Tsai-Yi-Ta Attorney at law
蔡億達律師（本會副秘書長）
The Taiwan Copyright Act borrows heavily from the Copyright Law of the United States, and also the opinions of the federal court. To determine whether there is a conduct of “copy,” or whether the work was created independently, the Taiwan Supreme Court uses the “access and substantial similarity” test1. The higher the similarity of the works in issue, the lower the threshold required for access, and vice versa. In most cases, the similarity will completely replace the “access” requirement, i.e., the existence of access is presumed. There is exactly the same rule–inverse ratio rule–applied in the federal court2.
To determine whether similarity is substantial, the Taiwan Supreme Court uses the “quality and quantity test,” which looks into the ratio (quantity) and importance (quality) of the alleged infringed parts of the work. Both elements– quality and quantity–are determined by an objective standard of a hypothetical average person in the community. The federal court, on the other hand, uses the “intrinsic and extrinsic test” to determine whether there is substantial similarity. The extrinsic test considers “whether two works share a similarity of ideas and expression as measured by external, objective criteria.”,3 while the intrinsic test asks “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.”4
As to whether the works should be broken down into elements for comparison, the Taiwan Supreme Court disagreed, stating that it will be difficult and unfair, especially in artworks, to break down the work for comparison of details. The Taiwan courts only consider “the total concept and feeling” between the works in the consideration of quality tests.5 In the extinct test applied by the federal court, however, often engages in analytic dissection. Under the court’s opinion, analytic dissection focuses on isolated elements of each work to the exclusion of other elements, combinations of elements, and expressions therein. Analytic dissection requires breaking the works compared down into their constituent elements, and comparing those elements for proof of copying as measured by “substantial similarity.”6
The Taiwan courts also distinguish “idea” and “expression,” rendering ideas unprotectable under the Copyright Act. The boundary line between “idea” and “expression” is blurred, but it is established that factual works with a narrow range of expression of ideas are more likely not copyrightable expressions. Likewise, the federal court uses the merge doctrine to filter unprotectable elements, which operates when there are only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself.7
In conclusion, although the Taiwan Copyright Act borrows heavily from the Copyright Law of the United States, there are still some differences between the court’s opinions. To make sure whether an infringement occurs, please consult with attorneys specializing in Taiwan Copyright Act.
[1] 最高法院97年度台上字第3121號刑事判決
[2] See Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) and Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000)
[3] Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).
[4] Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991).
[5] 最高法院97年度台上字第6499號刑事判決
[6] Rice v. Fox Broadcasting Co., 148 F. Supp. 2d 1029 (C.D. Cal. 2001)
[7] Warren Pub., Inc. v. Microdos Data Corp., 115 F.3d 1509, 1519 n.27 (11th Cir. 1997).