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The Copyright Act originates from the protection for literary and artistic works.Traditionally, its protection does not extend to cover technical or utilitarian elements, since they often fall under the category of the Patent Act (Note: in Taiwan, industrial designs are regulated under the Patent Act).  However, the fine line between the Copyright Act and the Patent Act has become blurred as technology advances lead to diversity of creative expressions and fusion of aesthetic and utilitarian elements.  Over the decades, there have been debates on whether “circuit diagram” is a copyrighted subject matter and whether the conversion of a two-dimensional circuit diagram into a three-dimensional electric circuit board layout is a “reproduction” or “adaptation” regulated by the Copyright Act, or merely renders an “embodiment” and falls in the field of design patent.  The Supreme Court recently upheld the trial courts’ judgments, in an effort to set up a guide to distinguish protectable graphic works and unprotectable utilitarian elements (2022 No. 214 Criminal Judgment).

2.   X, who was operating a rental business for “Fruit King Mary” video game machines, discovered that Y, without his consent, had taken the “Monster King (Mary)” game circuit board from X’s aforementioned game machine and commissioned a factory to print said circuit board and fabricate Y’s “Fruit Party” electronic game console for sale to the public. X filed a criminal complaint against Y, claiming that the latter had infringed his copyright in the “circuit diagram” of the electronic game console.  Is X’s claim justified?

(1)  The Copyrightability of “Circuit Board Layout”

According to our legal practice, copyrightable subject matter could extend to original expression that is fixed in any type of medium, so that “originality” is the essence of copyrightability.  Further, copyright protects the “expression” of an idea, not the idea itself.  In the above case, the Supreme Court agrees with the trial courts’ Judgments that (1) selecting components and the size of the circuit board that makes a machine useful is a functional activity, which is only an unprotected “idea;” and (2) the further connection of the electronic components in accordance with their interconnecting relationships by means of wires on the front and back of the electric circuit board to produce the “circuit board layout” involves circuit planning and the allocation as well as connection of various components; different creators even using the same electronic components may create different combinations of electronic components and circuit planning designs.  As such, the trial court agrees that a “circuit board layout” which meets originality requirement would qualify as copyrightable “expression” and in nature is a “technical or mechanical drawings,” characterized as a “graphic work” defined in Article 5(1)VI of the Copyright Act.

In the current case, X’s “Monster King (Mary)” game circuit board layout differs from others in terms of the direction, angle, and the choice of laminates used in the windings, which show the designer's personal creative will and emotional expression. The trial court held that it belongs to a “graphic work” that protected by the Copyright Act.

It should be noted that the “printed circuit diagram” generally referred to in the industry is divided into “circuit diagram,” “circuit board layout” and “integrated circuit layout,” and the three are not the same.  According to the IPC Court’s previous Judgment (2021 Xing-Zhi-Shang-Geng (4)-Zi No. 6 Criminal Judgment), a “circuit diagram” generally refers to a drawing of the interconnections between electronic components depicted by circuit drawing software, and is only a schematic drawing; a “circuit board layout” is a two-dimensional (single layer) or three-dimensional (more than two layers) layout of the actual electronic component locations and wire routings derived from the aforementioned circuit diagram.  The “integrated circuit layout” is a two-dimensional or three-dimensional design in which electronic components such as transistors and capacitors and their interconnecting wires integrated onto or within a semiconducting material.  The “integrated circuit layout” is a part of what is commonly referred to as the “IC design,” which primarily focuses on the function of electronic products.  Therefore, the competent authorities and courts have always explained that the above mentioned copyrightable “technical or mechanical drawings” may only include “circuit diagram” or “circuit board layout” that applies to the general electronic machinery, and does not include “integrated circuit layout,” which shall be protected in accordance with the Integrated Circuit Layout Protection Act.

(2)  Does the Production of a “Circuit Board Layout” in accordance with a “Circuit Diagram” Infringe Copyright or Is It Merely an Act of “Embodiment”?

        In the early days, the competent authorities explained: “To transform a two-dimensional graphic work into a three-dimensional article in accordance with the former’s dimensions, specifications or equipment structure diagrams is just an activity that exploits the graphic work or produces an embodiment of the work, which does not represent the copyrighted graphic work and is hence unprotectable by the Copyright Act” (IPO Office, No. 0920003350-0 Letter, 3(2)).  However, the above explanation lacks clarity, giving rise to different interpretations over the years.

In recent years, the Supreme Court tends to hold that whether or not the conversion of a graphic work (such as technical or engineering diagram) or an artistic work into a three-dimensional form is a “reproduction” or “adaptation” within the category of the Copyright Act shall be reviewed on a case-by-case basis.  Directly dismissing a suit by deeming the work to be an unprotectable design (patent) subject matter, absent any analysis of legal elements in accordance with the Copyright Act, would be regarded as erring in not applying the applicable law.  Applying this test, the Supreme Court had vacated several trial courts’ Judgments and remanded these cases for further proceedings (cf. 1996 No. 5120 and 2003 No. 515 Criminal Judgments of the Supreme Court).

The court of the second instance in the forgoing case tried to identify the boundary between protectable design and unprotectable useful articles when transforming a two-dimensional graphic work into a three-dimensional article.  The court rendered that a comparison should be made between a two-dimensional graphic work and a transformed three-dimensional article under the following test and factors:

(1) if the three-dimensional object is a mere representation of the two dimensional work, then it should be deemed to be a “reproduction” of copyrighted work;

(2) if the three-dimensional object shows creative portion(s) in addition to the content of the original graphic work, then it may qualify as a protectable derivative works.

(3) if the three-dimensional object only depicts the ideas or concepts expressed in the graphic work, and its outer appearance or shape cannot be recognized as identical with the latter by the general public, then it is merely an “embodiment” of the diagram but not a copyrighted “reproduction” activities (also referred in 1994 No. 237, 1995 No. 780 and 2006 No. 3753 Criminal Judgments of the Supreme Court).

(4) The production process of a circuit board layout includes print of the copyrighted circuit diagram on a circuit board; therefore, to convert a two-dimensional “circuit diagram” into a three-dimensional “circuit board layout” is a copyright related “reproduction” activity.

In the current case, the defendant Y admitted that the seized “Fruit Party” electronic game console was made from “printing” X’s game circuit board. Therefore, its parts configuration, circuit layout and the overall appearance of the back of the board were almost the same as X’s game circuit board, except for the slight difference in the coding sequence and labeling of some parts.  As such, the court rendered that Y’s “Fruit Party” electronic game console is substantially similar to X’s copyrighted circuit diagram and thus Y had infringed X’s graphic copyrights by unlawful reproduction activity.

3.  The above case is easy to be recognized as a “reproduction” of the copyrighted work because of the high degree of resemblance to the copyright holder's graphic work.  However, there are still divergent views on when a two-dimensional “graphic work” is transformed into a three-dimensional object, especially when the shapes of both are not clearly and easily recognized as the same by the general public.  Drawing a line between utilitarian elements of industrial design and protectable graphic work remains to be one of the most troublesome puzzles in the copyright law, and more cases are needed to accumulate consensus.

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