The Intellectual Property Court rendered the 106-Min-Zhu-Su-10 Civil Decision of August 2, 2018 (hereinafter, the “Decision”), holding that if the amount of damages cannot be substantiated, the court may award the amount of damages by considering circumstances such as the degree of creativity of works, the defendant’s use of works and the impact on the defendant’s creation of its corporate image and the defendant’s awareness in respecting intellectual property rights.
According to the facts underlying this Decision, the Defendant owned the famous Louis Vuitton brand, which is used for leather and handbag products, registered and obtained the trademark at issue in Taiwan, and owned the copyrights to the pictures and videos depicting the goods at issue, store display and arrangements and store appearances. However, the Defendant used the above works and trademark at issue of the Plaintiff on the book at issue, namely The Book on Anti-counterfeiting Appraisal for LV, the promotional posters of boutique auctions (hereinafter, the “Posters at Issue”), the learning materials for the International Luxury Appraiser Level I program (hereinafter, the “Learning Materials at Issue”) and promotional cards for the Ten Ultimate Anti-counterfeiting Tips for LV (hereinafter, the “Promotional Cards at Issue”) and the roller doors of the Taoyuan Monarch Store. Therefore, the Plaintiff brought a suit to seek damages for trademark and copyright infringement.
This Decision first affirmed that the Defendant had infringed the Plaintiff’s trademark and copyright. With respect to the calculation of damages, the damages were separately determined with respect to copyright and trademark as follows:
First, damages liabilities shall be assumed for willful, negligent or unlawful infringement of the copyright or plate right of others under Article 88, Paragraphs 1 and 3 of the Copyright Law. If it is difficult for a victim to substantiate the actual amount of damages, the court may be requested to award damages of NT$10,000 to NT$1,000,000 based on the severity of infringement. The Plaintiff used the pictures at issue to market relevant goods such as purses and shoes and did not engage in the business of licensing photographic works. Therefore, there was no relevant royalty for reference. In addition, the relevant businesses operated by the Defendant set up picture banks and illegally reproduced and used countless photographic and audiovisual works of the Plaintiff. Hence, the Plaintiff’s request that the court award the damages pursuant to the first part of Article 88, Paragraph 3 of the Copyright Law on the ground that it was difficult to substantiate the actual damage amount was not inappropriate. In addition, the damages should be calculated based on each infringed photographic and audiovisual work. Therefore, the court concluded, after weighing the level of creativity of each work, the defendant’s use of the works, the impact of the defendant’s creation of corporate image and the defendant’s awareness of respecting copyright, that the total damages for publishing 33 pictures in the book at issue should be NT$2,260,000, the total damages for the Standard Chinese and Simplified Chinese books at issue should be NT$4,520,000, the damages for the Posters at Issue should be NT$180,000, the Learning Materials at Issue NT$340,000 and NT$20,000 for the use of the door.
In addition, with respect to trademark rights, the first part of Article 71, Paragraph 1, Subparagraph 3 of the Trademark Law provides that a trademark owner seeking damages may calculate the damage by any of the following subparagraphs: (3) an amount up to 1,500 times the unit retail price of the trademark infringing goods as found. The Standard Chinese books at issue infringed four of the Plaintiff’s trademarks. After considering all factors such as the Plaintiff’s long-term dedication of resources to the above trademarks and the marketing scale as well as the distinctiveness of the above trademarks, the number of copies of the book at issue, the impact of the Defendant’s infringing the above trademarks on the potential markets of the Plaintiff, and the business opportunities obtained by the Defendant by using the trademarks, the court concluded that the damages for each trademark should be calculated by 500 times the unit price of each Standard Chinese book at issue, which was NT$2,000 per copy, to arrive at a total of NT$4,000,000. The Promotional Cards at Issue infringed two trademark rights. As previously stated, although they were merely used for the business operated by the Defendant for to conduct activities without a retail unit price. The court held, pursuant to Article 222, Paragraph 2 of Code of Civil Procedure, that since the Plaintiff proved that it had sustained damage but could not substantiate the amount or the substantiation was obviously very difficult, the court should consider all circumstances and award the amounts based on revenues and concluded that the damages for each trademark shall be calculated by the unit price of NT$20 for the Promotional Cards at Issue, multiplied by 500 times, to reach a total of NT$20,000.