What kind of design can be protected by copyright law? Can creators freely adopt any materials they want? How do they avoid copyright infringement through improper adoption of materials? After the design work is completed, how do the collaborating parties ensure that their interests are well covered and protected in the licensing process? The author has selected recent domestic and international cases to provide in-depth analysis below. ——Lawyer Lan
When it comes to “design,” it is considered the most concise expression, similar to the simplicity of a poem, as both can catch the eye and capture the heart. But its simplicity also easily leads to disputes over plagiarism or infringement, frustrating creators and confusing users in the legal aspect. So what kind of design can be protected by copyright law? Can creators freely adopt any material they want? How do they avoid copyright infringement by improperly adopting materials? After the design work is completed, how do collaborators ensure that their interests are well represented and protected in the licensing process? The author has selected recent domestic and international cases to provide in-depth analysis below.
Copyright Dispute over Design Materials
The works derived from the pictorial design are usually protected under the copyright law as artistic works, pictorial and graphic works, photographic works or audiovisual works. Take, for example, the 2021 calendar published by the Taiwan Forestry Bureau entitled “Forest Lives and their Relationship”. Its illustrations, which depict the symbiotic relationship between mountain plants and native Taiwanese species such as the Formosan black bear and the leopard cat, fall into the category of artistic works. Another example is the Taiwanese work “Salt Bathed In The Sun”, which won the 2022 Red Dot Design Award. The work is based on the theme of Tainan’s Qinkunshen fan-shaped salt fields and was designed by students from the Department of Visual Communication Design at Shu-Te University . The production team also enjoys the artistic copyright of their fresh and unique design pattern. Given that the natural source is shared by all people, a design work with intake from nature becomes questionable for the design industry to claim the work’s originality and copyright protection.
1. When Designing a Pattern, Is It Protected by Law to Include the Natural Landscape?
Can creators claim their artistic copyrights to their drawings of natural subjects such as goldfish, lotus, cloudy leopard, cherry blossom and Jade Mountain? This issue is constantly raised by the opposing parties in the infringement litigation. The case of DEM Inc. is a famous example of copyright infringement. The defendant argued that “goldfish” is one species in nature and resemble each other; therefore, the defendant’s design created based on the common appearance of goldfish is well known and accepted by the public. DEM Inc. pointed out that the identical goldfish pattern could also be found in the market much earlier than its creation, and claimed that the complainant’s goldfish pattern lacked uniqueness or creation, and therefore did not deserve originality under copyright law. However, this argument was not accepted by the Court of Appeals; the judges found that “the complainant’s goldfish pattern contains the complainant’s independent perception and insight, and also incorporates her personal craftsmanship into the design; therefore, the complainant’s goldfish pattern is an artistic work eligible for protection of copyright law. The appellate court, after conducting an adequate investigation and crediting the evidence, overturned the judgment of acquittal entered by the district court and entered the judgment of conviction (see Taiwan Taipei District Court Criminal Judgement 99 Zhi-Yi-Tzu 34, and Taiwan Intellectual Property Court Criminal Judgement 100 Xing-Zhi-Shang-Su-Tzu 39).
Although the appearance of animals or plants in nature is not eligible for copyright protection and can be depicted by anyone, we should be aware that different creators present their respective and distinctive output, and such output is eligible for copyright protection when it becomes a specific expression containing individual spirit and uniqueness. Well-known worldwide examples include Water Lilies by French Impressionist Claude Monet, , Dwelling in the Fuchun Mountains by Huang Gongwang in the Yuan Dynasty, and Behind the Great Wave off Kanagawa by Katsushika Hokusai this famous artist of the Ukiyo-e period impressed the world with the clash of waves and Mount Fuji. We can also look at JUST IN XX, a Taiwanese fashion brand, which released its latest design of receptionist uniforms for Taiwan’s 2022 National Day Celebration Ceremony. It is surprisingly refreshing to see the pattern of cloudy leopards and cherry blossoms  printed on the clothes. And the owner of the artistic copyright of such a pattern is the designer, Justin Chou (or his commissioner).
2. If I Use A Similar Concept to Someone Else’s for My Design, Is That Considered Plagiarism?
The belief that similarity of “ideas and concepts” constitutes plagiarism is a myth in many infringement cases. According to Article 10-1 of the Copyright Act, “The protection of copyright obtained under this Act shall extend only to the expression of the work concerned, and shall not extend to the underlying ideas, procedures, production processes, systems, methods of operation, concepts, principles or discoveries of the work”. Based on the explanation made by the Taiwan Intellectual Property Office under this rule, because copyright does not protect pure ideas and concepts, when an illustrator is commissioned to do graphic designs and is provided with the idea or comment by the commissioner who is not involved in any actual drawings, the illustrator is considered to be the author of the work upon completion .
For example, if an influencer intends to have a cartoonist create a graphic character for the influencer ‘s channel, such as a virtual tuber, the influencer would provide the cartoonist with written descriptions for such drawings. Under these circumstances, if the influencer only provides an idea or guideline for the preferred style and leaves it to the artist to complete the look of the character, the artist is the author of such work, as the concept/idea is not eligible for copyright protection.
Generally, copyrights (including moral rights and economic rights) in a work belong to the author who actually completes the work. However, if the influencer intends to obtain the artistic copyright in the graphic character, the situation would be as if the influencer is the commissioner for whom the cartoonist completes the graphic character under commission, then the influencer should have an agreement in place to determine who the author is. In the absence of a stipulation on copyright, pursuant to Article 12 of the Copyright Act, the commissioner (cartoonist) shall be the author of the work and shall enjoy the economic rights, and the commissioner (influencer) may exploit the work to the extent and for the purpose of the commission.
Another example is the giant puppet production called “Ayla – The First Visit,” which was performed by the Taiwanese team “Ars Association” and premiered at the Yunlin International Puppet Theater Festival on October 1, 2022. Immediately after its release, the production was confronted with the question on the Internet whether the Taiwanese puppet “Ayla” was a copy of the production “Little Amal” from July 2021 and the cross-border art project “The Walk with Amal”. “Little Amal” was initiated by the Good Chance Theatre Company, founded by British playwrights who were inspired by the difficult living conditions of refugees in Calais, France.
Is there a substantial similarity between these two projects? Can the situation constitute copying at all? To answer these questions, we must consider whether the scope of artistic copyright protection extends to production methods and the concept of the look. Can the way the dolls are made – the hollowed upper body made of bamboo/vine, the head and limbs, and the clothes – be protected by copyright law?
If we compare Taiwan’s Ayla and Little Amal, the similarity lies in the functional designs, such as puppet devices for its limbs and hollow body structures, where in fact, similar creations are widespread in many countries, such as the giant puppet parades in Chartered Arts held in Causeway Bay, Hong Kong in 2015, the giant puppet exhibition in Liverpool in 2021, the giant puppet show “From Junk to Giants” held on the street of Berlin. We can say that the production method of a puppet is not protected by copyright law, but of course, if there is a patentable mechanical operation process or invention of functional design, the patent protection will kick in. In our case, Taiwan’s Ayla and Little Amal have their respective looks and clothes, which are different from each other, so there will be independent artistic copyrights in both, and there is no infringement .
3. Is the Creation Protected When Artwork Is Wrapped and disappears?
In 2021, the installation art “the Wrapped Arc de Triomphe” was completed in France; although the presentation lasted only 16 days, the ephemeral art still caught everyone’s eyes. As a work of art, “the wrapped Arc de Triomphe” was masterminded by Christo Vladimirov Javacheff and his wife, Jeanne-Claude Vladimirov Javacheff – they are famous for their collaborative creation of “wraps” as installation works. After Jeanne’s death in 2009, Christo continued his “Wrapping” project and unveiled his design drawings for the “Wrapped Arc de Triomphe“. The project was scheduled to launch in 2020, but was delayed by the pandemic, the same year Christo left this world, so the project was continued by his production team.
Can the view of the works that take the form of wrapping great landmarks (such as the Arc de Triomphe) be considered a “work”? It is indeed a fascinating question. The politician Florian Philippot once denounced the wrapped Arc de Triomphe as “a garbage bag draped over one of our most glorious monuments. There is no denying that wrapped buildings, landmarks, or works of art contain their specific status and value as architectural or artistic works, but the artists’ transformation of art into wrapping evokes a different perception of art – can we give it any aesthetic appreciation other than calling it rebellious? The creator “wanted people to look again at what perhaps they did not see” and expressed that “freedom is also a fierce act of the imagination”.. Standing at the Arc de Triomphe, French President Macron said, “I think what we believe is this: crazy dreams must be possible. The wrapping of a monument at once military, historical, artistic and a repository of national memory made French people extraordinarily proud – because this is what artistic adventure is all about.” 
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Taiwan’s Copyright Act sets forth its standards of originality for works to be protected. Although “The Wrapped Arc de Triomphe” presents its creativity through the methods or concepts listed in Article 10-1 of the Copyright Act, and such presentation is not protected by the Copyright Act, the form of “wrapping” can be regarded as a unique expression of art supported by the artists’ eccentric creative concept; therefore, “The Wrapped Arc de Triomphe” still qualifies for the element of originality, and the creators certainly have their artistic copyrights.
We know that Christo owns the artistic copyright subsisting in the design drawings of the Wrapped Arc de Triomphe, but what about the actual installation of the Wrapped Arc de Triomphe? Let us assume that Christo had completed most of the design, and that the production team merely implemented the drawings without any further creative input, then the work would be considered to have been created by Christo, and he would still own the artistic copyright in the actual installation, and the term of the copyright would be 50 years from the year of Christo’s death (under the EU Directive, copyright extends for the life of the creator plus an additional 70 years). However, in a different situation, if the work of installation art was not completed by Christo prior to his death and was completed by the production team continuing his creation, the work will contain the inseparable creativity of Christo and the production team and will be considered a joint work, the artistic copyright of which will be owned jointly by Christo and the production team. Such term of protection shall be fifty years after the death of the last surviving member of the production team pursuant to Section 31 of the Copyright Act.
4. Can Creators Use Public Domain Works As Their Own Design Materials?
Many creators are dedicated to incorporating traditional elements into modern design materials, for example, rapper Tu Cheng-Hsi, more popularly known as Soft Lipa, produced his music VR called “Input Sattva“, which was publicly released by the Cultural Affairs Bureau of Taoyuan City Government on October 7, 2020. Are the Buddhist elements, including the lotus throne and Gautama Buddha, used in his VR images protected by copyright law? What about creations using Taiwanese folklore images of dog-skin plaster or joss paper? When visual designer Liu Kai used joss paper in the movie poster for “A City of Sadness,” or when designer Xiao Qing-Yang’s album cover design was adapted from ancient Chinese paintings, did they need to obtain a license? While viewers and users often ask questions about the creator’s romantic experiments, the truth is that there should be no concern about works adopted from public domain materials to infringe the rights of others; however, the negative comments and suspicions of viewers could cause so much harm to creators that such misunderstanding would extinguish the fire of creation and suppress the dissemination of good works.
Does the dog-skin plaster, which has long been a common folklore image in Taiwan, fall into the category of artistic works? The copyright issue has never been considered because this plaster is so common in Taiwanese daily life to cure our muscle pain. Under the application of the “minimum degree of creativity” doctrine, if the product of Dogskin Plaster has been formed by a witty design so as to be treated as a work of art involving creativity, then it can certainly warrant copyright protection. The reason is simple. Since the folklore images have been handed down for a long time and span the evolution of history, they have most likely entered the public domain – chances are that the first inventor of Dogskin Plaster or the first painter of Buddha or Lotus Throne is unknown. According to Article 43 of the Copyright Act, “except as otherwise provided by this Act, any person may freely exploit a work for which the economic rights have been extinguished,” the use of public domain works does not require the originator’s license. In addition, according to Article 6 of the Copyright Act, the new designs adopted from this type of material are derivative works, and the artistic copyrights subsisting in the works are owned by the pattern designer.
Ancient Chinese Paintings
In 2007, Click Music Co. released the album “Riding a White Horse“, a collaboration between composer Su Tong-Da and the Chun-Mei Taiwanese Opera Troupe, featuring electronic Taiwanese opera songs. The album cover was designed by Xiao Qingyang, who adapted the “Ming Dynasty Departure Herald ” from the Palace Museum collection . However, the cover design stirred up controversy and criticism on the Internet, with accusations of copyright infringement against him. The legal dispute began with a public misunderstanding about the copyright of ancient cultural relics in museum collections. When the copyright period of ancient cultural relics in museum collections has expired, the economic rights would have expired and entered the public domain. The museum only has the right to manage the physical relics and does not own the copyright; therefore, anyone can freely use the relics without the museum’s permission. Clearly, there was no infringement in the design of the ” Riding a White Horse” album cover , but unfortunately, the ignorant misunderstanding at the time caused unjust harm to the designer – it is a pity that such an undeserved accusation occurred.
Clarification of Copyright Licensing and Infringement
Upon completion of the design pattern, the creator and the user are faced to negotiate the terms of the license, which should specify the “licensed subject, region, cost, term, and medium” in the copyright license agreement. Lacking clear stipulations may result in the presumption of authorization under Article 37 of the the Copyright Act: “The economic rights holder may license others to exploit the work. The territory, term, content, method of exploitation, and other particulars of the license shall be as stipulated by the parties; particulars not clearly covered by such stipulations shall be presumed to have not been licensed.” Taking licensed medium as an example, physical and digital products belong to different forms of utilized mediums. When the creator’s license only covers physical products, the licensee cannot freely extend the licensed use to digital public transmission. As a result, when a cartoonist only authorizes the use of the artwork for physical book publishing, the publisher’s digital distribution without authorization would constitute an infringement.
1. Graffiti’s Licensing
Graffiti, which appeared on New York City streets in the early 1970s, has largely been viewed as a threat to the city, an illegal littering hazard. In the years that followed, however, graffiti artists gradually gained acceptance from art institutions, and even their works were sold at auction markets for record-breaking prices. In 2018, the fashion brand Coach launched the Coach X Keith Haring collaborative merchandise collection, which features the iconic graffiti artwork of Keith Haring (1958-1990) as a core design element. Because the copyright protection period for Haring’s graffiti artwork was still ongoing in 2018, Coach needed to obtain the necessary license from Haring’s heirs. However, the fashion designer or Coach owns the artistic copyright in the fashion accessories created by adapting the graffiti patterns.
Let’s take a look at the Taiwanese artwork of graffiti artist Han Jun-Yue (Candy Bird), whose creations focus on the lives of workers, often with a touch of sarcasm. Her famous masterpiece “I’m guilty because I get off work on time…” aims to mock the normality of overtime for white-collar workers, and has attracted the attention of film and television producers for possible collaborations. Suppose a graffiti artist wishes to provide her graffiti artwork to a film crew by licensing, the terms of the licensing agreement entered into may be drafted as follows: “Party A (the film production company) hereby commissions Party B (the graffiti artist) to undertake the graffiti artwork for the film “XXX” (the Film). While the graffiti artwork created by Party B for Party A under this contract shall be Party B’s work and any copyrights in such work shall be retained with Party B, Party B shall grant Party A the right to use the graffiti artwork in the Film. Party B agrees that Party A acquires any audiovisual copyright with respect to the filmed content derived from Party B’s creations for the purpose of the Film.
2. Cross-industry Collaboration between Fashion Design and Arts of Painting
At Taipei Fashion Week 2021, designer Zhou Yu-Ying, in collaboration with artist Paul Chiang, presented the incorporation of Chiang’s classic paintings into fashion in the collection of Taiwanese fashion brand JUST IN XX, taking the creation to a new level. Before we can clarify who owns the copyright and ownership of the costume design that incorporates the paintings, we need to answer another question: We know that Chiang’s paintings or devices belong to the artistic works in which the copyrights and ownership are vested in Chiang; then, when Chiang’s work is adapted by designer Zhou, who enjoys the artistic copyright in such costume design? With the rise of cross-industry fashion collaborations, an in-depth look at these issues is more important than ever.
Under copyright law, “adaptation” means to create another work based upon a preexisting work by translation, musical arrangement, revision, filming, or other means. When a new work is created from an existing work, that new work is an “adaptation” if the creators have put their thoughts and ideas into the new work to the extent that it meets the minimum threshold of creativity required by copyright law; in contrast, that new work is a “reproduction” if the new work is substantially the same as the original work without any creative contribution by the creator (see Taiwan Intellectual Property Court Criminal Judgement 102 Xing-Zhi-Shang-Yi-Tzu 107).
According to Article 6 of the Copyright Law, the author of a derivative work has the right to the work. Since Zhou Yu-Ying was authorized by artist Paul Chiang to transform the painting into a fashion design, and since Zhou’s adaptation includes insightful and conceptual patterns that are completely unique, we can consider designer Zhou Yu-Ying’s design drawings and his finished fashion artistic works as his artistic works in which he owns the copyright and ownership. And of course, he has every right to allow the organizer of Taipei Fashion Week to present his beautiful works as well.
3. Infringement Cases over the Adaptation of Photographic Works.
Pop Art master Andy Warhol used a well-known black-and-white photograph of actress Marilyn Monroe as the basis for his work. He restructured the image and innovated it with new colour and makeup, creating a derivative work covered by Article 6 of the Copyright Act. Warhol’s artistic copyright in his adaptation of the photographic work generated stunning aesthetic value and lucrative interest. In May 2022, at a Christie’s auction, one of Warhol’s works in the series, “Shot Sage Blue Marilyn,” was priced at US$200 million. However, the other work in the series “The Prince Series” sparked a lawsuit alleging copyright infringement. After a five-year legal battle, the case was won in the first instance but overturned on appeal; currently, the case is being heard by the US Federal Supreme Court.
Facts and Allegation of Infringement
In 1981, Lynn Goldsmith took a portrait of singer Prince Rogers Nelson (stage name “Prince”), and three years later Andy Warhol was commissioned to use this photograph to create a series of 16 silkscreen prints, collectively known as the “Prince Series”. When Prince passed away in 2016, Vanity Fair honoured the singer with a tribute cover featuring an orange portrait from Andy Warhol’s “Prince Series”. It was at this point that Goldsmith became aware, and in 2017, a lawsuit was filed in the Southern District Court of New York, accusing Andy Warhol’s “Prince Series” of copyright infringement.
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Judgement’s Focus: Whether Andy Warhol’s Prince Series Is Transformative?
The New York district judge found that Andy Warhol’s Prince series was transformative because Warhol’s work conveyed a different message from the original work – Goldsmith’s photo, which portrayed Prince as a “vulnerable human being”, was transformed into an “iconic, larger-than-life figure”. Following Goldsmith’s appeal, the Second Circuit federal appeals court disagreed with the district court and reversed the judgement, finding Warhol’s works in violation of Goldsmith’s photographic copyright with the following reasoning: “The transformative purpose and character of secondary works must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material. We note that Warhol created the series chiefly by superimposing certain elements, removing other details from the Goldsmith Photograph, such as depth and contrast, and embellishing the flattened images with “loud, unnatural colors.” In spite of Warhol’s cumulative effect of changes to the Goldsmith Photograph, it does not follow that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative. The Prince Series retains the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements. The Warhol images are instantly recognizable as depictions or images of the Goldsmith Photograph itself, and are likely to be legally derivative rather than “transformative.” See Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021). Supreme Court is now hearing this case as Andy Warhol Foundation has asked the court to overturn the Second Circuit’s decision. In October 2022, the justices heard the oral arguments, and now two parties await a decision .
There is originality in photographic works where the works embody the selection of subjects, lighting, color, and the conceptual and aesthetic expression of the overall photography; therefore, photographers enjoy copyright in their works (see Taiwan Tainan District Court Civil Judgement 94 Zhi-Tzu 20). Two parties have no dispute over the fact that photographer Lynn Goldsmith took a photograph of acclaimed pop artist Prince and owns the ownership of the photo; the court’s standing issue is whether Andy Warhol’s adaptation is transformative. As per the provision of Article 3 of Taiwan’s Copyright Act, the definition of adaptation is the creation of another work based upon a preexisting work by translation, musical arrangement, revision, filming, or other means. If one takes a copyrighted photograph without permission and creates a new image by adding sharpened facial contours and color changes, to the extent that such new image constitutes an “adaptation,” would this be considered copyright infringement of the original photograph? Let’s take a look at the consideration in the 97-Tai-Shang-Tzu-No. 6499 decision rendered by the Taiwanese Supreme Court: “To determine whether a work is plagiarism, when the work contains the artistic or aesthetic value, such as graphics, photographs, art, audio-visual works, it may be too difficult or unfair to use the same analytical and deconstructive methods as those used for textual works to compare the details. Therefore, we will pay more attention to the quality in terms of concept and perception as a whole in the original and secondary works.” On this basis, an examination of Goldsmith’s original photograph and Warhol’s “Prince Series” is likely to lead to the conclusion that the concept and perception are substantially similar.
Referring to general principles practiced by Taiwanese courts may help answer the question of whether Andy Warhol’s “Prince Series” is sufficiently transformative: “Works that adapt an original work may take the form of presenting works of homogeneous content in a way that varies the original content, or incorporating new elements into the original content. If a work of authorship that contains references to the works of others can be objectively distinguished from the original work and has originality, and if it is not identical or substantially similar to the original work, then such a work is simply an independent work and not an adaptation.” (See Taiwan Intellectual Property Court Civil Judgement 109 Min-Zhu-Tzu 101; Taiwan Supreme Court Judgement Tai-Shang-Tus 1635).
A classic case in the US is the dispute over Annie Leibovitz’s pregnant photo of Demi Moore, who filed a lawsuit claiming that Paramount Pictures’ “Naked Gun” movie poster infringed her copyright in the Moore photo. In this case, we can see how “transformative use” is articulated by the U.S. district and appellate courts: “Defendant Paramount’s advertisement featuring a pregnant Moore qualifies as a parody entitled to the fair use defense because the advertisement adds something new and qualifies as a “transformative” work. Because the actor’s smirking face contrasts so strikingly with the serious expression on Moore’s face, the ad can reasonably be perceived as mocking the seriousness, even the pretentiousness, of the original photographic work through a smirking, silly-looking pregnant man, which achieves the effect of ridicule that serves as sufficient ‘comment’”. See Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998). Comparing the two decisions regarding Andy Warhol’s “Prince Series,” this author believes that the appellate court’s reasoning is more convincing, and therefore Warhol’s work should be considered non-transformative and liable for copyright infringement. .
While designs, whether based on natural scenes or man-made works, result from the unique creativity and inspiration of their creators, they must be original in order to be copyrightable. When creators adopt public domain materials for their artistic designs, and their designs incorporate similar conceptual ideas as others, but present them in different appearances and forms, their designs are legitimate use if they do not involve plagiarism or infringement. When borrowing from another’s original work for adaptation or secondary creation, creators must be careful to ensure the transformative use of their creation to avoid allegations of infringement. For the creator (licensor) and the user (licensee), it is essential to specify the licensed subject matter, region, cost, term, and medium before licensing a design or creation so the parties can smoothly use the artistic works and make them available to the public with full enjoyment.
 Su Fu-Nan, Red Dot Design: Best of the Best! Awarded to Shu-Te University Students, with the Theme of Tainan’s Qinkunshen Fan-shaped Salt Fields, Liberty Times, 31 August 2022.
 Yu Chong-Hui, Clouded Leopards and Cherry Blossom on the Uniform for 2022 Taiwan’s National Day, Liberty Times, 4 October 2022.
 Email by Taiwan Intellectual Property Office, No. 1110711b, 2022.
 Standard Chartered Arts in the Park Mardi Gras, 5 November 2015. For further plagiarism analysis, please see “IP in Design and Creation – Work Made For Hire & Commissioner,” Class Note No.3, Lan & Law, 15 October 2022.
 Roger Cohen, NY Times, Wrapped Arc de Triomphe Is Christo’s Fleeting Gift to Paris, 11 November 2021.