-maker has no locus standi to act against a third party (Article 79(4), Copyright Act). Under a different regime, the plate rights may only be enjoyed for ten years (Article 79(2). Copyright Act).
The alleged infringer is allowed to file non-declaratory infringement proceedings (Article 247(1), Code of Civil Procedure).
Disputes arising from property rights (including copyrights) where the amount or value of the disputed subject is less than TWD500,000, shall be subject to mediation by the court before an action is initiated (Article 403(1)(XI), Code of Civil Procedure). Formal cease-and-desist letters are popular, although not required.
The first or second instance normally takes around six months to one year, and the third instance takes about one year for a formality-dismissing decision and may take two or more years for a substantive decision.
The judges of the Intellectual Property Court are equipped with competent IP knowledge. Accordingly, a copyright holder normally initiates infringement proceedings before the Intellectual Property Court (Article 3(1), Intellectual Property Court Organisation Act; Article 7, Intellectual Property Case Adjudication Act). However, a copyright holder may either initiate infringement proceedings before a common court (ie, a district court), or the copyright holder (plaintiff) and the alleged infringer (defendant) may designate a common court to exercise jurisdiction by a written agreement (Article 24, Code of Civil Procedure). That is, it is not mandatory to initiate copyright infringement proceedings before a specialised court (Intellectual Property Court).
The necessary parties to infringement proceedings are summarised as follows.
For moral rights infringement proceedings, the necessary parties to the proceedings are the author (moral rights-holder, plaintiff) and the alleged infringer (defendant) (Articles 84 and 85, Copyright Act). For economic rights infringement proceedings, the necessary parties to the proceedings are outlined as follows:
According to Article 63 of the Code of Civil Procedure, a third party involved in the proceedings (intervener, eg, non-exclusive licensee) shall not argue the appropriateness of a decision made in the action against the assisted party (eg, author), except where the intervener has been denied a means of attack or defence either due to the phase of the litigation at the time of the intervention or by an act of the assisted party, or where the assisted party has wilfully, or through gross negligence, failed to employ certain means of attack or defence unknown to the intervener (Article 63(1), Code of Civil Procedure). In addition, this rule shall apply mutatis mutandis to the assisted party with respect to the intervener.
Urgent measures (interim or preliminary injunctions) are available for rights-holders. They include "provisional attachments" (Article 522(1), Code of Civil Procedure), "provisional injunctions" (Article 532(1), Code of Civil Procedure) and "injunctions maintaining a temporary status quo" (Article 538(1), Code of Civil Procedure). Urgent measures may be requested before filing infringement proceedings on the merits (Articles 529(1), 533 and 538-4, Code of Civil Procedure).
Requirements to File Urgent Proceedings
For provisional attachments, a creditor may apply for a provisional attachment with regard to a monetary claim or claim changeable into a monetary claim for the purpose of securing satisfaction of a compulsory execution (Article 522(1), Code of Civil Procedure). No provisional attachment shall be granted unless the impossibility or extreme difficulty in satisfying the claim by a compulsory execution in the future can be shown (Article 523(1), Code of Civil Procedure).
A creditor may apply for a provisional injunction with regard to non-monetary claims for the purpose of securing satisfaction of a compulsory execution (Article 532(1), Code of Civil Procedure). No provisional injunction shall be granted unless the impossibility or extreme difficulty in satisfying the claim by a compulsory execution in the future due to a change in the status quo of the claimed subject can be shown (Article 532(2), Code of Civil Procedure).
Injunction maintaining temporary status quo
For injunctions maintaining a temporary status quo, wherever necessary for the purpose of preventing material harm, imminent danger or other similar circumstances, an application may be made for an injunction maintaining a temporary status quo with regard to the disputed legal relationship (Article 538(1), Code of Civil Procedure). A ruling for an injunction maintaining a temporary status quo may be issued only where the disputed legal relationship may be ascertained in an action on the merits (Article 538(2), Code of Civil Procedure).
Expert testimony or surveys are used as a kind of evidence in proceedings, including copyright proceedings. In making a judgment, the court shall, taking into consideration the entire import of the oral argument and the result of investigation of the evidence, determine the facts by discretional evaluation (Article 222(1), Code of Civil Procedure). Specifically, expert testimony and surveys are normally helpful evidence for the court in making a judgment, but are not compulsory in or binding on the court. They are not generally used by the courts when dealing with protection and/or infringement of copyrighted works because judges have the right of independent trial or judgement and are usually autonomous. However, exceptions apply in specific situations, such as when a software source code or object code or the methodology in an IC chip or module needs to be decrypted, which generally cannot be touched by bare hands or seen by the naked eye.
There are provisions for customs seizure of counterfeits and parallel imports. That is, the import and export of counterfeits and parallel imports are both illegal (Articles 87(1)(III) and 87(1)(IV), Copyright Act). A customs seizure procedure for counterfeits and parallel imports is typically as follows:
Under Taiwan’s legal system, a party to a copyrights matter may obtain relevant information and evidence from the other party or a third party by way of evidence preservation. Specifically, whenever it is likely that evidence may be destroyed or its use in court may become difficult, with the consent of the opposite party, the party may move the court for preservation of such evidence. Where necessary, the party which has legal interest in ascertaining the status quo of a matter or object may move for expert testimony, inspection or preservation of documentary evidence (Article 368(1), Code of Civil Procedure; Article 1, Intellectual Property Case Adjudication Act). Where no action on the merits has been initiated, a motion for preservation of evidence shall be made before the court where the action is to be brought; where the action has been initiated, such motion shall be made before the court where the action is pending (Article 18(1), Intellectual Property Case Adjudication Act).
The rights-holder may request the urgent seizure of the infringers’ goods and bank accounts if there is a danger that it may not be possible to recover the amount due for compensation for damages. Specifically, the rights-holder may apply for a provisional attachment with regard to its damages claim, which is a monetary claim. The rights-holder is required to show the impossibility or extreme difficulty in satisfying the claim by a compulsory execution in the future (Article 523(1), Code of Civil Procedure).
The intermediaries – either distributors or internet service providers or the like – who are involved in the infringing activities may be addressed with urgent measures as requested by the rights-holder if the measures are proper and there is a balance of rights’ protections between the rights-holder and the involved intermediary.
A person (natural person or legal person) who infringes on the copyrights of another person is subject to criminal penalties (eg, fixed-term imprisonment, detention, fine or confiscation). The detailed types of offence and relevant penalties are set out in Chapter 7 of the Copyright Act.
Copyright infringement may additionally constitute either a criminal offence to be pursued through criminal proceedings (Chapter 7, Copyright Act), or an administrative offence to be enforced through administrative means (Article 97-1, Copyright Act).
The following steps are possible in criminal proceedings:
As for administrative penalties, according to Article 97 semel of the Copyright Act, when an enterprise, by means of public transmission, infringes on the economic rights of another person and is convicted by a court, it shall immediately cease such activities. If not, the competent authority, after inviting specialists, scholars and related enterprises to find that there is a serious infringement significantly affecting the rights and interests of the economic rights-holder, shall prescribe a period of one month for the enterprise to take corrective action. Should the enterprise fail to do so, the competent authority may order suspension or compulsory termination of the enterprise’s business.
Enforcement of Decisions
Decisions in copyright-infringement proceedings (civil proceedings) are enforced by a common court, ie, a district court, rather than the Intellectual Property Court (Article 1(1), Compulsory Enforcement Act). This differs from the enforcement of decisions in administrative proceedings, which are subject to the jurisdiction of the IP Court (Article 3(3), Intellectual Property Court Organisation; Article 31(1), Intellectual Property Case Adjudication Act). In addition, a civil compulsory enforcement is subject to the jurisdiction of the court of the place where the object to be enforced is located or the place where the enforcement actions shall be conducted (Article 7(1), Compulsory Enforcement Act). For the purpose of moving for a compulsory enforcement, the creditor (eg, copyright holder) shall submit a brief manifesting the following particulars to the competent court: (a) parties and their statutory agents; and (b) claims requested to be realised (Article 5(1), Compulsory Enforcement Act).
There are special provisions concerning the appellate procedure for copyright proceedings in respect of the jurisdiction. Courts having jurisdiction to hear an appeal in copyright proceedings are as follows:
For civil cases, in the second instance (first appeal), there are both factual and legal reviews, and this is subject to a successive review. Specifically, the parties may present additional means of attack or defence, including additional arguments or defences, additional facts and/or additional evidence (eg, new documents). The appellate court, however, does not review evidence that was presented and investigated in the first instance; it also does not review arguments or defences or facts that were presented and investigated in the first instance, if no extra supplemental evidence is presented in the second instance (Article 447(1), Code of Civil Procedure; Article 1, Intellectual Property Case Adjudication Act). In the third instance (second appeal), there is only legal review.
For criminal cases, in the second instance (first appeal), there are both factual and legal reviews, too, and this is subject to a repetitive review. Specifically, the parties may present additional means of attack or defence, including additional arguments or defences, additional facts and/or additional evidence (eg, new documents). The appellate court also reviews arguments or defences, facts and/or evidence that were presented and investigated in the first instance (Article 364, Code of Criminal Procedure; Article 1, Intellectual Property Case Adjudication Act). In the third instance (second appeal), there is only legal review.
Court fees should be paid by the party to the proceedings. The court fees for every instance of a civil litigation (eg, copyright infringement action) can be calculated by using a calculating programme (see www.judicial.gov.tw/assist/count.html).
The losing party is responsible for paying the court fees (Article 78, Code of Civil Procedure). As for attorney's fees, the parties are responsible for paying their own. Specifically, the losing party is not required to reimburse the prevailing party for their attorney's fees.
For some disputes, alternative dispute resolution is compulsory (Article 403, Code of Civil Proceedings). Nevertheless, alternative dispute resolution is currently neither a common way nor a compulsory element of settling a copyright case in Taiwan, although the parties or the court may make an attempt to use it.