4.26 TYPICAL CASE USING ULTRAMAN SERIES TOYS AS PROPS TO SHOOT SHORT VIDEOS CONSTITUTES COPYRIGHT INFRINGEMENT
4.26 TYPICAL CASE: USING ULTRAMAN SERIES TOYS AS PROPS TO SHOOT SHORT VIDEOS CONSTITUTES COPYRIGHT INFRINGEMENT
Q: “I want to use Transformers and Ultraman toys to shoot toy story videos and post them online to become an internet celebrity. Is this feasible?”
Q: “My toy videos are self-written, self-directed, and self-shot. Ultraman is just one of the characters. There shouldn’t be any copyright issues, right?”
Q: “I am using genuine Ultraman toys to shoot my toy videos. Would that still not be allowed?”
A: “Whether they are genuine or counterfeit, it’s best to obtain authorization from the copyright owner. Otherwise, it could potentially constitute an infringement.”
With the advent of the era of self-media, shooting short videos has become a popular trend, and uploading them to the internet is now commonplace. Among these videos, toy videos - where toys are the main characters - form an important genre of short videos, which are deeply loved by children. Not only do these videos integrate various knowledge and moral lessons in an entertaining manner, but they also introduce children to a wide range of fresh and interesting toys. In doing so, they effectively promote the sales of toy products and generate massive traffic for platforms, creating a true win-win situation. Therefore, videos that feature toys as main characters typically have high commercial value.
However, when shooting toy videos, particular attention should be paid to the selection of toys and characters. If you use toys based on virtual images that others own the copyrights to, and then shoot videos with them and upload them to the internet, doing so may constitute an infringement of others’ copyrights, regardless of whether the purchased toys are genuine or counterfeit.
Recently, the Beijing Internet Court made a first-instance judgment in the case where Shanghai New Creative Culture Development Co., Ltd. (hereinafter referred to as “the plaintiff”) sued Youranzizai (Beijing) Film and Television Cultural Communication Co., Ltd. (hereinafter referred to as “the defendant”) for copyright infringement and unfair competition, providing a clear answer to this issue.
Case Summary
The “Ultraman” series is a series of films and television works produced by Japan’s Tsuburaya Productions Co., Ltd. The film and television works and their character images have enjoyed extremely high popularity and recognition in Asia and even worldwide.
The plaintiff in this case is the exclusive licensee of 55 “Ultraman” series films and television works and their character images in mainland China. The plaintiff exclusively enjoys the merchandising rights, reproduction rights, distribution rights, rental rights, exhibition rights, and information network transmission rights related to the above 55 “Ultraman” series films and television works and their character images in mainland China.
Without obtaining authorization from the plaintiff, the defendant created and shot toy videos and pictures featuring the “Ultraman” series character images, and uploaded them to the “Tencent Video” website and the defendant’s self-operated WeChat official account, allowing unspecified members of the public to view or download them at their convenience. The specific actions of the defendant included, among others, shooting a series of videos named “Ultraman Stories”, in which more than 400 videos featuring “Ultraman” series character images, involving a total of 33 different Ultraman figures. The main content of these videos was the defendant using well-known cartoon figures such as Ultraman, Peppa Pig, Minions, and the defendant’s own bear figure as characters, setting certain scenes and writing scripts, adding narration, and making these characters interact, enacting different scenario stories. At the end of each video, there was a two-dimensional code accompanied by the text “Scan to follow our WeChat for free toys!” Scanning the two-dimensional code led to the defendant’s operated WeChat official account, where the bottom menu displayed sections such as “Knowledge Accumulation”, “Past Giveaways”, “English”, and “Science”. At the bottom of each article on the official account, there were links to other network platform mini-programs. Clicking on these links directed users to “Toy Story Time”, where they could listen to storytelling programs produced by the defendant.
According to the plaintiff’s incomplete statistics, the defendant uploaded over 800 videos suspected of infringing the plaintiff’s copyrights to the “Tencent Video” website. Each video was approximately 1 to 5 minutes long, with a total play count exceeding 730 million views. The subscription count for the defendant’s original brand program exceeded 432,000. Therefore, the plaintiff filed a lawsuit asking the court to order the defendant to cease the infringing behavior and compensate the plaintiff for economic losses.
The defendant argued: This case only involves the Ultraman cartoon virtual image and is unrelated to the Ultraman film and television works. The plaintiff should provide evidence that it has obtained authorization from the author of the Ultraman artwork. The defendant purchased genuine “Ultraman” toys and then shot and produced related videos and pictures. Therefore, the use of the toys in the involved works falls under fair use and does not infringe upon the copyrights of the relevant works.
The Ruling Made by the First-Instance Court
The defendant’s actions do not constitute fair use.
1. In this case, the defendant used well-known cartoon characters such as Ultraman, Peppa Pig, Minions, as well as the defendant’s own branded bear character, by setting up scripts, inserting narration, and enacting different scenario stories, and then shot related small videos and uploaded to the internet. Each video ended with a display of a two-dimensional code, which, when scanned, directly entered the defendant’s operated WeChat official account and its series of brand promotions. From the above process, it can be seen that, in the process of using the involved works, the defendant objectively expanded the user traffic for the WeChat official account it operates and the related programs on its operated online platform, which had a significant positive impact on enhancing the reputation of the defendant’s own brand and promoting its own branded products. This kind of use had a certain commercial purpose. Furthermore, both the number of involved works used and the number of videos shot and uploaded by the defendant were substantial. Regardless of the purpose of the defendant’s use or the quantity used, neither meets the requirements for fair use.
2. Although the Ultraman character toys used by the defendant were either purchased or received as gifts, regardless of how they were acquired, the defendant enjoys rights such as possession, use, profit, and deposal of these toys. These rights fall under the category of property rights, which primarily concern tangible objects, including movable and immovable properties. On the other hand, intellectual property rights are civil rights arising from intangible subjects, with their object being intellectual achievements or knowledge products. These are intangible assets or spiritual wealth created by creative intellectual labor. Therefore, although the defendant holds ownership of the Ultraman character toys, this does not automatically extend to the copyright of the Ultraman character artwork associated with the toys.
In summary, given that the defendant used the Ultraman character images, which the plaintiff holds the copyrights to, to promote its own products and both the number of Ultraman images used and the extensive number of videos shot are substantial, this does not constitute fair use.
GoldenGate Lawyers represented the Plaintiff in this case, with Ms. Linda Zhao and Mr. Auguste Xin being the attorneys in charge of this file.
The plaintiff’s attorneys in this case
Ms. Linda Zhao, Attorney at Law
Founding Partner, Goldengate Lawyers
Areas of operation
Trademarks, copyrights, entertainment law, licensing, litigation, etc.
Educational Background:
B.A., China University of Political Science and Law, LL.M., University of California, Berkeley, U.S.A., Visiting Scholar, University of Washington School of Law, U.S.A.
Honors received:
She has been repeatedly recognized as one of the leading IP lawyers in China by Chambers & Partners, an internationally renowned media and ranking organization for the legal profession;
Managed Trademark Division business is ranked as a leader in the Managing IP magazine awards;
Manages a trademark practice that is ranked among the leaders in the Legal 500;
Honored as one of the Top 15 Intellectual Property Lawyers of 2015 by Asian Law Bulletin (ALB);
He has been repeatedly recognized by Asia IP magazine as a leading lawyer in the areas of trademarks and copyrights;
Recognized repeatedly by Law (Leganband) as a leading lawyer in the field of intellectual property;
Her representation was recognized by the China Business Law Journal (CBLJ) as a 2014 Case of the Year;
Represented more than a hundred intellectual property infringement lawsuits throughout the country, certain of which were selected by the Supreme Court and provincial courts as the top ten national or provincial intellectual property lawsuits of the year.
Mr. Auguste Xin, Attorney-at-Law
Areas of operation
Copyrights, Trademark Protection and Registration
Practice Highlights
Auguste has been engaged in legal work on trademark and other intellectual properties since 2001, representing various trademark civil and administrative actions for global clients.
·Trademark civil litigation and other dispute resolutions
Handled administrative enforcement and civil litigation for a US top sportswear brand, and a global top luxurious hotel brand;
·Trademark administrative litigation
Handled various trademark administrative cases, covering disputes related to review of refusal, opposition review, invalidation, cancellation review and rejection of filing, etc.
·Trademark prosecution
Proceeded with various trademark applications, oppositions, invalidations, cancellations & reviews for global clients since 2001.
handled various trademark issues for many well-known domestic pharmaceutical companies.
·Copyright registration
represented many enterprises the copyright registration application
