Giving the Middle Finger to the Middle Kingdom, and Others: A Tale of “Public Morality, Design, and Just Possibly Copyright

Used with permission of Lao Ganbu

This is a story with many facets. It is about the intersection of copyright and design, but is also an amusing story involving a design application submitted to the Hong Kong Intellectual Property Office by an iconoclastic entrepreneur who sought to register the design shown above, an image that resembles the “good fortune” cat statuettes found in corner stores, offices and restaurants throughout East Asia but with a notable exception, the raised middle digit of the feline’s right paw. It is also about the relationship between Hong Kong and China, the “One Country-Two Systems” principle under which Hong Kong operates as a “Special Autonomous Region” of China, and the extremely cautious “politically correct” positions taken by Hong Kong authorities on any issues possibly related to public order and morality. (One cannot help but speculate on what motivates this).

First, let’s review what we mean by “One Country-Two Systems” (1C2S) and how it is that Hong Kong can make and enforce its own IP laws (as well as laws in other areas) even though it is now a part of China. We have heard a lot lately about the “1C2S” principle because it has come under severe stress and challenge. “One Country-Two Systems” was the special arrangement agreed to between China and Britain, incarnated in the Sino-British Joint Declaration of 1984, a bilateral treaty that helped pave the way for Hong Kong’s return to Chinese administration in 1997. Under “IC2S” Hong Kong retains a substantial degree of autonomy, (except in foreign affairs and defence), including rights and freedoms such as those of the person, of speech, of the press, of assembly, travel, academic research, religious belief, private property and foreign investment, and others (including intellectual property). In addition, Hong Kong is a separate customs territory which operates as a free port. It also maintains its own financial institutions and currency and its own legal system, police force and courts. These freedoms were guaranteed for a period of fifty years after 1997. During the fifty-year period of 1C2S China agreed not to interfere with Hong Kong’s internal affairs. (The question, of course, is what constitutes an “internal affair”).

Of late China has trampled all over Hong Kong’s “1C2S” autonomy with passage by the National People’s Congress of a new national security law for Hong Kong. That law can bypass Hong Kong’s police and courts in cases that China deems to involve its national security and can result in Hong Kong citizens being sent to the Mainland for trial and likely, indefinite incarceration. This exception to 1C2S is supposed to be rarely used and only for severe cases that threaten China’s national security. Well, we’ll see. Since it includes the crimes of sedition, subversion, terrorism and collusion with foreign powers, depending on how those crimes are interpreted and enforced, the new national security law could constrain many of the freedoms supposedly guaranteed to Hong Kong under 1C2S. There is no question that this is an erosion of the autonomy granted to Hong Kong and is a further sign of the gradual assertion of full Chinese control. Apologists for the law claim that it is necessary to curtail unlawful activity that threatens national security.

There is no question that Hong Kong has had its share of what might be considered unlawful activity in the past couple of years, with widespread protest demonstrations, sometimes violent, against actions by the Hong Kong Government to enact a treaty that would allow Hong Kong residents to be extradited to China to face criminal charges there. Demonstrations have also focussed on failure to follow through on measures promised in the Sino-British Declaration to allow for increased voting rights for the position of Hong Kong Chief Executive, and other grievances against creeping extension of Chinese authority in the territory. Whether these protests in support of democratic rights undermine China’s national security is of course another question entirely.

The Hong Kong government has been careful not to rock the boat when it comes to relations with China, and has deployed the Hong Kong police to restrain the demonstrations, often with violence (although to be fair there has been violence on both sides). It is fair to say that Hong Kong officials are “politically correct” to a fault when it comes to how the territory is administered and perceived by Beijing, and Hong Kong’s Chief Executive is seen by many as not standing up for Hong Kong interests against Chinese pressure. This political correctness is well-illustrated in the story that follows.

While “1C2S” is under stress because of the new national security law, it is worth remembering that Hong Kong still retains a degree of legal autonomy and still deals with many issues quite differently from China. One of these areas is copyright and intellectual property (IP) generally, where there is a far higher degree of legal protection for IP and much stronger enforcement than in China.  This helps explain why China is a perennial chart-topper (not a place you want to be) in the annual Special 301 report on IP practices abroad produced by the US Trade Representative’s Office, whereas Hong Kong has seldom made the list, although in the most recent report, it gets (dis)honourable mention for allowing open sale of Illicit Streaming Devices and for insufficient enforcement regarding the use of Hong Kong as a transit hub for traffic in counterfeit goods. However, unlike China, it is not named to the Priority Watch List or the Watch List, the list of IP transgressors identified by USTR annually.

The Hong Kong Intellectual Property Department is responsible for trademarks, patents, designs and copyright within Hong Kong. It is proud of Hong Kong’s reputation as a jurisdiction that respects IP; indeed, this respect for intellectual property is advanced by Hong Kong authorities as one of the territory’s attributes when it comes to attracting foreign investment.

That’s the background. Now to the design registration case at the heart of this blog. The “angry cat” design that the applicant sought to register is based on an age-old Japanese and some say also Chinese icon, the so-called “fortune cat” or in Japanese Maneki Neko. It is a centuries old symbol. What made the angry cat design unique was the modification of the cat’s paw, sporting an upraised middle finger rather than the waving or beckoning gesture that Maneki Neko cats normally have, plus displaying a scowling or contemptuous expression instead of the fortune cat’s usual benign stare. The application for registration was initially rejected on the basis that the design was contrary to public order or morality. The applicant then requested a hearing to review the decision.

What was it about that design that so offended public order that it could not be registered? Well of course it was the “middle finger gesture”. But what exactly does that gesture mean? The applicant, showing no shortage of the creativity that had led him to create the “angry cat” in the first place, claimed that the middle finger gesture does not only convey a message of being rude, contemptuous or disrespectful, but may also convey a message of being humorous, playful or dissatisfied. Moreover, it depends on how a person subjectively thinks about the middle finger gesture. It is commonly used, he claimed, in popular culture and is growing in acceptance. (Some notable examples are Ai Weiwei’s famous middle finger works of art, former Canadian Prime Minister Pierre Trudeau’s so-called “Trudeau salute”, and a host of other notables “flipping the bird” ). The reviewing officer was not buying it. Citing a UK precedent in which the question posed was whether the design was likely to cause “outrage” or be “subject of justifiable censure amongst a relevant section of the public as being likely to undermine current religious, family or social values”, he concluded that combined with the contemptuous facial expression, the design would cause greater offence than just distaste. In fact, he concluded, many “right-thinking” people (a quasi-legal term in the UK implying the broad mass of law abiding citizens) associate the middle finger gesture with the English swear word “fuck” and would find it an offensive and insulting gesture. Besides, children might see it! Imagine how public order in Hong Kong would be undermined if an army of middle-finger gesturing angry cats suddenly appeared in shop windows. Not that refusal to register the design meant that it could not be sold in the territory. It just couldn’t be registered as a design. However, it probably still has copyright protection in Hong Kong, so I hope public order and morality can be maintained.

A design can be protected in Hong Kong through both design registration and copyright law. In Hong Kong, there is no requirement for registration of copyright, and in fact you cannot register a copyright. It is automatic upon creation of the work and normally lasts for the lifetime of the creator of the work, plus fifty years. However,  in a case such as our contemptuous cat, where an article is made by an industrial process and marketed based on an artistic work, if the article is registered as a design, copyright is shortened to 25 years from the end of the calendar year in which the article is first marketed, and if the article is not or cannot be registered as a design, copyright is shortened to 15 years.

A design on the other hand can be registered, and is valid for a period of five years, with five year renewals up to a maximum of twenty-five years. A registered design will give the designer the right to prevent others from manufacturing, importing, using, or selling the design. It can protect the shape, configuration, pattern or ornament applied to an article by any industrial process. In this case, as we have seen, the applicant was denied design registration but will still likely enjoy some protection by virtue of his copyright for a period of 15 years.

The overlap between design and copyright is outlined in an article by Hong Kong law firm Angela Wang & Co., using a teapot as an example;

Registered design will protect the shape and configuration of the teapot only (but) according to the Copyright Ordinance of Hong Kong (Cap. 528), artistic work includes the making in 3 dimensions of a 2-dimensional work and the making in 2 dimensions of a 3-dimensional work. Therefore, if someone manufactures the teapot according to the designer’s drawings without his consent, that person will infringe the copyright of the designer as copyright protects both 2 and 3 dimensional works. Both registered design and copyright can protect the design of the teapot. (However),

(a) copyright protects the design against copying whereas a registered design not only protects the design from being copied, but also against an independent creation which is not substantially different from the registered design;

(b) copyright protects artistic work whereas a registered design protects shape, configuration, pattern or ornament applied to an article by any industrial process, being features in the finished article appeal to and are judged by the eye.”

So, there you have it. Indeed in many jurisdictions, there is intersection if not complementarity between registered design registration and copyright, as in the US (see example here), Canada (here) and the UK (here). Even though our Hong Kong applicant was not allowed to register his creation, he still gets a degree of copyright protection in Hong Kong despite the supposedly offensive nature of that naughty cat image, supposedly undermining Hong Kong’s public order and morality.

Will “angry cats” giving the middle finger salute make it to China? It is unlikely. After all, if they undermine public order in small place like Hong Kong, imagine the consequences in country of 1.4 billion! But there is a sequel to this story that illustrates that some elements of the “One Country-Two Systems” arrangement still exists. The creator of the “angry cat” wanted to register his mark (“chop”) under the trade name  of “Lao Ganbu”, which in Chinese roughly translates as “old official”, usually applied to longstanding members of the Chinese Communist Party. The registration was turned down in China with the explanation that only veterans of the Long March were allowed to style themselves as “lao ganbu”. In Hong Kong, however, the mark was approved. One Country-Two Systems lives! But for how much longer?

© Hugh Stephens 2020. All Rights Reserved.

For those of you interested in getting a limited numbered edition of the angry cat, verified as genuine by the “Lao Ganbu” chop, they can be ordered online from the Hong Kong outlet “Goods of Desire” (GOD). (https://god.com.hk/collections/angry-cat).

One thought on “Giving the Middle Finger to the Middle Kingdom, and Others: A Tale of “Public Morality, Design, and Just Possibly Copyright”

  1. Interesting post, Hugh. If the registrant had first gone to the copyright office to register the design as a work of applied art or perhaps fine art (a drawing), he might have fared better. After all DS/362 (the IP enforcement case) made it clear that forbidden content is still protectable under the Berne Convention and TRIPS. This would set up an interesting tension. Moreover, there would likely be no requirement to publish the registration as with patents (I assume HK has a voluntary registration system). Patents may not be granted on morality/public order grounds. He might have been better off seeking a copyright registration first and creating an interesting precedent.

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