The following is the initial draft of the manuscript for Comparative Law Yearbook of International Business Special Issue - Copyright Infringement.
This chapter is concerned with the issue of how copyright infringement is dealt with in Japan. The major source of law is the Copyright Act which was enacted in 1970 as Law Number 48 and became effective on 1 January 1971 (referred to in this chapter as the "Act"). The first modern copyright legislation in Japan was the Copyright Act enacted in 1889 (referred to in this chapter as the "Old Act"). The principles of the Berne Convention for the Protection of Literary and Artistic Works (referred to in this chapter as the "Berne Convention") were incorporated in the Old Act. This enabled Japan to join the Berne Union. The Act superseded the Old Act in its entirety and has been repeatedly amended since promulgation.
The major amendments to the Act since 1970 are as follows:
1984 - to establish a rental right for the purpose of protecting authors, performers and manufacturers of phonograph records from rental businesses, and to exclude the use of automatic reproduction machines from the concept of reproduction for personal use, which is generally permissible under the Act.
1985 - to implement the protection of computer programs under the Act (See Section 5.3: Computer Software infra).
1986 -to protect databases and to give stronger protection under the neighboring rights in respect to cable transmissions to the public.
1988 -to make it an infringement of the Act to possess pirated copies for the purpose of distribution, and to extend the period of neighboring rights protection from twenty to thirty years.
1989 -to implement the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (referred to in this chapter as the "Rome Convention").
1991 -to extend rental rights to foreign performers and record producers protected under the Rome Convention and the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of Their Phonograms (referred to in this chapter as the "Geneva Phonogram Convention"), and to extend the duration of neighboring rights from thirty to fifty years.
1992 -to impose an obligation on the private users of digital sound and audio-visual recording equipment to pay certain compensation, to be distributed among copyright owners, performers and phonogram producers.
1994 -to extend the neighboring rights protection to the members of the World Trade Organization.
The Act consists of the following chapters:
Chapter 1 - General Provisions
Chapter 2 - Rights of Authors
Chapter 3 - Publication Rights
Chapter 4 - Neighboring Rights
Chapter 5 - Compensation for Private Sound/Visual Recording
Chapter 6 - Disposition of Disputes
Chapter 7 - Infringement of Rights
Chapter 8 - Penal Provisions
Chapter 2, Article 2 of the Act defines the terms used in the Act. We set forth below the defined terms in alphabetical order for ease of reference:
(a) "Acting" means the performance of works by means other than musical playing ("musical playing" includes singing; the same shall apply hereinafter);
(b) "Author" means a person who creates a work;
(c) "Broadcasting" means the transmission of radio communication intended for direct reception by the public;
(d) "Broadcasting organizations" means those who engage in the broadcasting business;
(e) "Cable transmission" means the transmission of cable-telecommunication intended for direct reception by the public, excluding the transmission by cable-telecommunication installations one part of which is located on the same premises where the other part is located or, if such premises are occupied by two or more persons, both parts are located within the area therein occupied by one person;
(f) "Cable diffusion" means the cable transmission intended for simultaneous reception by the public, of the transmission having the same contents;
(g) "Cable diffusion organizations" means those who engage in cable diffusion service;
(h) "Cinematographic presentation" means the projection of a cinematographic work on a screen or other material forms, and includes reproduction of sounds fixed in that cinematographic work accompanied with its projection;
(i) "Commercial phonograms" means copies of phonograms made for sales;
(j) "Data bases" means an aggregate of information such as articles, numerical values or diagrams, which is systematically constructed so that such information can be retrieved with the aid of a computer;
(k) "Derivative work" means a work created by translating, arranging musically, transforming, dramatizing, cinematizing or otherwise adapting a pre-existing work;
(l) "Distribution" means the transfer and lending of copies of a work to the public, whether with or without payment, and in the case of a cinematographic work or a work reproduced therein, it includes the transfer or lending of copies of such work for the purpose of making the cinematographic work available to the public;
(m) "Joint work" means a work created jointly by two or more persons, in which the contribution of each person cannot be used separately;
(n) "Makers of cinematographic works" means those who take the initiative in, or the responsibility for, the making of a cinematographic work;
(o) "Performance" means the acting on stage, dancing, musical playing, singing, delivering, declaiming or performing in other ways of a work, and includes similar acts which are not performances of a work which have the nature of public entertainment;
(p) "Performers" means actors, dancers, musicians, singers and other persons who give a performance as well as those who conduct or direct a performance;
(q) "Program" means an expression of combined instructions given to a computer so as to make it function and obtain a certain result;
(r) "Phonograms" means fixations of sounds on phonographic discs, recording tapes and other material forms, excluding those intended for reproduction of sound exclusively with images;
(s) "Producers of phonograms" means those who first fix the sounds contained in phonograms;
(t) "Recitation" means the oral communication of a work by means of reading or otherwise, not falling within the term "performance";
(u) "Reproduction" means the reproduction in a tangible form by means of printing, photograph, polygraphy, sound or visual recording or otherwise; and
(i) in the case of dramas and other similar dramatic works, it includes sound or visual recording of the actings, broadcasts or cable diffusions of these works; and
(ii) in the case of architectural works, it includes the construction of an architectural work according to its plan;
(v) "Sound recording" means the fixation of sounds on the material forms and the multiplication of such fixation;
(w) "This country" means the jurisdiction within which this Act is effective.
(x) "Visual recording" means the fixation of a sequence of images on the material forms and the multiplication of such fixation;
(y) "Work" means a production in which thoughts or feelings are first expressed in a creative way and which falls within the literary, scientific, artistic or musical domain.
2.1 - Nature of Rights
2.1.1 Economic Rights
Economic rights are referred to in the Act as "copyright" (chosakuken ). Such rights are set forth in Chapter 2 (Rights of Authors), Section 3 (Contents of Rights), Subsection 3 (Kind of Rights Comprising Copyright).
The copyright owner has an exclusive right to any one of the uses of the work mentioned below. Therefore, if any party does such act without obtaining authorization from the copyright owner, such party will be liable for copyright infringement.
(1) Right to reproduce a work (Copyright Act, Article 21)
As can be understood from the definition of "reproduction" (See Section 1: Introduction (u)supra.), the right of reproduction does not include reproduction in an intangible form.
(2) Right to perform a work (Copyright Act, Article 22)
The copyright owner of a musical composition can control, not only the live performance of his or her music, but also the performance of his or her music by phonograph records. For the time being, however, ordinary coffee shops, hotels, pinball (pachinko ) parlors, and other similar establishments may make free use of music by playing phonograph records in order to entertain their customers (Supplemental Provisions to the Copyright Act, Article 14).
(3) Right to broadcast a work or transmit it by cable
The copyright owner of a work has an exclusive right to broadcast or transmit by cable his or her work (Copyright Act, Article 23(1)). The copyright owner also has an exclusive right to communicate publicly by means of a receiving apparatus, his or her work broadcast or transmitted by cable (Id., Article 23(2)). Before the amendment of the Act in 1986, Article 23 of the Act used the term "diffuse by cable" instead of "transmit by cable". The purpose of this amendment was to broaden the coverage of the copyright owner's exclusive right. The amendment expanded the protection to various new media services, such as services to supply databases by on-line systems.
(4) Right to recite a work (Id., Article 24)
The copyright owner has an exclusive right to recite publicly his or her literary work.
(5) Right to exhibit a work (Id., Article 25)
The copyright owner has an exclusive right to exhibit publicly the original of his or her work of art or unpublished photographic work.
(6) Right to present publicly and distribute a cinematographic work (Id., Article 26)
This protection is given not only to the copyright holder of the cinematographic work but also to the copyright owner of the work which was reproduced in a cinematographic work.
(7) Right to lend copies of a work (Id., Article 26 bis )
The copyright owner has an exclusive right to lend to the public copies (in the case of a work of authorship which is reproduced in cinematographic work, copies of such cinematographic work are excluded) of the work (excluding a cinematographic work). The foregoing is not applicable to the lending of books or magazines (Supplemental Provisions of the Act, Article 4bis ). Therefore, the lending right is applicable to other works such as phonograph records, computer programs and sheet music.
(8) Right to translate or adapt a work (Copyright Act, Article 27)
The copyright holder has an exclusive right to translate, arrange musically, transform, or dramatize, cinematize, or otherwise adapt his or her work (Id., Article 27).
2.1.2. Moral Rights
Author's moral rights include the right to make a work public, the right to claim ownership, and the right to the integrity of his or her work.
(1) Right to make public (Id., Article 18(1))
The author has the right to offer to and make available to the public his or her work which has not yet been made public (including a work which has been made public without his or her consent) and such right extends to derivative works as well.
In the following cases, the author is presumed to have consented to the following acts (Id., Article 18(2)):
(a) Where copyright in his or her work which has not yet been made public has been transferred; the offering to and making available to the public of the work by exercising the copyright therein.
(b) Where the original of his or her artistic or photographic work which has not yet been made public has been transferred; the offering to and making available to the public of the work by exhibiting its original.
(c) Where the ownership of copyright in his or her cinematographic work belongs to the maker in accordance with the provision of Article 29 of the Act (See Section 5.2: Film and Video infra); the offering to and making available to the public of the work by exercising the copyright therein.
(2) Right to claim authorship (Id., Article 19).
The author has the right to determine whether his or her real name or a pseudonym should be indicated or not as the name of the author on the original of his or her work or when his or her work is offered to or made available to the public (Id., Article 19(1)). Any person who makes use of an author's work must indicate the name of the author in the same manner as that already adopted by the author (Id., Article 19(2)). An exception to the foregoing is where omitting the author's name is permitted in a case where the author's claim of authorship would not be injured. For example, background music can be used at a hotel without indicating the author's name.
(3) Right to the integrity of one's work
The author has the right to preserve the integrity of his or her work and its title against any distortion, mutilation or other modification against his or her will (Id., Article 20(1)). Certain modifications are considered not to infringe upon author's right to the integrity of his work, e.g., (a) when the modification is necessary for school education; (b) when architectural work must be modified by means of extension, rebuilding, repairing, or remodeling; (c) modification of a program for use in a given computer; or (d) other cases where the modification is reasonable (Id., Article 20(2)).
2.1.3. Neighboring Rights
It was in 1989 when Japan acceded to the Rome Convention which was signed in 1961 in order to protect the neighboring rights. The Act, which was enacted in 1970, already included a set of provisions modeled on the Rome Convention protecting the neighboring rights of performers, producers of sound recordings, and broadcasting organizations.
The neighboring rights relating to Japan or a Japanese national protected under the Act are as follows:
(a) Any performance which takes place in Japan or is either fixed in a phonogram defined in (b) below or transmitted live by a broadcast or cablecast referred to in (c) or (d) below;
(b) Any phonogram with its sound first fixed in Japan or which is produced by a Japanese national or entity;
(c) Any broadcast transmitted either from Japan or by a broadcasting organization organized under Japanese law;
(d) Any cablecast by a cable-diffusion organization located in Japan or organized under Japanese law, except for cablecast relaying broadcasts.
Foreign performances, etc., which are protected under the Act are as follows:
(a) Any performance which takes place in any of the Contracting States of the Rome Convention or any member of the World Trade Organization or is fixed in a phonogram referred to in (d) below or transmitted live by a broadcast referred to in (c) below;
(c) Any phonogram with sound first fixed in the Contracting States of the Rome Convention or members of the World Trade Organization or one which is produced by a national of a Contracting State of the Rome Convention or Geneva Phonogram Convention, or any of the members of the World Trade Organization or by an entity formed under the law of that country or possessing its principal offices there;
(d) Any broadcast transmitted from a Contracting State of the Rome Convention or a member of the World Trade Organization or by a broadcasting organization formed under its law.
(2) Rights of Performers
Performers enjoy an exclusive right to make sound or visual recording of their performances (Id., Article 91 (1)), to broadcast their performances or transmit them by cable (Id., Article 92(1)), and to lend commercial phonograms which embody their performances (Id., Article 95 bis (1)). Performers, however, may not prevent broadcasting organizations or cable-diffusion organizations from using phonograms of their performances for broadcasting or diffusion by cable. They are only entitled to collect secondary-use fees from such organizations (Id., Article 95(1)). Furthermore, the exclusive right of performers to lend phonograms of their performances can be exercised for a limited period of twelve months from the first sale of the phonograms (Id., Article 95bis (2) and Copyright Act Enforcement Order, Article 57bis ). Thereafter, performers can only collect royalties from record-rental businesses through collecting organization or individually.
(3) Rights of Producers of Phonograms
Producers of phonograms enjoy an exclusive right to reproduce their phonograms (Copyright Act, Article 96(1)). They also have an exclusive right to lend their commercial phonograms (Id., Article 97bis (1)). Phonogram producers may not prevent broadcasting organizations or cable-diffusion organizations from playing their phonograms for the public, however, they are entitled to collect secondary-use fees from such organizations (Id., Article 97 (1)). There is a provision similar to the one for performers (See (2) Rights of Performers, supra) concerning the twelve months sales period and collecting of royalties from record-rental businesses (Id., Article 97bis ).
(4) Rights of Broadcasting Organizations
Broadcasting organizations enjoy an exclusive right to make sound or visual recordings of their broadcast or cable-diffusions of their broadcast and to reproduce them by means of photography or similar processes (Id., Article 98). They also have an exclusive right to rebroadcast or diffuse them by cable (Id., Article 99(1)).
(5) Rights of Cable Diffusion Organizations
Cable diffusion organizations enjoy an exclusive right to receive their cable diffusions and to make sound or visual recordings of the sound or images embodied in the cable diffusions or to reproduce them by means of photography or similar processes (Id., Article 100bis ).
Cable-diffusion organizations also have an exclusive right to receive their cable diffusions and to broadcast them or to rediffuse them by cable (Id., Article 100ter ).
2.1.4. Right of Publication
Article 79(1) of the Act provides that the owner of the right to reproduce a work under Article 21 of the Act may establish a right of publication (shuppanken ) for a person who undertakes to publish the work. Shuppanken was first adopted in 1899 by the Old Act and is said to be unique to Japanese copyright law. Although shuppanken is one of the separate rights which constitute the right to reproduce a work (fukuseiken ), once a person is given shuppanken, he or she would enjoy the same exclusivity against third parties as does a copyright owner with respect to the right to publish a work. There is a clear distinction between a license to publish a work and a shuppanken in the sense that the latter is protected by the Act against infringement by a third party as if the owner of a shuppanken were an owner of the copyright. This distinction, however, is not fully recognized by the publishing industry in Japan and there are often disputes as to whether the agreement between the parties intended a shuppanken or a mere license to publish a work.
The duration of a shuppanken should be provided for in the agreement of the parties (Id., Article 83(1)). In the absence of such agreement, a shuppanken expires after three years from the date of the first publication (Id., Article 83(2)). In order to assign or pledge a shuppanken, its owner must obtain a consent of the owner of reproduction right (Id., Article 87).
Although no formalities are required for the establishment of a shuppanken , it must be registered in order to be effective against third parties. The following cannot be asserted against a third party without the registration of a shuppanken: (a)the establishment, transfer (except that by inheritance or other successions in general), alteration or expiry, or the restriction on the disposal of a shuppanken; or (b) the establishment, transfer, alteration or expiry, or the restriction on the disposal of the right of pledge established on a shuppanken (Id., Article 88(1)).
The shuppanken owner has certain obligations. First, he or she must, (a) publish the subject work within six months from the delivery of all the manuscripts by the owner of the reproduction right, and (b) continue to publish the work in accordance with prevailing practice (Id., Article 81). Further, the shuppanken owner is required to notify the author every time he or she plans a new reproduction (Id., Article 82(2)).
2.2. Challenges upon Ownership of Rights
There may be several grounds for challenging the ownership of rights. The following are some of the examples of challenges upon ownership of rights.
(1) Work of Authorship
As you can understand from the definition of "work" (See Section 1: Introduction (y) supra.), a certain amount of creative effort is required for a work to obtain copyright protection under the Act. Therefore, challenges can be made against a work to the effect that lack of or insufficiency of creativity makes the work not protectable under the Act. There is a court case which held that a classified telephone directory was a work under the Act however, mere lists of personal names cannot be considered a work (Tokyo District Court, 20 June 1919). Time tables and tariffs posted at railroad station (Tokyo District Court, 24 July 1931) and bill-of-lading forms (Tokyo District Court, 31 August 1964) were denied protection under the Act. Likewise, titles of books, motion pictures, musical pieces, etc., are not protected as works under the Act. Please note, however, that the author's moral right extends to the title of his or her work (Copyright Act, Article 20(1)).
(2) Government Works
Under Article 13 of the Act, the following works are excluded from copyright protection:
(a) the Constitution and other laws and regulations;
(b) notifications, instructions, circular notices and the like issued by organs of the State or local public entities;
(c) judgments, decisions, orders and decrees of courts of justice, as well as rulings and decisions made by administrative organs in proceedings similar to judicial proceedings; and
(d) translations and compilations, of those materials mentioned in the preceding three items, made by organs of the State or local public entities.
(3) Expiration of Duration of Copyright
Copyright in a work, in general, subsists throughout the life of its author and for fifty years after his or her death (Id., Article 51). Thereafter, the work will be in the public domain and no protection will be given under the Act. Please note in this connection that under the Act concerning Exceptional Provisions for Copyrights Owned by the Allied Powers and Allied Nationals, copyrights owned by the Allied Powers and their nationals before the Pacific War or acquired by them during the war are entitled to an extension of the duration for a period from 7 December 1941, to the day before the date the Treaty of Peace with Japan of came into effect.
Article 62(1) of the Act provides that copyright will lapse (a) if there is no person to inherit the decedent's copyright and it becomes a part of the National Treasury, and (b) if the copyright owner is a legal entity, its copyright becomes a part of the National Treasury upon its dissolution.
Although there is no express provision in the Act, a copyright, like any other property right, may be waived by the copyright owner. Such intention of waiver, however, must be expressly stated.
(6) Determination of Copyright Owner
There are cases where owner of the copyright cannot be easily determined, giving rise to a dispute. Joint works (See Section 1: Introduction (m) supra.) is one of such cases. In Bruce Tsuchida v. Hiroshi Kitagawa (Osaka High Court, 26 June 1980) the court reversed a lower court judgment saying that contribution of a Japanese-American high school teacher in improving the English translation of "Heike Monogatari", a twelve century Japanese classic, amounted to his being a co-author of the English translation of such work.
Another example where difficulty exists in determining the author is the case of works made for hire. Article 15(1) of the Act provides that when a work is created by employees of a legal entity in the performance of their employment duties and at the initiative of the employer and this work is to be published under the name of the employer, such legal entity is regarded as the author of the work.
Infringement of a right under the Act occurs when a party utilizes the work in question without obtaining an authorization from the owner of copyright. No requirement for negligence or willful act exists under the Act and this is different from the general tort principle under the Civil Code. The following are some of the examples of direct infringement of copyright, moral rights, publishing right and neighboring rights.
There are two types of unauthorized use of a copyrighted work; the first type is where the infringer makes public the work of another person falsely representing that the infringer is the author, and; the second type is where the infringer makes unauthorized use of the work without changing the name of the author. Even when certain authorization was given by the copyright owner, copyright infringement may take place if the actual use of the work goes beyond the scope of the given authorization; for example, a person who makes a motion picture based upon a novel with respect to which he or she only obtained an authorization to publish (shuppanken ), that person is infringing the copyright of the work.
(3) Moral Rights
(a) Right to make public
The act of making the work public without obtaining an authorization of the author and the act of preventing the author from making the work public infringes the author's right to make his or her work public.
(b) Right to claim authorship
The act of changing the name or a pseudonym of the author without his or her consent, deleting such name or pseudonym, or indicating the real name of the author on a work which was made public without indicating a name or under a pseudonym, infringes the author's right to claim authorship.
(c) Right to the integrity of one's work
Modifying the work or its title without obtaining an authorization from the author infringes the author's right to the integrity of his or her work.
(4) Right of Publication
Since the owner of the right of publication (shuppanken) has the exclusive right to publish the work, another person (including the owner of the right of reproduction) who publishes the work without obtaining an authorization from the owner of a shuppanken constitutes an infringement of the shuppanken.
(5) Neighboring Rights
Infringement of performers' rights include: unauthorized sound or visual recording of their performances, unauthorized broadcast (or cablecast) of their performances, and unauthorized lending for the first twelve months period of commercial phonograms which embody their performances. Infringement of rights of producers of phonograms include: unauthorized reproduction of their phonograms and unauthorized lending of their commercial phonograms for the first twelve month period. Infringement of the rights of broadcasting organizations include unauthorized reproduction of their sound or visual recordings, unauthorized cable-diffusions of their broadcasts, and unauthorized reproduction of their broadcasts by means of photography or similar processes. Infringement of the rights of cable diffusion organizations include unauthorized reception of their cable diffusions, unauthorized recordings of the sound or images embodied in the cable diffusions, and unauthorized reproduction of such sound or images by means of photography or similar processes.
Under Article 113 (1) of the Act, the following acts are considered to constitute infringements of author's moral rights, copyright, publication right or neighboring rights:
(a) Importation into Japan, for distribution, of articles made by an act which would constitute an infringement of author's moral rights, copyright, publication right, or neighboring rights if they were made in Japan at the time of importation.
(b) Distribution, or possession for distribution, of articles made by an act infringing author's moral rights, copyright, publication right, or neighboring rights (including articles imported into Japan under (a) above) by a person who is aware of such infringement.
Under Article 113(2), an act of using on a computer, in the conduct of business, copies made by an act infringing copyright in a program work is considered to constitute an infringement on that copyright, so long as a person using such copies is aware of such infringement at the time when he or she has acquired the right to use such copies.
The Act does not require any formality for protection of a work. Thus, two or more works identical or similar to each other may all be protectable under the Act so long as they are created independently by the respective author. In K.K. International Music Publishers v. Domei Suzuki et al. (Supreme Court, 7 September 1978) the court tried to establish a criteria for determining piracy of a work. In this case, the plaintiff, a Japanese music publisher obtained an exclusive license to publish in Japan musical works of American composers from an American music publisher. The works included Harry Warren's song "Boulevard of Broken Dreams". The Japanese publisher published the sheet music of the song which was later made into a commercial phonogram. Subsequently, the defendant Domei Suzuki composed a song called "One Rainy Night in Tokyo" which was made into a commercial phonogram and sold widely in Japan. The plaintiff filed a lawsuit against the defendant alleging that "One Rainy Night in Tokyo" copied the melodies of "Boulevard of Broken Dreams" and demanded payment of damages. In the first instance, the Tokyo District Court rendered a judgment to the effect that although there were some similarities, Domei Suzuki's song was an original work (Tokyo District Court, 13 May 1968). The Tokyo High Court upheld the decision of the district court (Tokyo High Court, 24 December 1974), and the plaintiff made final appeal to the Supreme Court. The Supreme Court held that the defendant had no access to the original work, and regardless of whether the defendant was negligent for not being aware of the original work, the defendant was not liable for copyright infringement since he was not in the position to pirate the original work.
In Japanese Society of Rights of Authors and Composers (JASRAC) v. Saburo Kinoshita et al. (Supreme Court, 15 March 1988), the court held that the act of a snack bar allowing its customers to sing copyrighted songs using karaoke equipment installed by the snack bar constitutes an infringement of performance right by the snack bar. A similar conclusion was reached by the court in JASRAC v. Kayoko Miura et al. (Hiroshima District Court, 27 August 1986) with respect to the use of a video karaoke to the effect that the use of a video karaoke by the customers constitutes an infringement of the performance right and the cinematographic presentation right. It should be noted in this connection that JASRAC often appears as the plaintiff in music infringement actions since JASRAC acts as the trustee of its members (song writers, composers and music publishers) in order to administer their copyrights. JASRAC is an association established in 1939 authorized by the Director General of the Cultural Affairs Agency to do an intermediary business in copyrights under the Act concerning Intermediary Business in Copyrights (Law Number 67, 1939).
5.2. Film and Video
The scope of works protected under the Act tends to become uncertain each time a new technology is introduced. In K.K. Namco v. Suishin Kogyo K.K. (Tokyo District Court, 28 September 1984), the court rendered its first decision on the issue of whether a video game was a cinematographic work. In this case, the defendant Suishin Kogyo K.K. placed pirated video game machines for "PAC-MAN" in its coffee shops and for the use of its customers. The plaintiff K.K. Namco asserted that "PAC-MAN" was a cinematographic work and the defendant infringed the plaintiff's right of cinematographic presentation. The court held in favor of the plaintiff stating that a video game is included in the definition of cinematographic work.
A cinematographic work is unique in the sense that it is usually created by the efforts of many authors of different works. Article 16 of the Act provides that the authorship of a cinematographic work is attributed to those who, by taking charge of producing, directing, filming, art direction, etc., have contributed to the creation of such work as a whole. With respect to the ownership of copyright in cinematographic works, Article 29 of the Act provides that the copyright in a cinematographic work belongs to the maker of such work, provided that the authors of the work have undertaken to participate in the making of such work. Thus, in most cases, copyright of a film belongs to the motion picture company who produced such film. There are, however, authors other than those mentioned above who have contributed to the creation of the film yet not included in the list of possible authors of the film. They are authors of novels, scenarios, music or other works adapted or reproduced in the film (Copyright Act, Article 16). Their works are protected independently from the film and their authorization becomes necessary in case of making a derivative work of the film.
In Akira Kurosawa et al. v. Toho K.K. (Tokyo District Court, 27 February 1978), authorization from scenario writers in producing a remake of a film became an issue. The film in question was "The Seven Samurai" (Shichinin no Samurai ) produced by Toho K.K. A U.S. film company, The Mirisch Company, Inc., who purported to have obtained the right from Toho K.K., remade and adapted "The Seven Samurai" into a Western, "The Magnificent Seven". Upon becoming aware of this, Akira Kurosawa and two other scenario writers instituted a lawsuit against Toho K.K. to confirm that the right to remake "The Seven Samurai" belonged to them and they have never given Toho K.K. a remake right. Toho K.K. claimed that the right to generally dramatize the scenario of "The Seven Samurai" was transferred to Toho K.K. according to the contract between Toho K.K. and the scenario writers. The Tokyo District Court held that the scenario writers only granted Toho K.K. authorization to exploit the scenario in the said contract, in so far as it permitted Toho K.K. to make the original film, "The Seven Samurai", and that the right to remake the film still belonged to the scenario writers.
A derivative work is protected independently from the original work. In State v. Gen Kondo (Osaka District Court, 14 August 1979) a criminal prosecution was brought upon the complaint filed by an animation film company, Toei Douga K.K., against a defendant who manufactured and sold T-shirts bearing an unauthorized reproduction of a comic character "Candy Candy" from a television animation film made by Toei Douga K.K.. In this case, Gen Kondo claimed that even if he had infringed the rights of the original cartoon, he had not infringed the rights of Toei Douga K.K. to its television animation film. The court held that an independent creativity should be attributed to each of the author of the original cartoon and to Toei Douga K.K. in creating the comic character "Candy Candy".
There are two legal precedents concerning film tie-up advertisement; Mark Lester et al. v. Tokyo Daiichi Film K.K. et al. (Tokyo District Court, 29 June 1976) and Steve McQueen v. Toho Towa K.K. et al. (Tokyo District Court, 10 November 1980). In the Mark Lester case, a scene from a film "Eyewitness" was used in a tie-up television commercial for the purpose of advertising both the film and a chocolate product. A scene in the advertisement was accompanied with a narration "Mark Lester loves it too". "It" meaning the chocolate product. In the Steve McQueen case, the portrait of Steve McQueen was used in a newspaper advertisement and a pamphlet in conjunction with advertisement of a transistor radio, and in another tie-up, portrait of Steve McQueen was used in a TV commercial film in conjunction with advertisement of a fermented milk beverage product. In this case there was no endorsement, whether express or implicit. The court held in favor of the plaintiffs in the Mark Lester case and in favor of the defendants in the Steve McQueen case.
The general principle of law expressed in the two judgments can be summarized as follows:
(a) There are two types of rights pertaining to an actor's portrait. One is the right derived from the right of privacy, the application of which is limited so far as an actor is concerned. The other is the right arising out of an actor's ability to license the use of his portrait. These rights to a portrait exist with respect to an actor's image used in a film.
(b) Copyright holder of a film (producer) is permitted under an agreement, express or implied, with an actor to freely use a scene or a still from the film with the actor's portrait to promote the film.
(c) Authorization of an actor is required for a person to use a scene or a still from a film showing his portrait if the purpose of the use is to advertise goods other than the film.
(d) In case of a tie-up advertisement, an advertisement using a scene or a still from a film carrying only the name of the film may still be considered advertisement for the film if such scene or still was primarily used for the promotion of the film and acts only as an "eye-catcher" for tie-up goods, and if such form of advertisement is considered an effective advertisement for the film from the surrounding circumstances.
(e) If the tie-up advertisement should include endorsement or recommendation by the actor of the tie-up goods, there is more likelihood of the advertisement being considered that of the tie-up goods rather than the film.
5.3. Computer Software
The Act was amended in 1985 with regard to computer programs. Prior to the amendment, the term "program" did not appear in the Act and it was not clear whether computer programs were protected under the Act. Through the efforts of the courts, however, it was more or less established even before 1985 that computer programs could be considered as works of authorship in the scientific domain under Article 2(1)(i) of the Act, and ROMs (Read Only Memory) or floppy disks that embody computer programs as reproductions or copies of such programs under Article 2(1)(xv).
The first case in this connection was K.K. Taito v. K.K. ING Enterprises (Tokyo District Court, 6 December 1982). In this case, the plaintiff was in the business of sale and lease of a video game called "Space Invader Part II". The defendant, upon request of its customers, converted video game machines of other makes by removing the printed circuit board from such machines and then storing the plaintiff's object code program in the ROMs attached to those other machines. The court held that the computer program of the plaintiff's video game was a work of authorship and the object code program its reproduction and, therefore, the defendant's act infringed upon the plaintiff's reproduction right. In the subsequent cases, similar conclusions were reached under the same interpretation of the Act in K.K. Taito v. Makoto Denshi Kogyo K.K. (Yokohama District Court, 30 March 1983) and Konami Kogyo K.K. v. K.K. Daiwa (Osaka District Court, 26 January 1984).
The 1985 amendment of the Act confirmed the interpretation of the Act made by said courts and intended to make the Act more suitable for protection of computer software. First, the definition of the term "program" was newly included in the Act (See Section 1: Introduction (q) supra). Next, a new provision was added as Article 10(3) on the extent of the protection granted to computer programs which provides as follows:
"The protection granted by this Act to works mentioned in paragraph (1), item (ix) shall not extend to any programming language, rule or algorithm used for making such works. In this case, the following terms shall have the meaning hereby assigned to them respectively:
(i) "programming language" means letters and other symbols as well as their systems for use as means of expressing a program;
(ii) "rule" means a special rule on how to use, in a particular program, a programming language mentioned in the preceding item;
(iii) "algorithm" means methods of combining, in a program, instructions given to a computer."
Since the program is different from other works of authorship in many aspects, the Act introduced the following new provisions:
(a) The author of a program created by an employee for a legal entity will be the legal entity even when such program was not made public under the name of the legal entity (Copyright Act, Article 15(2)). The reason for this amendment was that a program is often created by the legal entity for its own use and such program is seldom published.
(b) Certain modifications to a program became possible, without the consent of the author of the program, to the extent that it facilitates the use of the computer program on a given computer (Id., Article 20(2)(iii)). This is an exception to the author's right to the integrity of his or her work.
(c) A system of registering the date of creation of a program was introduced. The registration creates a presumption that the program was created on that date (Id., Article 76bis ).
(d) A party other than the legal owner of a copy of the program may not make another copy of such program even when it was for the purpose of his or her private use (Id., Article 47 bis (1)).
(e) A person knowingly used a pirated program on his or her computer is considered to have infringed moral rights, copyright, right of publication or neighboring rights (Id., Article 113(2)).
The first high court judgment after the 1985 amendment to the Act was System Science K.K. v. Toyo Sokuki K.K. (Tokyo High Court, 20 June 1989). In this case, the court stated that creativity is required in the original work in order to find an infringement. In literary works and other classical works, so long as originality existed creativity was seldom required. In the case of practical works, however, certain ideas can be expressed only in one way. Under the circumstances, the protection of such expression is tantamount to protection of an idea which is beyond the scope the Act. Thus, the court indicated that similarities resulting from hardware constraints and limitations should be disregarded in determining substantial similarity between two programs.
The issue of satellite broadcasting and cable re-transmission has not been discussed much in Japan.
The term "satellite broadcasting" does not appear in the Act, however, the term "broadcasting" defined in the Act (See Section 1: Introduction (c) supra) can be interpreted to include satellite broadcasting.
Cable re-transmission is a restricted act which is subject to the authorization of broadcasting organizations, cable diffusion organizations, performers and copyright owners. The broadcasting organizations have the exclusive right to re-broadcast and to diffuse by cable their broadcasts (Id., Article 99(1)). Cable diffusion organizations have the exclusive right to broadcast and to re-diffuse by cable their cable diffusions (Id., Article 100ter ). The performers have the exclusive right to broadcast and to transmit by cable their performances (Id., Article 90(1)). The exclusive right of the performers, however, does not include cable transmission of performances already broadcast or fixed in sound recordings (Id., Article 92(2)). The copyright owner has the exclusive right to broadcast and to transmit by cable his or her work (Id., Article 23(1)).
A copyright infringement is a tort, and Chapter 5 of the Civil Code on unlawful act is generally applicable.
If there is an infringement of copyright, it is common for the copyright owner to send a warning letter to the infringer demanding cease and desist. Such a letter is usually sent by certified mail and is considered more effective when sent in the name of a lawyer. The warning letter would state that if the infringer does not comply with the demand within a fixed period of time, a formal court action would be instituted.
There are cases, however, where the warning letter gives the infringer an opportunity to destroy or hide the evidence of the infringement or to dispose of the pirated copies of the work in question. In such cases, it is more appropriate to first file a petition for a provisional disposition (karishobun ) with a competent court under the Civil Preservation Act (Law Number 91, 1989). The petition for a provisional disposition must be followed by a formal action. Formal actions include an action for an injunction, an action to claim damages, an action to recover unjust enrichment, and an action to recover honor and reputation.
If the infringer is willing to discuss a settlement, a mediation proceeding would be an appropriate measure. There are two kinds of mediation proceedings available in case of copyright infringement; choutei and assen . Choutei is a mediation proceeding before a court under the Civil Mediation Act (Law Number 222, 1951). Assen is a mediation proceeding specifically designed to settle copyright disputes provided for in Chapter 5 (Settlement of Disputes) of the Act. Assen is conducted by a board consisting of not more than three members appointed by the Director General of the Cultural Affairs Agency. Since assen is not an arbitration, the mediation board does not have the ability to render an award binding upon the parties. The settlement under assen proceeding can only be made upon agreement of the party.
8.1. Damages and Account of Profits
Since copyright infringement constitutes a tort, Article 709 of the Civil Code, the general tort provision, would apply. Article 709 provides: "A person who violates intentionally or negligently the right of another is bound to make compensation for damage arising therefrom." Under this provision, however, the plaintiff must establish the amount of damages, and this is often difficult in case of a copyright infringement. In order to ease the burden of proof, Article 114 of the Act provides as follows:
"(1) In the case where an owner of copyright, right of publication or neighboring rights claims compensation for damages from a person who has infringed intentionally or negligently any of these rights, the profits, if any, obtained by the infringer from that infringement shall be presumed to be the amount of damages suffered by such owner.
(2) The owners of copyright and neighboring rights may claim compensation for damages from a person who has infringed intentionally or negligently their copyright or neighboring rights, the amount of damages suffered being that corresponding to the ordinary amount of money that would be received by them through the exercise of these rights.
(3) The provision of the preceding paragraph shall not prejudice any claim to compensation for damages in excess of the amount mentioned therein. In such case, the court may consider the absence of any bad faith or gross negligence on the part of the infringer in fixing the amount of damages."
Since above Article 114 requires the infringement to have been made intentionally or negligently, it is not possible to resort to this Article if the infringer was not negligent. In such case, only the action for recovery of unjust enrichment is available. In the case of unjust enrichment by a non-negligent person, Article 703 of the Civil Code provides that such person is "bound to return such benefit to the extent that it still exists".
8.2. Injunctive Relief
Article 112(1) of the Act provides: "Against those who infringe or are likely to infringe moral rights, copyright, right of publication, or neighboring rights, the authors as well as the owners of these rights may make a demand for cessation or prevention of such infringements". It is not necessary for the infringer to have willful intent or be negligent to be subject to the above mentioned injunction. Often a petition for a provisional disposition (karishobun ) is filed simultaneously with or before the institution of a lawsuit under the above provision.
8.3. Seizure, Confiscation and Destruction
Article 112(2) provides: "In making such demand, the authors, the owners of copyright, the owners of right of publication, or the owners of neighboring rights may demand to take measures necessary to effect such cessation or prevention of infringement, such as the abandonment of objects which constituted an infringement, objects made by an infringement or implements and tools used solely for an infringement". In the above provision, "objects which constituted an infringement" includes such items as music tapes used for unauthorized performance or broadcasting and artistic works exhibited publicly without authorization. Also, "objects made by an infringement" includes unauthorized copies of a novel and commercial phonograms.
8.4. Criminal Sanctions
(1) A person who infringes moral rights, copyright, right of publication or neighboring rights is punishable by imprisonment for a term not exceeding three years or a fine not exceeding one million Yen (Copyright Act, Article 119).
(2) A person who violates the provision of Article 60 of the Act shall be punishable by a fine not exceeding one million Yen (Id., Article 120). Article 60 of the Act provides for the case where a person who, after the death of an author, has committed an act which would infringe upon the author's moral rights if the author were still alive.
(3) A person who distributes copies of works on which the true name or generally known pseudonym of a non-author is indicated as the name of the author is punishable by imprisonment for a term not exceeding one year or a fine not exceeding three hundred thousand Yen. The same punishment applies where a person distributes copies of derivative works on which the true name or generally known pseudonym of a non-author of the original work is indicated as the name of the original author (Id., Article 121).
(4) Article 121bis intends to punish piracy of two types of commercial sound recordings; (a) commercial phonograms which have been manufactured by commercial phonogram producers in Japan from masters of phonograms offered by producers of phonograms; and (b) commercial phonograms which have been manufactured by commercial phonogram producers abroad, from masters of phonograms offered by producers of phonograms who are nationals of any of the Contracting States of the Rome Convention, the members of the World Trade Organization or the Contracting States of the Geneva Phonogram Convention. A person who makes, distributes or possesses for distribution copies of commercial phonograms reproduced from any of the above mentioned commercial phonograms is punishable by imprisonment for a term not exceeding one year or a fine not exceeding three hundred thousand Yen. Such activities, however, are not punishable with respect to a phonogram the first fixation of sounds on its masters took place more than fifty years ago.
(5) Article 123(1) provides that a person who has committed an act falling under Articles 119, 121 or 121bis can be prosecuted only upon complaint by the injured party.
8.5. Customs Action
Importation into Japan of pirated goods constitutes infringement of author's moral rights, copyright, publication right or neighboring rights (Id., Article 113 (1)(i)). It is also provided in Article 21(1) of the Custom Tariff Act (Law Number 54 of 1910) that importation into Japan of goods infringing copyright and neighboring rights is prohibited. The Custom Tariff Act was amended in 1994 to satisfy the requirement of the Agreement on Trade-Related Aspects of Intellectual Property Rights. The amendment includes, inter alia, (a) the right of copyright owners and the owners of neighboring rights to make applications to the Customs Bureau to prevent release of infringing goods into free circulation (suspension), (b) procedures for notice to the copyright owner and the owner of neighboring rights on the suspension, and (c) indemnification of the importer and the owner of the goods for wrongful detention of goods. Under Article 109 of the Customs Act (Law Number 61 of 1954), a person who imported goods prohibited from importation under Article 21(1) of the Custom Tariff Act is punishable by imprisonment for a term not exceeding five years and/or a fine not exceeding five million Yen.
The foregoing concerns import of pirated goods. The case law is not clear on the import of copies of a work produced in a foreign country with authorization from the copyright owner of the work in such country and imported into Japan. In Keep K.K. v. K.K. Pony Canyon Hanbai et al. (Tokyo District Court, 1 July 1994), the court held that parallel import of videocassette s of the film "101 Dalmatians" infringed the right of distribution of the copyright owner of the said film, The Walt Disney Company. In this case, the videocassette s in question were produced and sold in the United States with authorization from The Walt Disney Company and the plaintiff purchased those videocassette s in the market and tried to import and sell them in Japan. The defendants, in order to cope with such contemplated sale, distributed copies of a notice to video shops saying that parallel import of videocassette s is illegal. The plaintiff alleged that they have suffered damage from such activities of the defendants obstructing plaintiff's sale. Unlike other works of authorship, the distribution right is included in the copyright for cinematographic work (Copyright Act, Article 26(1)). Thus, the conclusion reached by the court in the above case may not be applicable to other types of works of authorship.
The Act provides for the exclusive right of the copyright owner to use the work. There are, however, certain exceptions to this rule. The first category of such exceptions is "fair use", where no compensation is required for the use. The second category is "legal license", where the use of the work is subject to payment of certain designated compensation. The third category is "compulsory license", where the use is authorized through arbitration of the Director General of the Cultural Affairs Agency. In the case of legal licenses, the copyright owner may not claim injunctive relief, and only ask for payment of compensation, whereas, in the case of compulsory licenses, injunctive relief is available. Even when a person may use a work in accordance with the above, he or she must clearly indicate the source of the work (Id., Article 48). The description of the uses coming under each of the above three categories are as follows:
(1) Fair Uses
(a) Reproduction for private use (Id., Article 30; See Section 1 Introduction supra on 1984 and 1992 amendments to the Act)
(b) Reproduction in libraries (Id., Article 31)
(c) Quotations (Id., Article 32)
(d) Reproduction in schools and other educational institutions (Id., Article 35)
(e) Reproduction in Braille (Id., Article 37)
(f) Performance not for profit making (Id., Article 38)
(g) Reproduction of articles on current topics (Id., Article 39)
(h) Exploitation of political speeches (Id., Article 40)
(i) Reporting of current events (Id., Article 41)
(j) Reproduction for judicial proceedings (Id., Article 42)
(k) Exploitation by means of translation, adaptation, etc. (Id., Article 43)
(l) Ephemeral recordings by broadcasting organizations (Id., Article 44)
(m) Exhibition of an artistic work by the owner of the original thereof (Id., Article 45)
(n) Exploitation of an artistic work located in open places (Id., Article 46)
(o) Reproduction required for an exhibition of artistic works (Id., Article 47)
(p) Reproduction by the owner of a copy of a program work (Id., Article 47bis; See Section 5.3: Computer Software supra)
(2) Legal License
(a) Reproduction in school textbooks (Id., Article 33)
Published works may be reproduced in school textbooks to the extent deemed necessary for the purpose of school education. A person who makes such reproduction must inform the author thereof and pay to copyright owner, compensation fixed annually by the Director General of the Cultural Affairs Agency.
(b) Use of works in broadcasting school education programs (Id., Article 34)
Published works can be used in broadcasting or diffusing by cable, school education programs which conform to the curriculum standards. It is subject to notification to the author and the payment of a reasonable amount of compensation to the copyright owner.
(c) Reproduction in examination questions (Id., Article 36)
Published works may be reproduced for the preparation of questions of examinations. A person who makes such reproduction for profit-making purposes must pay the copyright owner compensation the amount of which corresponds to an ordinary rate of royalty.
(3) Compulsory Licenses
Compulsory licenses are granted by arbitration (saitei) of the Director General of the Cultural Affairs Agency in the situation where a license cannot be otherwise concluded. The arbitration award will include the amount of compensation to be paid to the copyright owner in the case such amount cannot be agreed between the user of the work and the copyright owner.
A compulsory license can be obtained in the following situations:
(a) A person who desires to use a published work or a work which has been offered or made available to the public for a considerably long period is unable to locate the copyright owner to negotiate a license (Id., Article 67 (1)).
(b) A broadcasting organization which desires to broadcast a published work is unable to reach an agreement with the copyright owner for a license of such work, or if it is not possible for the broadcasting organization to negotiate with the copyright owner (Id., Article 68(2)).
(c) If commercial phonograms of a musical work has been distributed to the public under a license from the copyright owner for more than three years and a person who desires to make and distribute other commercial phonograms of such work is unable to reach an agreement with the copyright owner for a license, or it is not possible for him or her to negotiate with the copyright owner (Id., Article 69).
In addition to the above, Article 5(1) of the Act concerning the Exceptional Provisions to the Copyright Act required upon the Enforcement of the Universal Copyright Convention provides for the compulsory license to translate a work into Japanese language.
Major defenses to infringement claims were already discussed in the foregoing sections of this chapter. They are as follows:
(a) A person who is granted the right of publication (shuppanken) enjoys the exclusivity against the copyright owner (See Section 2.1.4: Right of Publication supra). The right of publication, therefore, will be a defense against the infringement claim from the copyright owner.
(b) The basis for attacks upon ownership of rights (See Section 2.2: Attacks upon Ownership of Rights supra) can be used as a defense against a claim from a self-styled copyright owner.
(c) A work which is created independently will not infringe copyright of any other works. Thus, the fact that a person had no access to the original work which is claimed to have been infringed will be a defense against the infringement claim (See K.K. International Music Publishers v. Domei Suzuki et al. in Section 5.1: Music supra).
(c) If an act in question does not constitute infringement, it will be a defense against the infringement claim (See Section 9: Acts Not Constituting Infringement supra).
Japan has acceded to the following international conventions:
(a) Berne Convention for the Protection of Literary and Artistic Works (1886, Berne)
(b) Universal Copyright Convention (1952, Geneva)
(c) International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961, Rome)
(d) Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of Their Phonograms (1971, Geneva)
(e) Agreement on Trade-Related Aspects of Intellectual Property Rights (1994, Marrakesh)
Article 5 of the Act provides: "If an international treaty provides otherwise with respect to the rights of authors and the rights neighboring thereon, the provisions thereof shall prevail." Thus, in case of any discrepancies between the treaty and the Act, the treaty will prevail. The Act has been amended from time to time to be in conformity with the foregoing international conventions and there has been no need to invoke Article 5 until now.