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02 May 2016
On November 10 2015 the IP High Court upheld a Tokyo District Court decision that denied protection of the plaintiff's catchphrases under the Copyright Law (48/1970, as amended), Unfair Competition Prevention Law (47/1993, as amended) and Civil Code (89/1896, as amended). The court ruled that the plaintiff's catchphrases were "ordinary and common" expressions and thus not eligible for copyright protection; further, they could not be protected as indications of goods under the Unfair Competition Prevention Law or under general tort law pursuant to the Civil Code.
According to Article 2(1)(1) of the Copyright Law, 'work' refers to a production in which thoughts or sentiments are creatively expressed and that falls within the literary, academic, artistic or musical domain.
Article 21 of the Copyright Law provides that the author of a work has the exclusive right to reproduce the work.
Article 23 of the Copyright Law provides that the author of a work has the exclusive right to:
Article 112(1) of the Copyright Law provides that authors, copyright owners, owners of print rights and performers or owners of neighbouring rights may claim against a person that infringes or is likely to infringe their moral rights, copyright, print rights or neighbouring rights for the cessation or prevention of such infringement.
Article 2(1)(1) of the Unfair Competition Prevention Law provides that the following acts constitute unfair competition practices:
Article 3(1) of the Unfair Competition Prevention Law provides that a person whose business interests have been damaged or are likely to be damaged through unfair competition may request the person that is damaging or likely to damage such business interests to discontinue or refrain from such damage.
Article 709 of the Civil Code provides that any person that has intentionally or negligently infringed another person's rights or legally protected interests will be liable to pay compensation for any resulting damages.
The plaintiff, which had been using the relevant catchphrases to promote its English language school, filed suit against the defendant, which had also been operating an English language school and using catchphrases similar to those of the plaintiff. The plaintiff alleged that use of the defendant's catchphrases constituted copyright infringement of or unfair competition against the plaintiff's catchphrases under Articles 21 and 23 of the Copyright Law or Article 2(1)(1) of the Unfair Competition Prevention Law. The plaintiff sought an injunction against the defendant's catchphrases under Article 112(1) of the Copyright Law and Article 3(1) of the Unfair Competition Prevention Law. The plaintiff also claimed Y600,000 in damages, together with a default payment at the rate of 5% a year (as prescribed under the Civil Code) from September 2 2014 (the date following the submission date of the complaint) until full payment.
On March 20 2015 the Tokyo District Court dismissed the plaintiff's claims, finding that the defendant had committed no acts of copyright infringement or unfair competition, nor any general tort.
The defendant's catchphrases were as follows:
The plaintiff's catchphrases were as follows:
The Tokyo District Court noted that the case involved five questions:
To be eligible for copyright protection, it is necessary that "thoughts or sentiments are creatively expressed" (Article 2(1) of the Copyright Law). To be "creatively expressed", the work must be an expression of the author's individuality. The court held that an expression is not creatively expressed if it is very short or an "ordinary and common" formulation, such that an alternative expression is impossible; in such cases, the expression would not adequately express the author's individuality.
The plaintiff's first catchphrase was "Learn English simply through your ears, like you are listening to music, and then you will enjoy English more and more". The court considered this an ordinary and common expression on the grounds that the thoughts and sentiments of the author were not creatively expressed.
The plaintiff's second and third catchphrases were "One day English jumped out of my mouth suddenly!" and "One day English jumped out of my mouth suddenly". The court held that these were both very short sentences and ordinary and common formulations; as such, they did not creatively express the thoughts and sentiments of the author.
The court accordingly ruled that the plaintiff's catchphrases could not be protected by copyright. The plaintiff's copyright-related claim was therefore dismissed.
The court noted that catchphrases are usually sentences that are used to promote goods or services and are perceived as such by customers; they are not usually perceived as having the function of distinguishing the goods or indicating their origin. In order for a catchphrase to be recognised as an indication of goods, it must therefore distinguish the relevant goods or indicate their origin. Such a catchphrase must be widely recognised among consumers as indicating a certain person's business on account of its long-time use in promotions and advertising.
In light of the above considerations, the court held that the plaintiff's catchphrases did not distinguish the relevant goods or indicate their origin; consequently, they were not widely recognised among consumers as indications of the plaintiff's business.
As the plaintiff's catchphrases were not recognised as indications of goods, the court considered it unnecessary to address the remaining issues and thus dismissed the plaintiff's claim under the Unfair Competition Prevention Law.
General tortious acts
The court noted that where use of a work does not constitute copyright infringement or an act of unfair competition, the right to exclusive use of the work is generally not legally protected. Therefore, unless another legally protected interest has been infringed – other than that provided for copyright and well-known indications of goods under the Copyright Law and Unfair Competition Prevention Law, respectively – no tortious act can be recognised by the courts. The court held that use of the defendant's catchphrases did not constitute infringement of a legally protected interest other than those covered by the Copyright Law and Unfair Competition Prevention Law and accordingly dismissed the plaintiff's claim based on general tortious acts.
In light of the above findings, the court considered it evident that there were absolutely no grounds for the plaintiff's claims. The plaintiff appealed the decision to the IP High Court.
At the IP High Court, the plaintiff made two additional claims:
Despite the additional claims and evidence submitted by the plaintiff, on November 10 2015 the court upheld the Tokyo District Court decision and dismissed the plaintiff's appeal.
During the proceedings, the plaintiff contended that the element of creativity is dependent not on the length of the expression, but rather on whether the author's individuality is expressed in any way; even a short expression could accomplish this. As such, the plaintiff contended that its second catchphrase should be eligible for copyright protection.
In response to this claim, the court held that – in terms of copyright protection for sentences used for promotional and advertising purposes, such as catchphrases – the choice of alternative expressions is limited and the scope of expression of individuality is thus narrow. As such, in many cases catchphrases will be deemed to lack a sufficient degree of creativity.
The court held that in expressing the effects of learning – as the plaintiff provided educational services in this case – the choice of alternative expressions is very limited. As such, the wording of the plaintiff's second catchphrase was considered ordinary and common. The court therefore upheld the Tokyo District Court's finding that the catchphrase was not eligible for copyright protection, found it unnecessary to consider the similarity and origin of the defendant's third catchphrase and accordingly dismissed all of the plaintiff's claims.
The plaintiff in this case put forth three causes of action against the defendant's allegedly unfair use of its catchphrases, based on copyright infringement, unfair competition and general tort law. The Tokyo District Court and the IP High Court both refused to accept these claims.
With the exception of a May 30 2001 Tokyo District Court decision, which admitted (in theory) the copyright eligibility of catchphrases used to promote a good driving code, there appear to be no other cases in which a court has accepted a claim of copyright infringement with respect to catchphrases. In general, it is difficult to successfully claim infringement of copyright or other intellectual property with regard to catchphrases, as they are usually short, ordinary and common. The case at hand effectively illustrates this difficulty.
On March 24 2016 it was reported that the Japan Patent Office (JPO) will change its practices relating to the treatment of catchphrases under the Trademark Law as of April 1 2016. Previously, the JPO's stance was that catchphrases could not in principle be registered as trademarks, as they are used to promote individual goods, rather than to protect commercial images. According to the new JPO Trademark Examination Standard, catchphrases can now be afforded trademark protection if certain requirements are met, such as the following:
These requirements are too abstract at present and it remains to be seen how they will be implemented in practice. Nevertheless, the treatment of catchphrases under the Trademark Law, the Copyright Law and other IP laws will be substantially different going forward.
For further information on this topic please contact Eiichi Fukushima at Nishimura & Asahi by telephone (+81 3 6250 6200) or email (firstname.lastname@example.org). The Nishimura & Asahi website can be accessed at www.jurists.co.jp.
(1) The term 'indication of goods' refers to a person's name, trade name, trademark, other mark, goods container or packaging which relates to that person's business (or any other related indication of goods or business) and which distinguishes the relevant goods from those of others or indicates the origin of the goods.
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