(From a presentation by Lisa Wang, General Counsel, Huayi Brothers Media Corporation)
The following is a readout of the US-China Entertainment Law Conference held at Loyola Law School of Los Angeles on November 2, 2016. A list of the speakers is found at the end of the blog. The program was co-hosted by USPTO and Loyola Law School.
Although there have been several notable legal developments in entertainment law in China, the most dramatic changes have been in the market. China is now the world’s second largest market for theatrical films, after the United States. While box office revenue and attendance are down in the United States for motion pictures, China has experience incredible growth, with box office revenue nearly 50% in 2015 compared to 2014. China will likely experience slower growth in 2016, and may enter a more sustainable rate of growth thereafter. The industry is adapt to the increased importance of China through changing content to have wider appeal and including China in marketing and business development plans.
Among the major China players, Wanda is now the largest owner of theatres in the world. It acquired Legendary Pictures in a $3.5 billion media deal. Tencent is the world’s largest purveyor of of videogames, with 4.2 billion USD in global revenues in 2015. It is also the first ranked publisher on IOS and Apple app stores. The Chinese market had 489.2 million video game users in the first half of 2016, with a growth rate of 30.1 percent compared to the first half of 2015. Importantly, Chinese consumers now accept paying a fee for using online videogames.
The investment trends for films from China include more direct investment in the United States and Europe, more collaborative production, and more local financing, especially for shows and including both television production and online productions. Box office revenue will likely continue to grow, and online video will continue to disrupt ticket prices.
Prof. Seagull Song of Loyola noted that in 2015, foreign films captured five of the top ten grossing films in China. Market access restrictions are still impeding the market, and that the China market is still underperforming for its size. However, with respect to market access restrictions, the dean of the Beijing Film Academy predicted that the current quota on foreign films is also likely to be relaxed, but that this relaxation is not likely to have much impact due to the preference of the public for locally made films.
Regarding the on-line environment for content, Prof. Robert Merges of UC-Berkeley suggested that as platforms affect the distribution of content and provide increasing vertical integration, maintaining competition among the limited number of platforms is likely to become more difficult. With vertical integration, Merges predicted that copyright is likely to become less important in China. Branding will instead become more important to develop loyalty to a platform that provides a variety of content and services. In addition, the development and ownership of data originating from platform services will become critical to platform success.
Taking a different approach, Prof. Eric Priest of the University of Oregon addressed the question of what happens when copyright is harder to enforce such as in the online environment. With changing technologies, copyright allows its owners and creators to access new markets as they are created, providing them with some leverage with intermediary platforms, and helps stabilize the market for content creation by creating multiple revenue streams. LeTV is an example of a company in China that began driving new copyright norms by investing in licensing of copyrighted content around 2009 and 2010. The theme of a diversity of licensing revenue streams in addressing new markets and new technologies was later underscored by Shira Perlmutter of USPTO, who also look at trademark rights derived from copyrighted content in her key note speech, while also underscoring many of the continuing enforcement challenges foreign rights holders face.
As an example of the competitive challenges faced by copyright owners, Priest cited the example of ring back tones for music. Seventy percent of China’s huge netizen population consume music. However, most are not paying for this music – except for cell phone ring back tones. Gross revenues received by mobile cell companies for ring back tones were nearly as high as gross revenue for the music industry in the United States. However, the music industry received a paltry 105 million USD for its content from Chinese cell service providers compared to the 4 billion that was generated. Thus, Priest’s discussion to a degree validated Merges’ discussion regarding how competition and integration were becoming increasing concerns.
Prof. Song gave a brief presentation on some of the top entertainment cases in areas such as defamation, ideas/expression dichotomy, merchandising rights, and first look rights of publishers.
In trademark, several speakers discussed the Kung Fu Panda / merchandising right case, which has also appeared in this blog. Not all speakers were in favor of this modest trend of creating a new “merchandising right.” In the United States, the issue was first addressed by our courts and later adopted into amendments in the Lanham Act which look at likelihood of confusion based on misleading endorsement or sponsorship of a product or service. (Trademark Law Revision Act of 1988 – concept of “confusion as to the sponsorship”), as well as the Federal Trademark Dilution Act of 1995 (protecting famous marks against either the blurring of their distinctiveness or the tarnishment of their reputation caused by unauthorized uses of identical or similar marks not solely on related goods but also on unrelated goods.) In the United States case law requires a case by case analysis, particularly for unrelated goods and services, where the plaintiff can show a likelihood of confusion as to “sponsorship.” Cynthia Henderson of USPTO underscored that in China, there may be a greater need for a merchandising right because of rampant bad faith filings, lack of flexibility under China’s first to file system, lack of protection for lesser known marks, and difficulties in addressing infringements for protection across different classes of goods and services.
Prof. Zhang Ping. from Peking University, discussed the various possibilities for protecting the title of a work under Chinese law, including trademark protection, copyright protection and unfair competition. Trademark protection in her view, could be deficient since “in [the] real world, one does not pursue trademark protection for the title of a work until this work gains certain commercial value.” In such instances, unfair-competition protection might be pursued as a supplemental remedy. Prof. Zhang gave the example of the famous Wahaha mark (1989), which was originally the title of a popular song (1954). A court determined that the creator of the song did not enjoy copyright protection in the title. Unfair competition and merchandising rights may help in addressing these issues .
Several speakers addressed problems in copyright protection for live television entertainment, including but not limited to, live sports broadcasting. Rebecca Borden of CBS noted that the scope of content that has uncertain protection under current Chinese copyright law incudes live broadcasts of sporting events (about which I have previously blogged), but also includes award shows, games shows, annual galas, etc. Award shows have many similarities to sporting events, including filming of live reactions to awards/unexpected reactions, driving viewership in conjunction with unique performances or achievements, etc. Prof. Jiarui Liu of the University of San Francisco noted that recognizing the creation of a professionally produced live sports broadcast as a creative work would likely provide the most stable protection for the investment in these works.
The video gaming industry also faces a number of IP challenges, as noted by Zhang Xin of Tencent and Song Haining of the Junhe Law firm. Haidian District Court has been the epicenter of litigation involving onine gaming IP issues. Total adjudicated cases in 2014-2015 involving copyright were 183; trademarks 17, and unfair competition 9. Courts have been willing to impose progressively higher damages, including damages based on actual or implied revenues attributable to the copyrightable infringement. Due to the large amounts at stake, some cases will also satisfy criminal thresholds, and the public security agencies have been supportive. See, eg., WeMade v. Xiaoxian (2016), which involves potentially billions of RMB in damages.
Charles Feng of East & Concord Partners gave an excellent presentation on preliminary injunction (PI) practice in China, an issue I have covered elsewhere on this blog. Mr. Feng gave permission for me to post his ppt here.
In Mr. Feng’s view, the likelihood of prevailing on the merits is based on a calculation of the “certainty to prevail” minus “opposing evidence.” If there is sufficient evidence and clear facts, which do not involve complicated comparison or necessitate judicial verification, a plaintiff is more likely to prevail. PI’s are also rare in invention patent or software infringement cases. The case should also not involve disputable or controversial issues, such as those involving the originality of a work, the doctrine of equivalents, a prior-art defense, the similarity of marks or goods, the well-known status of a mark, etc.
In assessing the public interest, the court also looks at issues such as the necessity of intervening against fake and shoddy goods, supporting the security of people’s life, environmental conservation, etc. Generally, preliminary injunctions are rejected in case of a pharmaceutical products related patent and SEP’s.
Among the cases he cited: Telpa v. Media Plus（灿星）(Voice of China case), where the defendant may have used trademarks completely incorporating plaintiff’s registered mark, and there was also trade name infringement. A contrary case example is HBSA v. General Administration of Sport, involving the 跤王 “Wrestling King” mark in in Cl. 41 covering. The General Administration of Sport organized games called “China Wrestling King Competition”. During the litigation, the defendant claimed the fair use defense. The Beijing No.2 Intermediate Ct. noted that “Given the alleged mark of Wrestling King is a generic name, which may not be registered as a mark, and that the Trademark Review Adjudication Board has accepted the application for invalidation, the court does not believe that there is likelihood of prevailing on the merits.”
The concluding panel, which was moderated by me, included a lively discussion over IP, rule of law, the importance of the Chinese market, the role of the Chinese government, and the future direction of “entertainment law” in China. Monique Joe highlighted the differences and unpredictability in the way the TM law is applied to address infringement and squatting issues. Joshua Grode noted that he thought IP issues were not a major factor in deals. Sheri Jeffrey noted that many deals do not contemplate the full scope of rights that may be licensed or created, including rights
Prof. Ma Yide refuted assertions that China is not protecting IP or that there were regulatory risks in China that made investment unattractive, noting that the growth in the market was likely the single biggest attractive force for foreign investor. Regulatory uncertainty was noted as a major factor in driving investors away from co-productions, despite a higher revenue share (47%) for coproduction versus an imported film. The lack of certainty also dries down liquidity. Putting together Robert Merges’ comments, the deal makers on the last panel, and the concerns about over the uncertainty of copyright protection in certain areas, several speakers questioned whether copyright was becoming the “chopped liver” of the entertainment sector – beautiful to look at, but rarely exploited in the proper way, which was a somewhat negative way to end an otherwise very positive and forward- looking program.
The preceding are my personal observations only.
|Rebecca Borden||Senior Vice President and Associate General Counsel, CBS|
|Mark Cohen ||Senior Counsel, United States Patent and Trademark Office|
|Jay Dougherty||Professor, Loyola Law School, Los Angeles|
|Charles Feng||Partner, East & Concord Partners|
|Neil Graham||Attorney Advisor, Office of Policy and International Affairs, United States Patent & Trademark Office|
|Josh Grode||Partner, Irell & Manella LLP|
|Sheri Jeffery||Partner, Hogan Lovells LLP|
|Monique Joe||Head of Trademarks, Dreamworks Animation|
|LIU Chun-Tian||Dean, Renmin University Intellectual Property Academy|
|LIU Jia-rui||Assistant Professor, University of San Francisco School of Law|
|MA Yide||President, Beijing Zhongguancun IP Research Institute|
|Robert Merges||Professor, University of California Berkeley School of Law|
|Shira Perlmutter||Chief Policy Officer, United States Patent & Trademark Office|
|Eric Priest||Associate Professor, University of Oregon Law School|
|Bennett Pozil||Executive Vice President and Head of Corporate Banking, East West Bank|
|SONG Hai-ning||Partner, Junhe Law Firm|
|Seagull Song||Professor, Loyola Law School, Los Angeles|
|Simon Sun||Executive Vice President, Le Vision Pictures USA|
|Lisa Wang||General Counsel, Huayi Brothers Media Corporation|
|Michael Waterstone||Dean, Loyola Law School, Los Angeles|
|Martin Willhite||Chief Operating Office and General Counsel, Legendary Pictures|
|WU Manfang||Dean, Beijing Film Academy School of Management|
|ZHANG Ping||Professor, Peking University Law School|
|ZHANG Xin||Legal Director, Tencent Interactive Entertainment|