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1. Introduction
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 The Act superseded the Old Act in its entirety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. Rights Covered by Copyright
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
(1) General
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.
(4) Succession
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.
(5) Waiver
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.
3. Direct Infringement
(1) General
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.
(2) Copyright
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.
4. Indirect Infringement
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.
5. Piracy
5.1. Music
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.
6. Satellite Broadcasting and Cable Re-transmission
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)).
7. Infringement Proceedings
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. Remedies
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.
9. Acts Not Constituting Infringement
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.
10. Defenses to Infringement
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).
11. International Conventions
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.
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