Leader: It is reported that in recent years more than 80% of Chinese students who further their studies abroad are familiar with the name, “New Oriental School,” where most of them received language and exam-oriented trainings that led them to realize their dream of studying abroad. Founded in November of 1993, the “New Oriental School” is a private education organization which offers short-term foreign language training, specifically training for the equivalency tests required for going abroad. Presently, these schools receive 80% of the Beijing’s market share for language training, 50% of the entire country’s market share, and grosses up to 450 million RMB each year.

However, not long ago this famous private school suffered great damage because of its misappropriation of a copyright on its test papers and teaching materials from the overseas test institutes, US Education Test Service (ETS) and US Graduates Matriculation Administration Committee (GMAC). Both charged the New Oriental School for violation of their copyrights and trademarks. After a two-year trial, the case finally came to a first-instance adjudication. The court ruled that the indictment against New Oriental School for violation of the copyright and trademark enjoyed by ETS was indeed factual. Still in disagreement though, New Oriental School has appealed to the higher court of Beijing, attracting much attention of people in all fields of law.

Although the adjudication of the second-instance is still yet to be determined, views and heated debates about the case have been going on among intellectuals both at home and abroad, with some people even thinking the initial ruling is wrong. Because of the ongoing dialogue surrounding this case, we gladly invited one of our country’s young experts of intellectual property rights, Dr. Hou Yangkun, to shed some light onto this case and to offer both domestic and overseas readers with a references for similar problems and cases that may arise in the future.

On September 27th, 2003, Beijing’s First Intermediate People’s Court announced its first-instance adjudication, which confirmed that during its process of teaching and management, Beijing New Oriental School had infringed on US ETS and GMAT’s copyright and trademark. Thus, the court ordered Beijing New Oriental School’s immediate stoppage of the infringement along with a compensation of nearly 10 million RMB. Unsatisfied with the judgment, Beijing New Oriental School appealed to the higher court of Beijing for a second-instance adjudication.

After the announcement of the first-instance adjudication, domestic experts of intellectual property rights and related persons conducted analysis and shared discussion about their thoughts of the first-instance adjudication, which ended up producing different views and opinions. Many people have thought through and come up with different views concerning the problems of intellectual property and how the law should work in order to resolve these problems. I also have done some thinking and come up with some opinions about the major problems of law during the first instance, and I even think some of its views are totally wrong. In the following part I would like to first set forth some relative problems for your reference.

The Initial Understanding of Intellectual Property Rights
Presently, our country is still lacking in experience in the area of intellectual property right theory. Moreover, many basic but important problems remain unsolved. In our country different people have their own understanding of the concept of intellectual property rights, thus the first objective should be to immediately standardize the concept of intellectual property rights.
What is an intellectual property right? It is a kind of right. A right granted to information that is the product of the human brain and it is available to human society.

Information can only be expressed by a certain carrier, so we cannot simply take acarrier for information itself, and even more take it for intellectual property.
According to traditional concepts, intellectual property rights encompass copyrights, patent rights and trademark rights; today with the development of science and technology, the contents of intellectual property rights are expanding and will continue to grow in their content in the future. The case being analyzed only involves copyrights and trademarks.
      
Several Opinions About the Case
The procedure of the court in accessing New Oriental School’s infringement during the first instance:
1. According to the Berne Convention if the test papers enjoy copyright in the US, they should also have copyright in China;
2. The tests enjoy copyright for they possess originality that is in compliance with the standards of work for our country;
3. Ways of bearing responsibility: stop infringement and pay compensation.
Beijing New Oriental School’s plea: it should be deemed free of any legal wrongdoing for it claimed that the use of the test papers was appropriate.
The author thinks: the first-instance adjudication was erroneous, thus there is no infringement and there should be no compensation.
Exploring the Legal Problems of the Case
(Ⅰ) Understanding the Aim of the Intellectual Property Rights System
The system of intellectual property rights is fundamentally aimed at accelerating the promotion and development of science and culture of human society.
In the field of Intellectual Property rights, ensuring the action through the use of the system of Intellectual Property Rights is the only means available to realize the aim of the system. 
(Ⅱ) The Rights of Intellectual Property Rights
The rights of the Intellectual Property Rights encompass subject, content, and confirmation, either of which is indispensable for the naissance of rights.

Firstly, the subject of the Intellectual Property Rights is the person whoever gives independent thought to the formation of the rights. Those who are unable to think independently or who don’t think independently even though they are able to do so, are only considered to be the subject of rights on the basis of Civil Law and those people often become the subject of rights through succession or contract.
Secondly, content consists of information, a product of the human brain’s work. Any information that cannot promote the development of the science and culture as well as the development of our human society cannot be claimed as the information of intellectual property rights even if it can pose great influence.

Information must be plenary, which include two aspects: one is the confirmation of the information and the meaning should be clear with no vagueness and secondly, the information should be well understood by a third person.

Not all information enjoys rights while not all the information can be called work.
Thirdly, all rights are valid through confirmation, which has two levels: one is the social level of human society. This level is a basic level that leads to social confirmation and reflects the self-requirement and standard of human society without the influences of nationality, party, and country.

In the area of intellectual property rights, moral rights form only when social confirmation comes after the confirmation of the subject and its content. Should this occur, this kind of right will then be widely accepted and respected by the society. Upon this basis, if it can receive confirmation by law, the rights are then viewed as a legal right acknowledged and protected by the legislature. If it can’t be confirmed by the society but is in accordance with the law, then it exposes the problem in that the law itself is not accurately representing the will of the people.
In a word, the formation of a right must benefit human society. Otherwise this right is in fact non-existent even at the moment it is recognized by relative law. A law should comply with the law of social development and represent the fundamental interests of the people.

(Ⅲ) The Unified Logic
       The logic is the essential part of science.

Intellectual property is a science. All sciences can be applied to a social practice, which has its own internal law as well as its own logic. Thus, the internal system of intellectual property has its logic. If some conclusions of intellectual property are logically unreasonable then they must be false.

 (Ⅳ) Intellectual Property Rights and a Monopoly

Intellectual Property Rights do not support the idea of a monopoly, but in fact are against a monopoly forming.

The purpose of Intellectual Property Rights is to accelerate the advancement and the development of science and culture. Thus, should there be a potential monopoly or other interruption in the way of this development of science and technology, measures should be taken to eliminate them. For example, anti-monopoly measures include all kinds of coercive permission methods, justifiable use, and other measures written in law.

 (Ⅴ) US Copyright and Chinese Copyright

Although international conventions are in existence, the providing of copyright protection still often remains a sovereign issue.

    According to both American and Chinese Copyright Law, if a US work enjoys a copyright then it is justifiable that China provides should provide it with copyright protection; but what if a US work enjoys copyright protection in the US but enjoys no copyright or copyright protection according to the Chinese law, can China offer direct copyright protection to the work? If it offers, it will surpass the principle of national treatment laid out in the TRIPs Treaty.

Furthermore, some works that enjoy copyright protection in the US can’t enjoy protection copyright in China because they do no good for our country.

After all, the copyrights of US and China are not necessarily consistent with each other.

(Ⅵ) The US Work and Chinese Work

Each country has its own criterion toward works. A work in the US may not be considered a work in China and vice versa. According to the international conventions, a work can only enjoy a copyright on the condition that it has met all the standards of being a work, which deprives those considered “unqualified” to be a work copyright protection. Even some works that meet the criterion can’t enjoy copyright protection because not all works can be granted copyrights.
 (Ⅶ) Differences Between International Convention and National Law
The TRIPs Treaty is the agreement article of the WTO based on the Berne Convention, the Paris Convention, the Rome Convention, and the Integrated Circuits Convention, making it an extremely comprehensive and well-regarded treaty. The treaty provides a set of standards to follow and is designed to help solve the common conflicts that arise when intellectual property rights are shared by multiple countries. However, to solve domestic conflicts of intellectual property rights a country should apply national law rather than international law.

About this case, even when referring to the TRIPs Convention and the Berne Convention, there is no statement that exactly says if a work enjoys a copyright in the US then it should enjoy a copyright in China. The international convention should be observed without any damaging the sovereignty of a state and it should be observed through the implementation of national law. It was a mistake by the court to solely refer to the international conventions when adjudicating the case.

 (Ⅷ) Copyrights and Works

According to the law in force in China today, productions enjoying copyright protection are works and computer software. With works, our country’s system classifies them into 13 kinds. In our country, some works enjoy copyright protection while some don’t and the copyrights of some works (folk art literature) are still suspending.

It is obviously wrong to say that because a work possesses the qualifications of a Chinese work it automatically enjoys Chinese copyright protection.

Copyrights and works are not definitely tied to each other, which means something classified as a work does not always ensure it will be protected by a copyright; on the contrary, one work can enjoy many rights.

 (Ⅸ) The Components of a Work

According to our country’s statements and that of the Berne Convention about works, a work should consist of legitimate information before it can be officially recognized. That conveys and expresses the information directly is the prerequisite of the form. The capability of it being copied is not an essential element of the form. The information here stated should be complete, i.e. the implication of the purpose should be explicit and it should be understandable to a normal third party. A work cannot be considered fully legit unless both forms of representation and information are present. Without the proper form of representation, the existence of information cannot be validated, that is to say intellectual property rights’ law doesn’t protect simple thoughts. If the information isn’t qualified, there may only be fragments or half products of information instead of a presentable work with defined meaning. In instances like this, a third party will have no idea what the information implies, thus the information itself cannot gain any form of intellectual property protection and can’t gain any recognition from society.

 (Ⅹ) The Function of Originality in Works

Originality, or independent thinking, is not the main component of a work but it can ensure the main body of a work. A plagiarized work can also be called work. As the plagiarist didn’t have any independent thinking, he is not the rightful owner of the work and infringes upon other’s rights. Independent thinking is an accurate way of defining originality. Hence, the thinking that “a work should enjoy copyright protection for it is of originality or that a work is deprived of copyright protection for its lack of originality” is totally wrong. During the first instance of this case, the adjudication was made according to false thinking.

Originality doesn’t necessarily lead to works. On the contrary, lacking originality doesn’t deny the classification of a work or whether or not the work will enjoy a copyright. Originality assists us in tracing the creator of the work.

(Ⅺ) Is a Test Paper a Work or Not?

Firstly, a test has a certain way of presenting letters, sounds, or pictures and so on, through which all sorts of information can be conveyed. This is a qualified way of presentation. Secondly, let’s look into what information a test conveys. In fact, it has two parts to its information: one is the information that each question offers, and the other is the response that the given information intends to elicit. This is the incomplete part of the information that should be arrived at by the test-taker. The test paper designers haven’t and cannot give out the complete information of each question otherwise it cannot be called a test. So, this kind of information is the information fragment. The test takers come up with missing information that was learned from his lessons or teachers or even reference books rather than the test designer. In this way, when a student provides the right answer for a question, he makes the connection between the half information from the test designer and the other half from test taker; However, if the two halves of information do not match, the information of the test is still incomplete and remains a half piece of information or fragmented information. This kind of incomplete information is not a work. Thus, the section of information that the test delivers is not a work.

Another part of a test is its style in which it delivers its information. Every test paper conveys through its style the manner and method in which it should be taken, which indicates complete information. 

In summary, the information that the test paper reflects is just the style of an exam. Though the style may have an appropriate form of expression, which is in accordance with the conditions of being a work, it cannot enjoy the protection of copyright like other kinds of formulae and quiz games can. Otherwise it will go against the principle of intellectual property, and hinder the development of science and culture. This is what is stipulated in explicit terms in the international conventions.

As a result, according to copyright law, test questions are not works and should receive no protection from the copyright law.

(Ⅻ) The Intention of the Trademark System

The intention of the trademark system is to ensure the systematical production and trade of commodities and to promote the economic development of the whole society while bringing profits to the rightful owner. It ensures the normal rights of the rightful owner while preventing improper monopolies and competition from occurring.

(Ⅻ-Ⅰ) Is the Title of a Test a Trademark?

To attempt to register the title of a test as a trademark is clearly a form of an illegal monopoly, and thus in violation of the trademark system. All countries’ trademark bureaus should put a stop to these types of actions and judiciary bodies should remedy the registration problems by enforcing the law. It is wrong for our country’s industry and commerce administration to protect these kinds of trademark registrations.

According to the aforementioned analysis, we come to the conclusion:

1. The test questions appearing in this case do not fall under the category of our country’s work. Thus, they can’t be called a work and should not enjoy any copyright protection.

2. It is wrong for people to reference international law when adjudicating this case.

3. The action of registering the title of a test runs the risk of creating a monopoly and is against the aim of the trademark system, thus should be considered as an abuse of Intellectual Property Rights.

4. There were mistakes in calculating the compensation in the first instance.

Therefore, we’ve reached the conclusion that the adjudication of the first instance is questionable.