Although China, a member of the Berne Convention, is obliged in theory to automatically protect the copyrightable work from a contracting country once the work is created and China shall not require the copyright owner to register the work as a necessary step for protection or enforcement, the matter is not so simple in reality.

From a practitioner's perspective, I consider it very important and beneficial to register a copyrightable work in China, especially for a foreign party. I would explain the reasons as follows.

  1. The registration certificate is regarded as prima facie evidence in proof of the copyright and can thus reduce the burden of proof for right owner. In China, it is necessary to prove the copyrightability, the creation date, and the authorship of the work before enforcement. However, if there is a copyright registration certificate, the aforesaid details will be available and they will be regarded as prima facie Then the burden will be significantly reduced for the right owner, or the challenging burden might even be shifted to the infringer to prove that the work is not copyrightable or the creation date and owner indicated in the copyright certificate is not true.
  2. The registration certificate is almost a necessity for administrative enforcement. According to Article 24 of Regulation for the Protection of Computer Software (1991)1, the registration of software copyright with the software registration administrative organization is the prerequisite for the administrative settlement or litigation of software rights disputes in accordance with these rules. Though this Regulation is abolished now and there is no longer similar article in the current regulation providing that copyright registration is a precondition to get administrative protection from such administrative authorities as local Administration Market Regulation (AMR) or get judicial protection from courts based on copyright, it remains very difficult to successfully get protection from the administrative authorities without a Chinese certificate. An important reason is that the officials from administrative authorities like the local AMR are not as experienced as judges in handling copyright cases. Without a certificate, it is too challenging for the officials to determine the important matters like copyrightability, creation date and authorship of a work. Therefore, if an administrative complaint is filed based on copyright but without a Chinese registration certificate, it is very likely that the administrative authority will not accept the complaint but suggest filing a lawsuit.
  3. The registration certificate is almost a necessity for enforcement in online EC platforms. It is more and more common and necessary to enforce copyright in EC platforms like Alibaba or Taobao. For similar reasons as mentioned in the preceding paragraph, a complaint filed with the EC platforms based on a copyright but without a Chinese registration certificate is also very likely to be rejected.
  4. The registration certificate is almost a necessity to seek protection in the Chinese customs. According to Article 7 of Measures for Implementing the IP Protection Rules for the Customs, when an applicant records its copyright in the IP Protection System of General Administration of Customs of China (GACC), the applicant should submit a copy of the certificate of voluntary registration of copyright issued by the copyright registration department. Without a certificate, though theoretically it seems possible to solve this problem by filing some alternative evidence to prove the copyright, as stated in the Article 72, it is very difficult to convince GACC to accept the alternative evidence.
  5. The registration certificate can facilitate procedures for lawsuit. For filing a lawsuit based on copyright, it is not necessary to have a copyright registration certificate, but it is usually far more time and resource consuming to convince the courts to accept the case if without the registration certificate. Even if the lawsuit is successfully filed, without a copyright registration certificate, the burden is usually far heavier during the court hearing procedure to prove the copyrightability, the creation date, the authorship of the work, etc.
  6. The registration certificate can help avoid notarization and legalization procedure. Without a copyright registration certificate, in a copyright dispute, a party needs to prove the copyrightability, creation date and authorship, etc. by other documents and evidence. If the documents and evidence come from outside China, notarization and legalization plus authorized translation into Chinese are usually required. If more than one dispute cases arise, the party needs to repeatedly file such notarized, legalized and translated documents and evidence, which is very time and resource consuming. Instead, a copyright registration certificate can be repeatedly used to save the resources and simplify the procedures.

In addition to the above advantages that the right owner can enjoy protection more easily by registering the copyright, there are also benefits from defensive perspective, as elaborated below.

  1. In trademark cases, copyright registration can be a strong weapon to curb piracy without limitation of classification.

    China is member of the Nice Agreement and uses Nice classification for trademark registration. According to Nice classification, there are 45 classes of different goods and services. Usually, trademark registration should be obtained separately class by class. The more classes you cover, the more cost and time you need to spend. Because of this reason, normally trademark registrants only register their trademarks in the classes where they are more interested, which leaves loopholes for trademark piracy.

    For example, if a party registers a trademark registration in class 25 only but not in the remaining 44 classes, it will be difficult to win a trademark opposition or invalidation when and if the trademark is pirated by another party in a different class. That is to say, trademark protection is normally limited by the Nice classification. However, copyright protection is NOT limited by the classes, but can enjoy cross-class protection. So long as a trademark is identical with or confusingly similar to a prior copyrightable work, the trademark shall be considered as infringing the prior copyright if there is no authorization.

  2. It can be a good defense tool when a work is pirated by a bad faith party and the bad faith party tries to enforce the "pirated right" against the real owner.

    A copyrightable work might be registered by a bad faith party as a trademark, a design, or even a copyright. What is worse, the bad faith party might even enforce such "pirated right" against the real right owner, putting the real owner into an embarrassing situation, especially in the EC platform complaint cases. Most of EC platforms' IP protection and complaint-response mechanism aims to solve problem quickly in a way more friendly to the "right owner" (i.e., the party who files the complaint based on an IP right). If the real owner or the so-called "infringer" cannot provide simple and clear evidence in its response to the complaint to prove that it, but not the party who files the complaint, is the real right owner, the response is very likely to be regarded as untenable and the real owner's products might be taken down immediately. However, if the real owner has a copyright registration certificate in hand, even if the registration date of the certificate is later than the IP right pirated by the bad faith party, it is likely that the EC platforms will reject the complaint and recommend the parties concerned to solve the dispute through amicable settlement or lawsuit.

Moreover, we suggest that the right owner register the copyright at an earlier date. Otherwise, if the copyright is not registered until when it is needed for a case, the opposite party, the authorities concerned and the court might challenge the copyright by pointing out that the copyright is registered simply to contest the adversary's rights, especially considering that there is no substantial examination for such registration. As a result, strict examination criteria will apply. Accordingly, even with a copyright registration certificate, the right owner might still be required to prove copyrightability, the creation date and the authorship of the work, etc. by filing lots of other documents and evidence, which can consume more resources and time than earlier copyright registration.

If a copyright is registered earlier by a bad faith party, it will be very difficult to cancel it. In a typical case, a party pirated another party's copyright by registering it in the China Protection Center for Copyright (CPCC), in its own name. When the real owner wanted to cancel the copyright registration in the CPCC, it found that there is not a comparatively simple procedure to do that, like filing an invalidation to cancel a registered trademark or registered patent. Instead, the only solution is to file a lawsuit, and then, if successful, file the favorable court ruling with the CPCC. This can make the whole process of cancellation very lengthy and complicated.

Furthermore, even if a copyright is registered in another country, like in US where there is a well-established copyright registration system, it is still highly advisable to register the copyright again in China. The reason is that evidence from outside of China should be notarized, legalized and translated into Chinese before it can be used in legal proceedings in China. However, if the registered US copyright is registered again in China, a Chinese certificate will be issued. Such certificate can be directly used and well accepted by all the Chinese authorities, without any notarization, legalization and translation.

From the above we can clearly see the importance and advantages of copyright registration in China, in spite of the theoretical automatic protection under the Berne Convention. We can also see that it is even more important for a foreign party to register the copyright in China, and register it earlier, in order to enjoy protection more effectively and cost-efficiently in China.

Footnotes

1. This 1991 version is abolished now. The current version was published in 2001 and was revised in 2011 and 2013 respectively.

2. Article 7 ......Where the applicant has not conducted voluntary registration of copyright, the applicant shall submit samples of the work that can prove that the applicant is the copyright owner and other evidence concerning copyright.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.