The Trade Mark Act and the Unfair Competition Prevention Act (UCPA) are the principal sources of law relating to trade marks, within which provisions reflect the 1883 Paris Convention, the 1990 Nice Agreement, the TRIPS Agreement, the Trade Mark Law Treaty and the Madrid Protocol, all ratified by Japan.
Prior court judgments do not have legally binding effect on the courts. Therefore, theoretically, courts may issue decisions differing from precedents. However, this does not mean that court precedents are not important. In particular, Supreme Court precedents substantially function as sources of law, and it is highly unlikely for lower courts to render decisions that differ from Supreme Court precedents.
Generally, treaties take precedence over domestic laws, which take precedence over government ordinances and cabinet office ordinances in Japan.
There is no hierarchical distinction between the Trade Mark Act and the UCPA as they are both legislative acts.
The Trade Mark Act provides for the categories of unregistrable trade marks (upon examination or subject to cancellation), three of which are designed to protect well-known or famous trade marks. Article 4-1-10 states a trade mark that "is identical with, or similar to, another person's trade mark which is well known among consumers as that indicating goods or services in connection with the person's business [shall not be registered], if such a trade mark is used in connection with such goods or services or goods or services similar thereto".
Article 4-1-15 is considered to protect the famous and considerably well-known trade marks from a third party trying to register or that has registered a trade mark that is likely to cause confusion in connection with the goods or services pertaining to a business of the owner of such a trade mark. Article 4-1-19 prohibits the registration of a trade mark that "is identical with, or similar to, a trade mark which is well known among consumers in Japan or abroad as that indicating goods or services [. . .] if such trade mark is used for unfair purposes [. . . .]". It is also considered to protect famous and considerably well-known trade marks.
In addition, Article 64 of the Trade Mark Act provides that the owner of a trade mark "well known among consumers" can register it as a defensive trade mark in order to have the trade mark enjoy a broader range of protection if there is a likelihood of confusion with other goods or services. The "well known" criterion is stricter than that in Article 4-1-10 and is interpreted as requiring a higher degree of fame.
The Unfair Competition Prevention Act (UCPA) protects "indications of goods or business (names, trade names, trade marks, mark, containers or packaging for goods which are connected with a person's operations, or any other indication of a person's goods or business [. . .])," which are "well-known among consumers" or which are "famous". Under the UCPA, "famous" indicates a higher degree of fame than "well-known" does. On one hand, use of signs identical or similar to an indication of goods or business that is well-known among customers is deemed unfair competition if the likelihood to cause confusion exists, whereas, on the other hand, "famous" indications of goods or business are protected even where there is no likelihood to cause confusion.
Both the Trade Mark Act and the UCPA distinguish between famous trade marks and well-known trade marks.
Under the Trade Mark Act (see above), although Article 64 refers to the registrability of "well-known" trade marks as defensive trade marks, "well-known" is interpreted as meaning "famous". In addition, Article 4-1-10 is considered to protect both well-known trade marks and famous trade marks. Article 4-1-15 and 4-1-19 are interpreted to protect only famous and extremely well-known trade marks.
Under the UCPA, the difference lies in whether it is necessary to demonstrate the requirement to cause confusion (for well-known marks) or not (famous marks) in order to be deemed as unfair competition.
In Japan, trade marks that belong to the luxury industry are not supposed to enjoy a broader range of protection apart from that provided by law. The "aura of luxury" should not play a role either. In practice, courts will apply the same general principles to luxury brands and do not recognize any broader protection.
A trade mark is entitled to broader protection where its long and intensive use is demonstrated. According to the Examination Guidelines for Trade Marks [11th edition] (JPO Guidelines), published by the Japan Patent Office (JPO), the fact that a trade mark is well-known or famous needs to be proved by evidence such as:
The courts of Japan also adopt a similar policy.
There is no single test or threshold that must be reached for a trade mark to be protected as well-known or famous. The JPO and the courts of Japan would take into account various factors. According to the JPO Guidelines, the JPO will judge whether a trade mark is well-known or famous based on the following factors:
These factors are those which are generally used by the courts of Japan.
The owner of a trade mark can seek an injunction of a domain name based on the UCPA as well as the Trade Mark Act if the trade mark is registered. There is also a judgement of the district court (8 December 2005, Osaka District Court) which ruled that use of a trade mark as a metatag may constitute infringement.
On the other hand, a trade mark cannot be enforced against a trade name if the use of the trade name is in a general manner and the owner of the trade name does not have the purpose of unfair competition. In addition, a trade mark cannot be enforced against an abbreviation of a trade name if:
Whether a trade mark may be enforced against its unauthorized use in social media is determined on a case-by-case basis under the Trade Mark Act and the UCPA. It depends on whether the use in social media is deemed as trade mark use, that is, as indication of origin for goods or services.
It is essentially difficult to enforce a trade mark against its use in comparative advertising. It depends on whether the use in comparative advertising is deemed as trade mark use, that is, as indication of origin for goods or services. However, where an advertiser displays its own trade mark and a third party's trade mark, it is usually not considered to be intended as indication of origin of an advertiser's goods or services.
Whether a trade mark be enforced against its unauthorized use in parody is determined on a case-by-case basis. Neither the Trade Mark Act nor the UCPA provide for general fair use provisions. The court only examines whether a trade mark or its use falls under one of the Articles 4 (1) (i) - (xix) of the Trade Mark Act enumerating "Unregistrable trade marks" or one of the acts constituting Trade mark infringement, depending on the type of the litigation.
It is possible for a trade mark owner to take action claiming both trade mark infringement and unfair competition for the same set of facts, and it is possible to bring parallel proceedings. If a trade mark owner brings unfair competition proceedings separately, these proceedings will be jointly conducted eventually.
The substantive law relating to copyright is the Copyright Act (Act) (all references to articles herein shall refer to the Act, unless otherwise stated). Provisional measures, including preliminary injunctions, in connection with copyright infringement are set forth in the Civil Preservation Act.
In addition, Japan has executed the following treaties with respect to copyright protection:
Prior court judgments do not have legally binding effect on the courts. Therefore, theoretically, courts may disregard precedents. However, this does not mean that court precedents are not important. In particular, Supreme Court precedents substantially function as sources of law, and it is highly unlikely for lower courts to provide opinions that differ from Supreme Court precedents.
Article 5 of the Act clearly sets forth that if there is a provision in a treaty with respect to copyrights and neighboring rights which differs from the Act, the provision of the treaty will prevail. However, the Act sets forth provisions according to the obligations of each of the above treaties; therefore, there are no conflicts at present.
Article 2-1-1 of the Act defines "work" to be protected by the Act as a "production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain". The following nine types are listed as "examples" of works in Article 10:
These are just examples, and as long as a work falls under the above definition of "work," it is protected under the Act. In that sense, the Act's list is not a closed list, but an open list.
Performers, producers of phonograms, broadcasting organizations and wire-broadcasting organizations each have neighboring rights with respect to "performance," "phonograms," "broadcasts" and "wire-broadcasts". There is a provision defining performance, phonograms, broadcasts and wire-broadcasts (Article 2-1), and as long as the subject matter falls under such definition, it is subject to the protection of neighboring rights under the Act.
The majority of court precedents state implicitly or explicitly that copyright is not denied by the mere fact that a work is an industrial product. So there is no objection to it as long as it fulfils the criteria of protectable copyright matter, in that such a product must be comparable in aesthetic qualities to fine arts. In many cases, copyrightability is denied on the grounds that, apart from its industrial applicability, a product in question cannot serve as an object of art. Therefore, only a very limited number of industrial products can satisfy the requirements for copyright protection.
Copyright protection may be allowed if the requirements described above are satisfied, that is, copyright protection will be allowed if a production is something in which "thoughts or sentiments are expressed in a creative way," in other words, if the author's "individuality" (or "originality") is expressed in relation to the "thoughts or sentiments". However, in order for a piece of applied art to be protected as a copyrighted work, it must be comparable in copyrightability to "fine arts".
The Act explicitly states that works of artistic craftsmanship are protected as artistic works (Article 2.2). However, there are no provisions on other types of industrial products (works of applied art) and therefore, a decision on whether a certain product is protected is a matter of interpretation. Court decisions basically recognize it is not appropriate to grant the same level of copyright protection to industrial products as in the case of fine arts and hence copyright protection is granted to an industrial product only if it is deemed comparable to fine arts, or it has qualities of fine arts.
A decision on whether "it is deemed comparable to fine arts" or "it has qualities of fine arts" is made considering:
As described here, the requirements for copyright protection for industrial products are different from the requirements for copyright protection for other ordinary artistic products (fine arts).
Regarding rights of authors, the Act sets forth the following rights as "types of rights covered by copyright":
As for moral rights, the author has the right to offer and make available to the public any work which has not yet been made public (Article 18); the right to determine whether or not to indicate its name as the author of the work (Article 19); and the right to maintain the integrity of its work and its title (Article 20). These rights are personal and exclusive to the author and cannot be transferred (Article 59). Care is required especially with respect to the high level of the right to maintain integrity. Article 20 grants the author "the right to refuse modifications against its intent", but this acknowledges to the author stronger protection than the "right to object to any action which would be prejudicial to its honor or reputation" set forth in Article 6-2 of the Berne Convention, and is rare worldwide. Some people point out that in the digital era, this right to maintain integrity may possibly prevent the use and distribution of works.
"Neighboring rights" refer to the rights of performers, broadcasters, and other individuals who do not author works, but play an important role in communicating them to the public.
Performers are granted the following rights:
Unlike other holders of neighboring rights, performers are granted moral rights known as the right to indicate name (Article 90-2) and the right to preserve integrity (Article 90-3).
However, the right to preserve integrity as mentioned here is against modifications "that would harm its honor or reputation" and it must be noted that it is weaker than an author's right to preserve integrity.
Rights of producers of phonograms:
Rights of broadcasting organizations:
Rights of wire-broadcasting organizations:
Japanese law recognizes works made for hire in the employment context by providing for the vesting of ownership in an employer for the creative works of employees made in the course or scope of employment, unless otherwise provided by contract, work rules, or similar.
Article 15(1) of the Act specifically provides that authorship of an employee "in the course of his duties" is attributed to the employer "unless otherwise stipulated in a contract, work regulation, or the like in force at the time of the making of the work". If the employer is a "legal entity" (as opposed to a natural person), then the law will limit the copyright term to 50 years from publication of the work.
For cinematographic works, however, Japan does not maintain a specific work-for-hire presumption. Rather, under Article 16, films are works of joint authorship of the director, producer, and others unless they meet the work-forhire criteria of Article 15.
In the case of works by consultants or independent contractors, initial ownership of such works vests in the contractor, although it can be provided otherwise by freedom to contract.
Where a shareholder is also an employee, the work for hire presumption will apply. Otherwise, express contract provisions shall provide for copyright assignment.
Where a director is also an employee, the work for hire presumption will apply. Otherwise, express contract provisions shall provide for copyright assignment.
The regime of independent contractor (defined as any supplier who is not an employee) will apply. Thus an express assignment clause should be included in any contract with supplier before any work is started.
No formalities are necessary to assign copyright. However, to assert a copyright assignment against a third party, an application to register the assignment must be filed in writing with the Agency for Cultural Affairs (or SOFTIC for computer programs). The registration has to be substantiated by submitting relevant documents providing evidence that the parties have agreed to the assignment.
Unlike moral rights, economic rights can be freely transferred or relinquished. The assignment contract itself should govern whether ownership vests in the legal entity or the author, and the Copyright Act does not contain any provisions limiting eligibility to specific categories of works.
It is recommended to negotiate an assignment of IPRs created by an external consultant, before they are created. A clause that simply says that the company/ employer owns the rights but does not specifically assign the rights does not legally transfer the ownership rights.
Since an author's moral rights are exclusive to the author and cannot be transferred, the assignee should have the assignor agree not to exercise these rights against the assignee and its successors. However, as to the validity of a waiver of his/her moral rights, there is still ongoing discussion since the Copyright Act does not refer to it.
Moral rights are non-transferable and cannot be waived. However, it is quite common practice to include such a clause in copyright assignment contracts. Nevertheless, it must be noted that its validity could be challenged since the Act does not refer to it.
In principle, the term of copyright protection is until the end of the 50-year period following the death of the author (Article 51). There are some exceptions. First, the term of protection for anonymous or pseudonymous works and works under the name of a juridical person or other corporate body is until the end of the 50-year period following the making public of such works (Article 52, Article 53). With respect to cinematographic works, the copyright continues to subsist until the end of the 70-year period following the making public of such works, and if the work has not been made public within the 70-year period following its creation, until the end of the 70-year period following the work's creation (Article 54).
The Berne Convention adopts the principle of reciprocity with respect to the term of protection. Therefore, if the term of protection in the country of origin is shorter than above, the shorter term of protection applies (Article 58).
Copyright registration may be obtained at the Agency for Cultural Affairs (or Software Information Center for programming works). However, neither copyright deposit nor copyright notice is required to enforce a copyright.
The merit of registration lies in the point that a person whose true name is registered will be presumed to be the author of the work which is the subject of the registration (Article 75-3). In addition, if the author's name is indicated on the original of their work, or when their work is offered to the public, they will be presumed to be the author of such work (Article 14). Because there are no such presumptions in neighboring rights, it is necessary, in principle, for the subject to prove that they are the performer, and so on.
When copyrights and neighboring rights are transferred or a copyright is secured by pledge, unless such transfer or establishment of pledge is registered, the validity of such transfer or security by pledge may not be asserted against a third party (Article 77, Article 104).
Copyright and neighboring rights may be exercised even without such deposit or notice.
In order to verify copyrightability in a copyright infringement case it is common to use documents and affidavits. To show the creativeness requirement, sometimes witnesses are used. Cross-examination of witnesses is required.
The Supreme Court has held that "[t]he 'copying' of a work is the reproduction of a work based on the existing work, and from which the details and forms of the existing work can be perceived". For copyright infringement, the infringing work must be based on an existing work, but it does not necessarily have to be a complete reproduction. If it can be acknowledged as having been based on the existing work, and is of substantial similarity from which the details and forms of the original work can be perceived, it will establish an infringement of copyright.
Copyright can probably be enforced against, for example, a trade mark, design, patent, domain name, trade name, a pseudonym and other IP rights. There are no provisions in the Act denying the copyrightability of such distinctive signs. However, in order to enforce a copyright against such rights, the latter must fulfil requirements for copyrighted work, meaning they must be a "production in which thoughts or sentiments are expressed in a creative way" and "which falls within the literary, scientific, artistic or musical domain" and often, extremely short phrases and titles of books are considered to not meet the former requirement. In addition, those that are not protected under other industrial property laws, such as utility goods and industrial goods, are often considered to not meet the latter requirement. Distinctive signs such as trade marks are often comprised of extremely short phrases, and because in most cases they are protected under other industrial property laws, such as the Trade Mark Act, copyrightability with respect to such signs will most likely be denied.
The use of copyright on a social networking site, provided it does not fall under the fair use exceptions mentioned in the list below, may constitute copyright infringement. The same conditions are applicable as assessing copyright infringement mentioned above. There is no particularity and the assessment will be conducted on a case-by-case basis by a comparison between original works and alleged infringing works.
Copyright may be enforced against its unauthorized use in comparative advertising if such use falls under infringement according to the Copyright Act.
Besides copyright enforcement, comparative advertising is regulated by the "Approach to Advertising under the Premiums and Representations Act", exclusively enforceable by administrative authority, and can also be enforced under the Unfair Competition Prevention Act (UCPA) if it fulfils the requirements (such as misleading acts or acts injurious to business reputation).
The Copyright Act does not provide general fair use provisions or parody exceptions. Any unauthorized use will be decided on a case-by-case basis and considered copyright infringement if it meets the criteria.
The Act limits copyright and neighboring rights in the cases indicated below, for the purpose of harmonizing the economic benefits of the author and the benefits of the society which uses information:
This is a limited list, and copyrights are not limited unless indicated in the list. In that sense, although there are no general provisions with respect to fair use in Japan, cases in which the exercise of copyrights are acknowledged (although they may be far from "fair") are individually listed in detail, and rights are limited in only such cases. It should be noted that discussions are under way to determine whether or not the Act should be amended to include general provisions on fair use.
With respect to neighboring rights, these are limited in basically the same instances.
The right to demand compensation for damages for copyright infringement lapses by prescription if not exercised: within three years from the time when the right holder became aware of such damages and of the identity of the person who caused it; or within 20 years from the act of infringement.
Besides the above time limits, a valid copyright will not be deemed unenforceable owing to acts or misconduct by the copyright holder.
If the requirements of the Act, the Design Act and the UCPA are fulfilled, it is possible to bring a lawsuit claiming copyright infringement and design infringement and/or unfair competition for the same set of facts. This is because both the purpose and effects of those acts differ.
Furthermore, it might be possible to bring, on one hand, judicial proceedings based on copyright infringement and unfair competition and, on the other hand, file for administrative proceedings before the JPO. In addition, invalidity proceedings at the JPO are available for a third party to contend directly to the JPO that an issued design patent is invalid. The invalidity proceedings can be used together with, or independently from, court proceedings.
The Design Act, the Unfair Competition Prevention Act (UCPA) and the Copyright Act are the principal sources of law relating to designs. Japan is also a member of the Geneva Act of Hague Agreement Concerning the International Registration of Industrial Designs.
Prior court judgments do not have legally binding effect on the courts. Therefore, theoretically, courts render decisions differing from precedents. However, this does not mean that court precedents are not important. In particular, Supreme Court precedents substantially function as sources of law, and it is highly unlikely for lower courts to hand down decisions that differ from Supreme Court precedents.
Generally, the treaties take precedence over domestic laws, which take precedence over government ordinances and cabinet office ordinances in Japan.
There are no hierarchical differences among the Design Act, the UCPA and the Copyright Act.
The Design Act protects exclusively registered designs defined as "the shape, patterns or colors, or any combination of them, of an article which creates an aesthetic impression through the eye" as long as it does not fall under the category of unregistrable designs.
The UCPA provides protection for unregistered design by prohibiting acts of unfair competition, such as assigning, leasing, displaying for the purpose of assignment or leasing, exporting or importing goods that imitate the configuration of another person's goods for 3 years after the date the goods were first sold in Japan, regardless of notoriety of the configuration. In addition, a design which obtained a secondary meaning, and as a result is considered as an indication of goods or services and is also "well-known" among consumers, is deemed as unfair competition if the likelihood to cause confusion exists. On the other hand, a "famous" design can enjoy the same protection even if there is no likelihood to cause confusion, against identical or similar designs.
A design is also protectable under the Copyright Act if the design is deemed as a production in which thoughts or sentiments are expressed in a creative way, and which falls within the literary, scientific, artistic or musical domain, such as a work of craft of artistic value.
According to the Design Act, in order to obtain a design registration, a creator of a design is required to show the design:
Under the Design Act, the employer shall have a non-exclusive license on design rights obtained for designs of an employee or an officer, if the design falls within the scope of the business of the employee or the officer and was achieved by an act categorized as a present or past duty of the said employee or the officer performed for the employer. Besides this non-exclusive license, a legal entity is required to execute an assignment agreement to acquire the rights in the designs created by its employee, consultant, shareholder, director or supplier.
Unless a design falls under the category of non-exclusive license for "work for hire" automatically granted to an employer (see above), any provision in any agreement, employment regulation or any other stipulation providing in advance that the right to obtain a design right, or that the design rights for any design made by an employee shall vest in the employer, or that an exclusive license for the said design shall be granted to the employer, shall be null and void.
Besides the above, there is no specific requirement in the laws for a design assignment agreement to be valid.
Under the Design Act, an employee or an officer is entitled to receive reasonable value where he assigns the design right or grants an exclusive license to the employer in accordance to an agreement, employment regulation or any other stipulation. The payment of value shall not be considered unreasonable in light of circumstances where a negotiation between the employer and the employee or the officer took place in order to set, among others, standards for the determination of the said value and their disclosure, and the opinions of the employee regarding the calculation of the amount of the value received and any other relevant circumstances.
There is no moral right provided by the Design Act or the UCPA. If a design is protected under the Copyright Act, the designer shall obtain moral rights, which cannot be transferred. As to the validity of a waiver of his/her moral rights, there is still ongoing discussion since the Copyright Act does not refer to it.
Registered design protection lasts 20 years (15 years for an application filed before 31 March 2007) without the possibility of renewal.
Under the UCPA, if the design is considered as an indication of goods or services and is well-known or famous among consumers, there is no provision that limits the term of the protection of the said design. As to the design that is not well-known or famous, the protection lasts 3 years since the date the goods were first sold in Japan.
If a design can be protected under the Copyright Act the design protection lasts for 50 years following the death of the author.
Actual copying is not always necessary to establish infringement.
Under the Design Act, a holder of a design right can exercise its exclusive right to manufacture or sell an article that is identical or similar to the registered design. According to Article 24-2 of the Design Act, whether a registered design is identical with or similar to another design shall be determined based upon the aesthetic impression created by the designs through the eye of their consumers.
Under the Unfair Competition Prevention Act (UPCA), it is prohibited to assign, lease, display for the purpose of assignment or leasing, or trade in goods that imitate the configuration of another person's goods within 3 years of the date the goods were first sold in Japan (see 3.2 above). The term "imitate" is defined as "the act of creating goods of practically identical configuration to that of another person's goods, based on the configuration of said goods". In addition, if a design is considered as an indication of goods or services and is well-known or famous among consumers, an identical or similar design will constitute infringement.
A design is enforceable against a trade mark, a registered design, patent, domain name and trade name if these are infringing the design according to the Design Act, the UCPA or the Copyright Act.
However, the Design Act provides that one cannot enforce its registered design where that registered design, or a design similar to that registered design, is similar or conflicts with another person's prior right with a previous filing date (that is, registered design, patented invention or registered utility model, trade mark right, or copyright).
In general, it must be noted that rarely do trade marks, patents, domain names and trade names fulfil criteria for designs (see definition above at 3.2), and thus would not be held identical or similar to the allegedly infringed design under the Design Act. The same applies under the UCPA or the Copyright Act.
A design can be enforced against its unauthorized use in social media if such use falls under one of the categories of infringement under the Design Act, the UCPA or the Copyright Act but is determined on a case-by-case basis.
A design can be enforced against its unauthorized use in comparative advertising if such use falls under one of the categories of infringement under the Design Act, the UCPA or the Copyright Act, but again, this is determined on a case-by-case basis.
A design can be enforced against its unauthorized use in parody if such use falls under one of the categories of infringement under the Design Act, the UCPA or the Copyright Act, but this is determined on case-by-case basis.
There is no "repair clause" in Japan. The defenses that are available to an alleged infringer under the Design Act are general ones, such as:
In general, the design owner cannot enforce his/her design right where his/ her conduct is deemed as abuse of right under the Civil Code.
Under the UCPA, there is a 3-year limitation after the date the goods were first sold in Japan for bringing an infringement action (see 3.2 above).
In addition, the right to demand compensation for damages for design infringement lapses by prescription if not exercised: within three years from the time when the right holder became aware of such damages and of the identity of the person who caused it; or within 20 years from the act of infringement.
It is possible to claim both design infringement and copyright infringement and bring parallel copyright proceedings and/or unfair competition proceedings. A design holder can bring these proceedings separately; however, these proceedings will be jointly conducted in the end.
There are no legislative provisions on product placement in Japan. It is permitted and quite common, sometimes as express reference to a trade mark and other times as a "parody trade mark".
The use of "subliminal techniques" in broadcasting is prohibited in general in Japan, although there is no specific regulation regarding surreptitious advertising or product placement.
There are several self-regulation industry bodies which restrict advertising of certain products due to their nature and in order to protect minors. For example, the tobacco industry's self-regulating body the Tobacco Institute of Japan, has implemented rules for its members prohibiting the advertising of tobacco products on television, radio, in cinemas and on internet websites. The self-regulating association of alcohol manufacturers has published internal rules to regulate the advertising activities of member companies, for example, advertising of alcohol products must state clearly that minors are not permitted to drink such products, and advertising of alcohol products cannot be shown during programs targeted at minors.
Assuming there is an express agreement regulating the product placement, the damaged party may sue the non-compliant party for breach of contract and IP rights infringement in order to obtain injunction order and/or damage remedies.
Japanese law does not provide expressly for a right of publicity or right of privacy. It must be noted that Article 13 of the Constitution of Japan provides for the right to "life, liberty, and the pursuit of happiness" and for the right for people to be "respected as individuals".
According to case law, corporations or legal entities may have standing to sue for defamation or libel (Supreme Court of Japan, 28 January 1964). On the other hand, there is no case that recognizes the right of publicity for corporations or legal entities. This might be because economic rights of corporations or legal entities can be protected by other specific IP acts such as the Trade Mark Act or the UCPA, and there is no necessity for corporations or legal entities to claim protection for the right of publicity.
It is generally possible, under freedom of contract principles, to include specific clauses in agreements aimed at protecting the corporate image/ reputation of one of the parties.
Including clauses prohibiting sale of products to re-sellers whose image is below a certain defined standard is common in a selective distribution contract, and can be included in a "right of publicity" agreement provided it does not contravene provisions of the Act on Prohibition of Private Monopolization and Maintenance of Fair Trade (Antimonopoly Act).
Equally, including clauses prohibiting sale below a certain price or outside of specific time periods buying non original - but otherwise legitimate - spare parts and components is possible provided it does not constitute an infringement of the Antimonopoly Act.
Article 420-1 of the Civil Code of Japan provides that the parties may agree on the amount of the liquidated damages with respect to the failure to perform the obligation which can apply in principle to breach of publicity rights. This article provides a firm basis to uphold contractual penalties and courts will always apply it. However, if the claiming party has contributed to part of the loss suffered, the principle of contributory negligence will work to reduce the amount of recoverable damages to the claimant (Komuro v. Sugiyama Kensetsu K.K., 172 Saibanshû minji 379 (Sup. Ct., 21 April 1994)). In addition, under the Labor Standards Act, employers are not allowed to include clauses in employment contracts which predetermine either a sum payable to the employer for breach of contract or an amount of compensation payable for damages.
The right of publicity is recognized by judicial precedent only.
There is no statutory source and it is recognized through judicial precedents which refer to the Constitution, the Civil Code, the Copyright Act, or a combination of the three.
To own the right of publicity persons must be of some distinction or a celebrity, such as actors, performers, singers or sportspersons. Protection is granted to both Japanese and foreign individuals. It is not necessary for individuals to make a commercial use of their identity. It is worth noting that the Nagoya District Court (19 January 2000) recognized such protection for racehorses' names until it was dismissed by the Supreme Court (13 February 2004), which held that only natural persons can enjoy a right of publicity and damages for its infringement.
Japanese law does not provide for protection of right of publicity to extend after the individual's death, although post-mortem rights have been under discussion.
Although there are no judicial precedents officially recognizing post-mortem rights, in practice, successors of the deceased individual often require prior approval and payment of royalties to use that individual's name or image, and have indeed obtained and been paid by publishers or television production companies.
The Supreme Court recognized publicity rights ("Pink Lady" Judgment, 2 February, 2012) as originating from personal rights which are, in principle, not transferrable. In practice, many celebrities enter into management agreements and transfer their rights to agents or management companies. The IP High Court partially admitted transferability of publicity rights regarding a baseball team and its players (Heisei 18(ne) No.10072).
An individual's right of publicity can be licensed for advertising, distribution of merchandising products, derived goods or productions (films, animations, CD's, and so on). There is no restriction on whether it must be exclusive.
There are no requirements that an agreement for the assignment/license of the right of publicity must meet for validity. It is common practice to include the following clauses among others:
When drafting an assignment/license for the right of publicity, since this right is not defined by law (in particular the existence of post-mortem rights) the agreement should include a clause regarding successors/heirs and who has standing to sue for infringement (assignor and/or licensee). Japanese courts tend to reject the standing to sue of entertainment companies.
Given the particular nature of publicity rights, whenever the licensor's image, goodwill or name is objectionable, namely defamatory, obscene or unlawful and/or his reputation damaged a licensor can withdraw the consent to its use. In order to avoid this issue, a clause requiring prior written approval for usage should be included and possibility to withdraw in case of breach.
Following the death of the licensor, since post-mortem rights do not currently exist in Japan, in principle the contract becomes unenforceable. However, the agreement may provide expressly whether the agreement binds successors.
After the death of the assignor there is no set length of protection or postmortem rights so the rights are likely to lapse.
In the event the heirs have an independent right over the deceased individual's name, image, likeness, or other unequivocal aspects of his/her identity the licensing agreement should expressly provide for how to deal with this situation. If there is no express prior clause, the licensee or assignee may be left without any rights.
Both the individual and the licensee may have the right to sue for infringement depending on the situation. Historically, courts did not easily recognize the licensee's right to sue although there is a need to conceal privacy information from the infringer. In practice, a lawsuit will be filed by both in case the court rejects the standing of the licensee.
Since publicity rights aim to protect financial value, it is infringed where use is made without the right-holder approval, in cases where the image is used for promoting a product to attract audience or customers (see the Pink Lady case).
It is not strictly necessary to prove that the individual's name, image, likeness, or other unequivocal aspects of one's identity have a commercial value to obtain an injunction or other remedies for the unauthorized use. However, case law is in favor of this requirement. For example, in the Doi Bansu lawsuit, the Yokohama District Court (Hensei 1 (wa) No.581) ruled that a poet did not have any right of publicity as poets do not control their name like a celebrity (who uses his or her name in order to attract an audience).
It is common to use documents and affidavits to establish the commercial value. To complete such documents, sometimes witnesses are used.
The issue of whether the use of a prominent person's name or likeness is actionable should be determined by weighing the interest in exclusively controlling one's name or likeness against the guarantee of freedom of expression and the burden that prominent members of society may reasonably be expected to bear.
Use in news report or literary works is guaranteed by freedom of expression. The alleged infringer must demonstrate lack of intent to "free ride" on the individual's promotional value.
Limited use of photos and names is acceptable with reasonable purpose and extent. The court will look at the use and balance various factors, such as ratio of the photos to that of the article, size of the photos, contents of article (Tokyo High Court, 27 August 2009) but also the manner in which the photographs are obtained, the nature of the individuals involved and the extent of their fame or notoriety, and the manner in which an individual uses and manages his or her own name and image.