Design Patent Infringement Case Using Weibo.com Images as Evidence

Civil Case

Design patent   

–Images on Social Media Used as Evidence

[Headnotes]

In the design patent infringement dispute, the defendant submitted images of similar products that had been posted by an outsider on weibo.com platform as prior designs. If it is found that these images have been in the public domain prior to the filing date of the patent concerned, have been visible to all users, and have never been edited after posting, then they can be used as a comparison document of existing designs.

[Synopsis]

First instance: (2016) Yue 73 MinChu No. 1561

Second instance: (2018) YueMinZhong No. 849

Appellant (defendant in original trial): Zhang Yefen

Appellee (plaintiff in original trial): Shi Zhongbo

Shi Zhongbo was the owner of the design patent (Patent) named "A two-prong clamp (A01)" numbered ZL201230372122.5. In 2015, he discovered that Zhang Yefen sold and offered to sell, at her store at taobao.com, a two-prong clamp product, which might have infringed upon his patent right. Therefore, he brought an action with the Guangzhou IP Court, requesting an order that Zhang Yefen should cease and desist from the infringement, destroy the inventory of the infringing products, and compensate Shi Zhongbo 50,000 Yuan for the loss.

The first instance court held that the alleged infringing product was similar to the Patent. It ordered Zhang Yefen to cease and desist from the infringement and pay Shi Zhongbo 30,000 Yuan as damages for the loss and other reasonable expenses.

Disagreeing with the judgment, Zhang Yefen appealed to the High People's Court of Guangdong Province. Regarding the existing design plea raised by Zhang Yefen, to verify the evidence submitted, which was the images of two-prong clamps that were posted by a user named "Zhongshan Xiuke Ads Products" on weibo.com platform on October 29, 2011, the second instance court sent a letter to the operator of weibo.com–Beijing SINA Internet Information Service Co., Ltd. (Sina) to investigate whether the post (including texts, images and posting dates) published by a weibo.com user could be edited or modified and whether such post was visible to all users. Sina gave a Letter of Response to the second instance court stating: 1. The real date and time of the post by user "Zhongshan Xiuke Ads Products" was 10:30, October 29, 2011. The images had not been edited after posting; 2. The editing function was not available to users until March 2018 and it only allowed users to edit posts that were published after March 2018; and 3. Users could choose to make their posts "visible to all users", "visible to some users" or "visible to me only". Users could alter the status of the posts, yet they could only narrow the scope of publicity and it was irreversible. The images posted by Zhongshan Xiuke Ads Products on October 29, 2011 had been visible to all users and never been edited. The second instance court therefore held that the images on weibo.com submitted by Zhang Yefen proved that the existing design had been used by the alleged infringing product. It decided that judgment made by the first instance court should be reversed and the claims of Shi Zhongbo should be dismissed.

[Typical Significance]

In infringement cases of design patent, the infringer often resorts to the existing designs to plea for non-infringement. With the widespread use of the Internet, electronic evidence becomes more frequently employed in litigation. There have been cases where the alleged infringers produce evidence of images posted on weibo.com to prove their existing designs. When such online evidence is found to be authentic, then the contents and date/time marked on the images may be deemed to be true and credible. Moreover, if the images are open for viewing to the public, then the date/time mark should be deemed as the date/time that it becomes known to the public.

The case proved whether the date/time marked on the images posted on weibo.com can be the evidence of the time when the images become accessible to and can be freely browsed by the public.

(Translated by Ren Qingtao)