JAPAN BIZLAW LITE 4 GAIJIN
INTELLECTUAL PROPERTY
Varieties of Intellectual Property Rights
Protection of Intellectual Property Other Than Intellectual Property Rights
Actions Restricted by the Law for the Prevention of Unfair Competition.
Product Labels/Manifestations Which Resembled those of Products or Services of Others
Copying the Shapes/Forms of the Products of Others
Unfair Acquisition, Usage or Disclosure of Business Secrets
Protection of Secrets Based on Contract
PATENTS
The Meaning of Patent
Patenting of Software and Business Methods
Infringing the Patents of Other Parties
Obligation to Pay Huge Compensatory Damages
Penalties for Violating the Patents of Others
COPYRIGHT
INFRINGEMENTS ON COPYRIGHT
Illegal Copying of Computer Software
Copying of Newspaper Articles
THE SCOPE OF COPYRIGHTED MATERIA
Creative Presentation of Ideas or Feelings
The Expanding Scope of Copyrighted Matters
SUBSTANCE OF COPYRIGHTS
Personal Rights of the Copyright Party
Copyright Assets
List of Copyright Assets:
Neighboring Rights of Copyright
Image Rights and Privacy Rights
Copyright Assets During the Age of the Internet
TRADEMARK RIGHTS
Effectiveness of Trademarks
Requirements for Registering a Trademark
Parallel Imports & Trademark Infringements
DESIGN RIGHTS
The Meaning of Design Rights
Infringement of Design Rights
UTILITY DESIGN MODEL. Patent Lite or Patent Express
Differences Between Utility Design Model and Patents
Intellectual property runs a wide range, from patents, trademarks, copyrights, etc.
As Japan's economy has been pressed to the wall in the 1990s, rather a major shock actually, from a period in the late 1980s when all thought that Japan was unstoppable to the emphasis now shifting to China and a belief that on economics alone no others can survive. Thus Japan is giving much greater attention to using intellectual property protection legislation to strengthen Japan's economic bastion. Corporations are beefing up their intellectual property legal capabilities.
Thus during the ten years from 1991 to 2001 intellectual property litigation in Japan doubled. There has also been a large increase in companies sending warning letters to other companies, claiming intellectual property rights violations.
Varieties of Intellectual Property Rights
Intellectual Property Rights are legal rights given to protect intellectual creativity such as advanced discoveries, plans related to the structure or form of products, the design of products, product or service marks (lettering, designs, bodily structure, an ideogram) cultural products (culture, academic, art, music) and even semiconductor circuitry design.
As these subjects do not really have a physical form, they are often also called intangible property.
Take for example a mobile telephone, the modern epimity of a high value-added product in a very small package. The little device, is brimming with intellectual property rights. Patents related to remarkable discoveries such as screen image processing and communications technology, utility model rights related to form or structure ideas such as an easy to use keypad, design rights related to distinctive designs, copyright on the contents used in the phones, trademarkds on the brand, etc. Chock-a-block with legal protections.
If a person holds the intellectual property rights, the rights hold can seek injunctions against its unauthorized use, and demand monetary compensation. The other side of the coin is that it can license their rights to other parties to use. These rights can be sold or even posted as security, meaning, in short, that one can derive economic benefit. In other words, it becomes a two-edged sword in becoming a weapon for economic benefit-- one defensive and the other utilitarian.
Protection of Intellectual Property Other Than Intellectual Property Rights
In addition to the monopolistic rights provided for intellectual property rights, there is the Law for the Prevention of Unfair Competition, which regulates infringing activities such as the making of counterfeit goods, the leaking of trade secrets, and the surreptitious use of famous brands. When the protections of the intellectual property laws and the Law for the Prevention of Unfair Competition are not adequate to protect business secrets, there are many cases where a contract is made directly with the user repleat with many protections. Such agreements would have restrictive measures protecting secrets by prohibiting unauthorized use of information or using it beyond licensed terms.
On the other hand, there is the Antimonopoly Law as a law which restricts the use of intellectual property. It restricts the use of intellectual property rights from having an adverse impact on fair competition.
In July 2002, the government came up with a new plan for a framework for a strategy on intellectual property, from which the main new idea was to create a new "industrial property right." One can never tell on these reports in Japan, but there is a reasonable possibility that it will be enacted.
Actions Restricted by the Law for the Prevention of Unfair Competition.
So what kind of activities are prohibited by the Law for the Prevention of Unfair Competition with respect to intellectual property rights? The most useful is the provisions restricting the manufacture or sale of products which mimic or look like the products of others. It also includes provisiones which restrict the unfair acquisition, usage or disclosure of business secrets.
One of its main differences of the Law for the Prevention of Unfair Competition compared to the intellectual property rights is that it is possible to seek the measures to stop unfair competitive activities without having registered the rights with the Patent Agency, so long as certain other requirements are met.
There is also a major difference in obtaining a cease and desist order or injunction. Activities violating the Law for the Prevention of Unfair Competition are those vioating the rights of others. and although demands for compensation for damages can be made based on "unlawful acts" of Article 709 of the Civil Code, in principle it is not possible to seek an injunction against such unlawful acts. Thus the Law for Prevention of Unfair Competition is a means for stopping acts of unfair competition. Of course, it is also possible to seek compensatory damages.
While most people when understanding that many of the prohibitions under the Law for the Prevention of Unfair Competition in many ways resemble stopping a kind of corporate fraud, would think that large reputable firms would hardly be likely to be engaged in such activities, they would be wrong. It has happened in a number of cases.
Product Labels/Manifestations Which Resembled those of Products or Services of Others
The utilization of product labels/manifestations which are the same as, or closely resemble the product labels/manifestations of others that are well known in the market, or based on the utilization of such products, causing confusion for the business or products of others.
Such a case could be classified as under the Prevention of Unfair Competition Law's "Actions Causing Confusion With Well Known Labels/Manifestations"
So how do you determine if there is resemblance to well known labels/manifestations? There have been court cases where the court found such a resemblance to the labels/manifestations of Manpower Japan, Matsushita Electric and Hankyu Railways.
In addition, where someone engages in such activities as surreptiously using another individual's signature brand to gather customers, even if it is with respect to a completely different line of products, and thus not likely cause confusion, it is still classified as "Signature Labels/Manifestations Desecration Acts" under the Prevention of Unfair Competition Law. Cases where these problems have arisen have involved such famous companies as Vogue magazine being used for belts and bags, Porsche for sunglasses and Sony for safe deposit box business.
Copying the Shapes/Forms of the Products of Others
The copying of the shapes/forms of the products of others is a category covered by the Prevention of Unfair Competition Law. The manufacture, sales, or import/export of products copying the forms or forms of the products of others is restricted under the law. There is a 3 year protection period during which such copying activity may not be conducted.
For example, the Bandai Corporation in 1997 launched an incredibly successful product called "Tamagochi", and the company filed a law suit seeking an injunction against a copy product called "New Tamagochi) as well as seeking compensatory damages. In 1998 the Tokyo District Court not only issued an injunction stopping the importation and sale of the copies, it also awarded 20 million yen in compensatory damages.
Separately from the protection offered by the Prevention of Unfair Competition Law, shapes/forms may also possibly to obtain protected under the intellectual property laws such as Patent Law, the Utility Model Act, and the Design Rights Law.
Unfair Acquisition, Usage or Disclosure of Business Secrets
This would fall under the "Unfair Activities Related to Business Secrets" of the Prevention of Unfair Competition Law.
With the spread of computer and digital technologies such as the internet and e-mail the risk of leaking business secrets is increasing.
In the handling of a company's important technological information it is possible to think of two kinds of possibilities. One choice would be to acquire exclusive monopolistic usage rights for a certain period of time, but making it public in a patent application. The other choice would be, while understanding the risk of another company filing and receiving a patent, protecting the business secret through severe controls. The latter choice is that used by CocaCola and its manufacturing knowhow.
When one wants business secret to receive the benefit of the protection of the law, one must give consideration to the terms of application of the Prevention of Unfair Competition Law. That law has three conditions in this kind of situation. (1) it has been controlled by the company as a secret, (2) the information is not known publicly, and (3) it is a secret in business or in technology. If all three of these conditions are met then there is special protection available under this law and it is possible to seek an injunction against the unfair acquisition, usage or disclosure of these secrets by others, as well as seeking compensatory damages.
In 2003 criminal sanctions also came into effect for parties that have unfairly acquired, used or disclosed such secrets based on the Prevention of Unfair Competition Law.
Protection of Secrets Based on Contract
As a supplementary protection of secrets it is advisable to make a contract to protect secrets or maintain secrecy. Thus one could conclude a contract with parties to whom information is disclosed prohibiting unauthorized disclosure, or used for unauthorized purposes or violators can be sued for compensatory damages. Even then administration of such contracts is not easy. Must one always disclose what is secret and what is not as well as maintaining a list of disclosed information?
Some recommend that, for example, critical parties in R&D who are approaching retirement should sign such secrecy protection contracts or nondisclosure agreements and a list be made of the business secret information obtained during his employment.
PATENTS
As mentioned previously, Japan is giving much higher priority to protection of its intellectual property rights particularly in light of its economic stagnation during the 1990s, often called the lost decade. Many may well recall that by the late 1980s most thought Japan was destined to rule the world economically and looked unstoppable (many people should remember that in light of the "China Boom" and the same way of thinking--even though the basic infrastructure, physically, legally and demographically is even worse in China). Many Japanese have thought that much of the US economic recovery that actually started during the 1980s was due to the aggressive US protection of its intellectual property laws. One of the most notorious cases during that time was the Hitachi-IBM industrial espionage case where Hitachi workers were caught red-handed stealing IBM's secrets. IBM drug Hitachi over the coals, the Japanese were outraged at the spectacle. Now as the Japanese economy struggles with Chinese competition Japan has decided to follow the US model and protect their advanced technologies.
The Meaning of Patent.
The patent system, based on the Patent Law is where the government grants an inventor a patent right. If a patent is given for an invention, the patent rights holder will enjoy monopolistic rights on the usage for the invention for a period of 20 years from the date of the patent application. The exercise of the monopoly of the patent is threefold in nature: (1) the usage of production methods included the patented invention, (2) the production, usage, transfer, rental and import of goods including the patented invention and (3) the usage, transfer, rental and import of products produced based in such production methods. In addition, based on the 2002 amendment to the Patent Law, the exercise of the patents includes the transmission over a network of computer software that is a patented invention.
The "monopoly" of exercise of the invention of a rights holder means that they can seek an injunction against unauthorized use or demand compensatory damages for such usage. It is possible to receive economic advantages as being able to sell the rights, permitting others to use it (licensing) or providing it for security for financing. In other words, the rights holder has every aspect of rights. The validity of the patent right is such that it can be used against those who are exercising usage without knowing of the existence of the patents.
What should be paid attention to here is that once the patent has been obtained it does not mean that one is necessarily free to use that invention. Many patents are incremental inventions. and there are many cases where the invention is one part only and an indispensable part may be subject to the patent of another party. Without that party's consent for use, your patented invention may be useless.
Of course there is also the other problem of the international system. Japanese patent law officially only applies within the borders of Japan. In general, if one wants one's invention to enjoy the patent protections of other countries, one must apply for a patent in that country.
The Meaning of Patent.
The Japanese Patent Law has as its objective is "contributing to the development of industry through the encouragement of inventions based on the protection of inventions and devising their usages." As this is a means of industrial promotion policy, inventions which are the point of these rights is limited to "advanced creative technological innovations using the laws of nature." Accordingly, calculation methods, educational methods, sales methods and drawing methods not based on the laws of nature can not qualify as inventions eligible for patent.
On top of that, technologies already known in the public, or lacking in newness, advance or industrial utilization in invention, in technology, testing and medical treatment that competitors could easily predict, would not be an invention eligible for patent.
Thus in Japan prior to the filing of the patent petition, it is important to have all the parties aware of the invention have non-disclosure and maintenance of secrecy agreements. If the information gets out into the public, one loses the argument thst it is new and unknown to the public.
Patenting of Software and Business Methods.
Computer software and business methods are difficult to classify as meeting the "using the laws of nature" when seeking a patent. As the modern world has become more electronic and digitized in 2002 the Patent Law was amended such that it became clear in the statute that computer software was eligible for patent.
In addition, business methods using computers or networks were also made eligible for patenting. However, those that have no connection to the laws of science and are mere rules devised by man, as in e-mail, are not eligible for patent protection.
Japan Grants Patents to the First Petitioner While the USA Gives it to the First Discover.
The procedure for obtaining a patent in Japan is as follows:
---File the petition for patent
---Make a request for examination of the petition
---Examination by an examiner
---Patent determination
---Payment of patent fee
---Patent right is born
---Decision for registration
---Publication in the Patent Agency's Official Gazette
If the determination is not to grant the patent, an opinion paper can be filed and it is possible to ask for a hearing on the rejected patent.
Whether the conditions have been met for patenting an invention which has been petitioned for, the examination is based on the timing of the filing of the petition. The first party filing for the invention wins over others petitioning for the same invention. The period of patent protection is for 20 years, and it is possible to seek an additional 5 years of rmedicines and agricultural chemicals. This system is actually the one used in most other foreign countries. The major exception being however, the biggest of them all, the United States of America where the principle is that first invetor wins, regardless of the timing of the filing of the petition.
Infringing the Patents of Other Parties
Obligation to Pay Huge Compensatory Damages
As mentioned above many Japanese remember the 1980s as the time when the Americans used intellectual property laws, such as patent laws to defend their economic position. Many of those cases were against Japanese companies. Corning sued Sumitomo Denko, Texas Instruments sued Japanese semiconductor makes, Honeywell sued Minolta and Genetech sued Toyo Spinning, etc etc. In these efforts they collected hundreds of millions of dollars in damages. Not only in such cases are huge damages paid, they must stop the sale and production of violating products unless a license is obtained. It can obviously be fatal to the business.
Penalties for Violating the Patents of Others
Using a patented invention without a license is a patent infringement. As to whether there is an infringement, it depends on whether it was within the technological scope of the patented invention. The validity of a patent is defined by the scope of the technology of the patented invention. The scope of the technology is written in the claim which is appended to the petition for the patent.
If an infringment of a patent is found the rights holder can sue for an injunction, compensatory damages, and seek measures to restore confidence. When a patent rights holder seeks compensatory damages against the infringer, based on the principles of the Civil Code, the rights holder must prove the intent or negligence of the infringer. However, as patents is a system presuming that an invention has now been publicly announced, the Patent Law establishes a presumption on the part of the infringer that he was negligent making it easy for the rights holder to win. Moreover, if the violation is particularly egregious, or massive, the violator can even be imprisoned for 5 years or fined up to 5 million yen.
COPYRIGHT
Copyright is a system established with the objective of contributing to the development of culture by devising mutual benefits for the creator and the use of society.
Although copyright initially concentrated on printed and published subject matter, now the scope of copyright has greatly expanded. Compared to other forms of intellectual property, copyright is a subject one is more likely to run into in daily life.
INFRINGEMENTS ON COPYRIGHT
Illegal Copying of Computer Software
One of the biggest problems of copyright infringement in the modern world is the copying of computer software. Computer software is protected by copyright law in Japan and other than making a backup copy, copying computer software is a violation of copyright law. In addition to being able to seek an injunction against the infringement, a civil suit is possible for compensatory damages. Criminal law penalties of up to 3 years imprisonment or 3 million yen in fines can be inflicted.
In fact, in May 2001 the Tokyo District Court found that a preparatory school for attorneys (?!?!?!) had been infringing copyrights on computer software and ordered it to pay damages of 80 million yen. Even though the school had bought appropriate software after receiving warning letters from the software firms, the court said compensation was still due for the initial violation.
Copying of Newspaper Articles
Newspaper and magazine articles and photos are protected by copyright. As it is protected by copyright, it is not permissible to use such material without the owners consent. There is one small exception however, for personal or home use or similar usages. That clearly does not include corporate or business usage.
Another exception is acts quoting part of the copyrighted material of another party in one's own work if they are within the scope of fair use, as in reporting, reviews, research and other appropriate objectives for quoting. In such cases, the permission of the rights holder is not required.
In addition to the copyright holders ability to seek an injunction or compensatory damages from an infringing party, there are a number of economic rights, including the right to license the rights, sell the rights or use it as collateral or security interests.
It is a matter of course that the copyright holder can also demand that copying or amending of his copyrighted interest be stopped, even if the infringer is not aware of the copyright.
In determining whether there has been a violation of copyright critical is whether there is the fact of touching on another party's copyrighted material and the similarity of the presentation. If there has been no touching on another party's copyrights material even if there is a similarity in presentation by chance there is no violation
THE SCOPE OF COPYRIGHTED MATERIALS.
Creative Presentation of Ideas or Feelings
The Copyright Law defines copyrighted material as "something that is the creative expression of ideas or feelings and that fall within the scope of culture, academia, art or music."
Note that the important point is that it is human internal activity "ideas or feelings" that are created creatively. It is not necessary that it be artistic but expressions are almost identical no matter who made them, can not be recognized as creative. For another example, mere collections of data are also lacking in creativity. On the other hand, if there is some kind of labor or construct in the editing or usage then it may be possible to claim a copyright, at least with respect to that part. In addition, explanatory materials prepared making calculations of data may also have a separate copyright.
There is also the matter of secondary copyrights. New products produced based on processing another's creation, is nearly a daily activity in its frequency. If the new product produced based on processing another's idea is substantially the expression of the original material or keeps its special characteristis, then it is a secondary copyright material. In the copying or alteration of the secondary copyright material, the consent of the first, original copyright holder is required.
In Japanese copyright it is not required that there be an application or registration. The copyright appears the moment of the creation of the copyrighted material. The term of protection of the copyright is the life of the creator plus 50 years in the case of an individual, but only 50 years when the creator is a business or other organization.
The Expanding Scope of Copyrighted Matters
The concept of copyright started almost as soon as the Guttenberg press started printing all those Bibles. The legal concept in Japan first began in 1899 with Japan's first copyright law. At the same time Japan joined the Berne convention. In 1956 Japan also joined the international treaty on copyright. As of November 2003 Japan had nine subject matters that could be copyrighted:
1. Computer programs
2. Words
3. Music
4. Movies
5. Drawings
6. Photographs
7. Architecture
8. Dancing, pantomine
9. Art
On top of that, there are secondary copyrights, based on another copyright matter, a compilation of copyrighted matters and databases which have creativity in the selection and structuring of information.
SUBSTANCE OF COPYRIGHTS
Personal Rights of the Copyright Party
The Copyright Law divides up rights related to copyright into two groups. First is the copyright assets protecting the asset values of copyrighted matters and the personal rights of the copyrighted matters protecting the personal rights of the copyright party.
The personal rights of the copyright party is made up of the rights of publication (make public), the right of manifesting one's name, and the right of maintaining identity or oneness. These rights pertain personally to the copyright party. They can not transferred to other parties or succeeded to by heirs.
The right of publication is the right whether a copyrighted matter is to be published or publicly announced and it is a right decided by the copyright party.
The right of manifesting one's name is whether or not to manifest the name at the time of making public the copyrighted material, and it is a right of the copyright party to decide whether to use the real name or a pseudonym.
The right of maintaining identity or oneness, is the right of the copyright party to deny alterations to the copyrighted matter that he does not desire. Provided, however, where it is deemed inevitable in light of the quality, objective, or form of the copyrighted matter, even without the consent of the copyright party, there can be alterations within certain limits.
Copyright Assets
Copyright assets is the right that the copyright holder has exclusively to approve or refuse for the duplicatioon fo the copyrighted matters or other usage activities or formats otherwise set out by law. The copyright assets of the copyright party is limited to the actions of duplicating and revising the copyrighted material. Of course in the privacy of your home enjoying copyrighted material you bought in a store, such as a book or music, is not an infringement of copyright.
List of Copyright Assets:
Right of Transfer: Excepting in the case of pictures the right to provide to the public by the transfer of copies or the original product itself.
Right of Distribution: The right to distribute of copies of picture copyrighted matters.
Right of Exhibition: The right to exhibit to the public copyrighted works of art, or copyrighted unpublished photos.
Right of Oration: The right to make public orally a copyrighted material.
Right of Public Transmission: The right to transmit to the public copyrighted material
Right of Screening: The right of screening a copyrighted matter to the public
Right of Performance: The right to perform copyrighted material
Right to Copy or Publish: The right to physically duplicate a copyrighted material.
Neighboring Rights of Copyright
Under the Copyright Law there also exists neighboring rights, for performers, the manufacturers of records or CDs, broadcasters and those broadcasting over wired lines, that are rights other than those of the real creator, and are completely separate rights from the copyright itself.
For example in the case of the sale of a musical CD, in addition to songwriter, there is also the performer and the manufacturer of the CD. These people have such neighboring rights as sound recording rights, video recording rights, broadcasting rights, transmission rights, transfer rights, and rental rights. They have the right to receive royalties or secondary usage rights on these just as the songwriters have.
These rights bear rights for compensation for performances such as long time playing in the office place or meeting halls, etc.
These neigboring rights also arise from the time of the act creating them and then last for 50 years.
Image Rights and Privacy Rights
There is no clear legal basis in Japanese legislation for these rights. These are rights that have arisen from a series of court decisions.
Image rights is the right to refuse the exposure of a person's image to the eyes of others against the desires of that person. When one person filed a court case for compensatory damages against an advertiser against an entry of a product ad in a newspaper with with a large picture of his face, the court agreed, recognizing an infringement against his image rights. When the party can be identified, taking a picture without their consent and using the image is not permitted.
In contrast to this, there is also privacy rights. These are rights whereby a famous person is able to restrict the commercial use of one's name or image. With such actions as using a famous person's photo without authorization in a handout, etc. would be a typical violation of such privacy rights. In such cases it is possible to seek an injunction against such infringement and demand compensatory damages.
This is completely separate from the copyright for the photo itself. Having received the consent of the party photographed, reproducing the photo without the consent of the photographer could be an infringement of copyright.
Copyright Assets During the Age of the Internet
During the age of the internet it has also become necessary to pay attention to such copyright issues as the right of transmission. In 1997 Japan revised its Copyright Law and added internet copyright protection in line with its acceptance of the World Intellectual Property Organization (WIPO). This public transmission right is the right to transmit (copy electronically) copyrighted content using the internet, etc. In this public transmission right, is included the right of transmittability, in other words, the right to consent or to refuse a transmittable format at a file exchange site, etc. One example would be to buy some software and put it on a server and use it on a network by a number of computers. This would ordinarily be a copying infringement or violation of the public transmission right, unless it is permitted by the contract.
Another problem would be to pull in the content of another website's page, information or images within a frame of your own website. This is likley to create confusion with the orginal creator and exceed the planned usage of that creator. Without the consent of the user, that is likely to the copyright holders rights to copy or alteration or public transmission rights.
TRADEMARK RIGHTS
Trademarks, sometimes also referred to as brands, is a symbol whether by letters, drawing, marks or concrete form, of where (the company, usually) the product or service originated.
This can be in a number of formats. It can be a mark or the letters of a company name, a standardized drawing or picture, or a combination thereof.
It is not the product itself. It is usually used on the products package or printed advertisements, indicating from where it was sourced. It can even include the container, the format, the coloring, the printed design, the feel or the materials. Famous department stores, for example have their unique wrapping paper.
Effectiveness of Trademarks
The trademark in Japan is valid only when it is registered for a certain category of goods. Thus it is possible to have the same trademark for different categories of products, without problem. The registration is with the Patent Agency.
However, to use the same trademark, or a similar one, for the same category of goods would violate the trademark. The trademark rights holder would then be able to seek an injunction and compensatory damages. There is also a possiblity of criminal penalties of five years imprisonment and 5 million yen in fines. This is obviously taken quite seriously, so it is advisable that adequate trademark research be carried out before using one. Nevertheless, even if another party had registered a trademark before you, if you have been using it from before, and it is well known among users, you may continue to use it. It is still advisable to make due research and timely registration in order to avoid conflict. Another exception is that if even a party registers a trademark first, if they do not use it for 3 years without suitable reason, another party can file to have it cancelled.
Requirements for Registering a Trademark.
Trademark registrations are made with the Patent Agency. The first to file gets the rights. The rights arise from the moment the moment it registered. The trademark is valid for 10 years and can be renewed.
As much as possible the symbol of the trademark should have characteristics such that as much as possible it can be distinguished from the products of services of other companies. Similarly, if there is already the same or similar trademark for the same category of goods or services, your application will b denied.
There are two times when similarity becomes a problem. At the time of application and at the time of infringement.
There are three aspects that are looked at in determining similarity.There is similarity in external appearance. Here if the trademark is looked at externally, and the lettering, drawings and markings look similar. Secondly is similarity in impression. If two trademarks have similar meanings there could be a similarity in impression. Finally, there is similarity in name, if they have similarity in sound. Thus Sony and Somy may fall in this category. In reality even experts often disagree in this area and there is a great deal of litigation on these issues.
Parallel Imports & Trademark Infringements
Parallel Imports is where one company's trademarked products are imported from another country. The reason for this is that even the same company's products may differ in prices a great deal. This is particularly true for Japan. So a businessman buys the same products from a cheaper country. The problem is that a local company may have obtained a trademark license from a foreign company for exclusive trademark rights in Japan. There is great dispute on whether parallel imports would violate such licensed trademarks. Some courts have found that if the imported goods are true products, not counterfeit, there is probably no violation. There is some evidence however that if some changes are made in packaging, etc. it may be in violation.
DESIGN RIGHTS
The Meaning of Design Rights
A design is the form, shape, color or a combination of these of a good, in toto or in part, that causes a sense of beauty. In this case, a good is an object that can be transported. As such, real property can not qualify as well as intangibles. A design right can be obtained by attaching a drawing of the design to the application made to the Patent Agency. Then if the design meets the standards of industrial utility, newness and creativity it can be registered. The meaning of industrial utility means that it can be mass produced by industrial production methods, thus making handicrafts made by hand ineligible, although that could be eligible for copyright protection. The holder of a design right can seek an injunction against those who "use" the design without authorization, as well as seeking compensatory damages. On top of this there are economic benefits such as the ability to license it to others, sell it, or use it as collateral. Here, "use" the design means to manufacture, use, transfer, lend, or import products using the design. The right is valid even against those who are unaware of its existence. The term of protection of the design right is 15 years from the date of registration.
Infringement of Design Rights.
An infringement of a design right is the use of a design previously registered by another party, or of a similar design. The rights holder can seek an injunction stopping sales as well as demand compensatory damages. On top of that, in particularly egregious cases, criminal sanctions of up to 3 years in prison or 3 million yen in damages can also be imposed. The standard for determining whether a design right has been infringed is based on feelings of beauty and confusion, which, being highly subjective, even causes disputes among experts, similar to the situation for trademarks. Here, the beauty standard revolves in many ways around originality, while the confusion standard revolves around whether there is confusion among consumers. For the courts it appears that the element of confusion among consumers has great import.
UTILITY DESIGN MODEL. Patent Lite or Patent Express
The Meaning of Utility Design Model
The utility design model right is a monopolistic right relating to ideas about the form, construction or combination/assembly of goods. The term of protection for utility design rights is 6 years from the date of application for registration. Basically, the conditions for registration is the same as for patents, but the strict inventiveness standards for patents are not required here. One might even call it "patent-lite." In broad form, a six sided pencil would qualify for form, adding an eraser to a pencil could qualify for construction, and a nut & bolt combo could qualify for combination/assembly. Historically, the utility design model system was adopted in 1905 to complement the patent system which was adopted in 1885.
Differences Between Utility Design Model and Patents
1. Patents put a high priority on "inventiveness" which have strong elements of progress, whereas utility design rights give priority to "idea" which has a much lower element of progress.
2. Patents take a long time for registration due to rigorous examinations, whereas utility design rights take only a few months as there is no real examination conducted.
3. The period of protection for a patent is 20 years, while that for a utility design right is 6 years.
4. There is no separate stage required for exercise of patent rights, in the case of utility design rights, a utility design right technology evaluation report issued by an official from the Patent Agency, is required.
Thus one can see that utility design right has commercial value in the speed of approval.
Varieties of Intellectual Property Rights
Protection of Intellectual Property Other Than Intellectual Property Rights
Actions Restricted by the Law for the Prevention of Unfair Competition.
Product Labels/Manifestations Which Resembled those of Products or Services of Others
Copying the Shapes/Forms of the Products of Others
Unfair Acquisition, Usage or Disclosure of Business Secrets
Protection of Secrets Based on Contract
PATENTS
The Meaning of Patent
Patenting of Software and Business Methods
Infringing the Patents of Other Parties
Obligation to Pay Huge Compensatory Damages
Penalties for Violating the Patents of Others
COPYRIGHT
INFRINGEMENTS ON COPYRIGHT
Illegal Copying of Computer Software
Copying of Newspaper Articles
THE SCOPE OF COPYRIGHTED MATERIA
Creative Presentation of Ideas or Feelings
The Expanding Scope of Copyrighted Matters
SUBSTANCE OF COPYRIGHTS
Personal Rights of the Copyright Party
Copyright Assets
List of Copyright Assets:
Neighboring Rights of Copyright
Image Rights and Privacy Rights
Copyright Assets During the Age of the Internet
TRADEMARK RIGHTS
Effectiveness of Trademarks
Requirements for Registering a Trademark
Parallel Imports & Trademark Infringements
DESIGN RIGHTS
The Meaning of Design Rights
Infringement of Design Rights
UTILITY DESIGN MODEL. Patent Lite or Patent Express
Differences Between Utility Design Model and Patents
Intellectual property runs a wide range, from patents, trademarks, copyrights, etc.
As Japan's economy has been pressed to the wall in the 1990s, rather a major shock actually, from a period in the late 1980s when all thought that Japan was unstoppable to the emphasis now shifting to China and a belief that on economics alone no others can survive. Thus Japan is giving much greater attention to using intellectual property protection legislation to strengthen Japan's economic bastion. Corporations are beefing up their intellectual property legal capabilities.
Thus during the ten years from 1991 to 2001 intellectual property litigation in Japan doubled. There has also been a large increase in companies sending warning letters to other companies, claiming intellectual property rights violations.
Varieties of Intellectual Property Rights
Intellectual Property Rights are legal rights given to protect intellectual creativity such as advanced discoveries, plans related to the structure or form of products, the design of products, product or service marks (lettering, designs, bodily structure, an ideogram) cultural products (culture, academic, art, music) and even semiconductor circuitry design.
As these subjects do not really have a physical form, they are often also called intangible property.
Take for example a mobile telephone, the modern epimity of a high value-added product in a very small package. The little device, is brimming with intellectual property rights. Patents related to remarkable discoveries such as screen image processing and communications technology, utility model rights related to form or structure ideas such as an easy to use keypad, design rights related to distinctive designs, copyright on the contents used in the phones, trademarkds on the brand, etc. Chock-a-block with legal protections.
If a person holds the intellectual property rights, the rights hold can seek injunctions against its unauthorized use, and demand monetary compensation. The other side of the coin is that it can license their rights to other parties to use. These rights can be sold or even posted as security, meaning, in short, that one can derive economic benefit. In other words, it becomes a two-edged sword in becoming a weapon for economic benefit-- one defensive and the other utilitarian.
Protection of Intellectual Property Other Than Intellectual Property Rights
In addition to the monopolistic rights provided for intellectual property rights, there is the Law for the Prevention of Unfair Competition, which regulates infringing activities such as the making of counterfeit goods, the leaking of trade secrets, and the surreptitious use of famous brands. When the protections of the intellectual property laws and the Law for the Prevention of Unfair Competition are not adequate to protect business secrets, there are many cases where a contract is made directly with the user repleat with many protections. Such agreements would have restrictive measures protecting secrets by prohibiting unauthorized use of information or using it beyond licensed terms.
On the other hand, there is the Antimonopoly Law as a law which restricts the use of intellectual property. It restricts the use of intellectual property rights from having an adverse impact on fair competition.
In July 2002, the government came up with a new plan for a framework for a strategy on intellectual property, from which the main new idea was to create a new "industrial property right." One can never tell on these reports in Japan, but there is a reasonable possibility that it will be enacted.
Actions Restricted by the Law for the Prevention of Unfair Competition.
So what kind of activities are prohibited by the Law for the Prevention of Unfair Competition with respect to intellectual property rights? The most useful is the provisions restricting the manufacture or sale of products which mimic or look like the products of others. It also includes provisiones which restrict the unfair acquisition, usage or disclosure of business secrets.
One of its main differences of the Law for the Prevention of Unfair Competition compared to the intellectual property rights is that it is possible to seek the measures to stop unfair competitive activities without having registered the rights with the Patent Agency, so long as certain other requirements are met.
There is also a major difference in obtaining a cease and desist order or injunction. Activities violating the Law for the Prevention of Unfair Competition are those vioating the rights of others. and although demands for compensation for damages can be made based on "unlawful acts" of Article 709 of the Civil Code, in principle it is not possible to seek an injunction against such unlawful acts. Thus the Law for Prevention of Unfair Competition is a means for stopping acts of unfair competition. Of course, it is also possible to seek compensatory damages.
While most people when understanding that many of the prohibitions under the Law for the Prevention of Unfair Competition in many ways resemble stopping a kind of corporate fraud, would think that large reputable firms would hardly be likely to be engaged in such activities, they would be wrong. It has happened in a number of cases.
Product Labels/Manifestations Which Resembled those of Products or Services of Others
The utilization of product labels/manifestations which are the same as, or closely resemble the product labels/manifestations of others that are well known in the market, or based on the utilization of such products, causing confusion for the business or products of others.
Such a case could be classified as under the Prevention of Unfair Competition Law's "Actions Causing Confusion With Well Known Labels/Manifestations"
So how do you determine if there is resemblance to well known labels/manifestations? There have been court cases where the court found such a resemblance to the labels/manifestations of Manpower Japan, Matsushita Electric and Hankyu Railways.
In addition, where someone engages in such activities as surreptiously using another individual's signature brand to gather customers, even if it is with respect to a completely different line of products, and thus not likely cause confusion, it is still classified as "Signature Labels/Manifestations Desecration Acts" under the Prevention of Unfair Competition Law. Cases where these problems have arisen have involved such famous companies as Vogue magazine being used for belts and bags, Porsche for sunglasses and Sony for safe deposit box business.
Copying the Shapes/Forms of the Products of Others
The copying of the shapes/forms of the products of others is a category covered by the Prevention of Unfair Competition Law. The manufacture, sales, or import/export of products copying the forms or forms of the products of others is restricted under the law. There is a 3 year protection period during which such copying activity may not be conducted.
For example, the Bandai Corporation in 1997 launched an incredibly successful product called "Tamagochi", and the company filed a law suit seeking an injunction against a copy product called "New Tamagochi) as well as seeking compensatory damages. In 1998 the Tokyo District Court not only issued an injunction stopping the importation and sale of the copies, it also awarded 20 million yen in compensatory damages.
Separately from the protection offered by the Prevention of Unfair Competition Law, shapes/forms may also possibly to obtain protected under the intellectual property laws such as Patent Law, the Utility Model Act, and the Design Rights Law.
Unfair Acquisition, Usage or Disclosure of Business Secrets
This would fall under the "Unfair Activities Related to Business Secrets" of the Prevention of Unfair Competition Law.
With the spread of computer and digital technologies such as the internet and e-mail the risk of leaking business secrets is increasing.
In the handling of a company's important technological information it is possible to think of two kinds of possibilities. One choice would be to acquire exclusive monopolistic usage rights for a certain period of time, but making it public in a patent application. The other choice would be, while understanding the risk of another company filing and receiving a patent, protecting the business secret through severe controls. The latter choice is that used by CocaCola and its manufacturing knowhow.
When one wants business secret to receive the benefit of the protection of the law, one must give consideration to the terms of application of the Prevention of Unfair Competition Law. That law has three conditions in this kind of situation. (1) it has been controlled by the company as a secret, (2) the information is not known publicly, and (3) it is a secret in business or in technology. If all three of these conditions are met then there is special protection available under this law and it is possible to seek an injunction against the unfair acquisition, usage or disclosure of these secrets by others, as well as seeking compensatory damages.
In 2003 criminal sanctions also came into effect for parties that have unfairly acquired, used or disclosed such secrets based on the Prevention of Unfair Competition Law.
Protection of Secrets Based on Contract
As a supplementary protection of secrets it is advisable to make a contract to protect secrets or maintain secrecy. Thus one could conclude a contract with parties to whom information is disclosed prohibiting unauthorized disclosure, or used for unauthorized purposes or violators can be sued for compensatory damages. Even then administration of such contracts is not easy. Must one always disclose what is secret and what is not as well as maintaining a list of disclosed information?
Some recommend that, for example, critical parties in R&D who are approaching retirement should sign such secrecy protection contracts or nondisclosure agreements and a list be made of the business secret information obtained during his employment.
PATENTS
As mentioned previously, Japan is giving much higher priority to protection of its intellectual property rights particularly in light of its economic stagnation during the 1990s, often called the lost decade. Many may well recall that by the late 1980s most thought Japan was destined to rule the world economically and looked unstoppable (many people should remember that in light of the "China Boom" and the same way of thinking--even though the basic infrastructure, physically, legally and demographically is even worse in China). Many Japanese have thought that much of the US economic recovery that actually started during the 1980s was due to the aggressive US protection of its intellectual property laws. One of the most notorious cases during that time was the Hitachi-IBM industrial espionage case where Hitachi workers were caught red-handed stealing IBM's secrets. IBM drug Hitachi over the coals, the Japanese were outraged at the spectacle. Now as the Japanese economy struggles with Chinese competition Japan has decided to follow the US model and protect their advanced technologies.
The Meaning of Patent.
The patent system, based on the Patent Law is where the government grants an inventor a patent right. If a patent is given for an invention, the patent rights holder will enjoy monopolistic rights on the usage for the invention for a period of 20 years from the date of the patent application. The exercise of the monopoly of the patent is threefold in nature: (1) the usage of production methods included the patented invention, (2) the production, usage, transfer, rental and import of goods including the patented invention and (3) the usage, transfer, rental and import of products produced based in such production methods. In addition, based on the 2002 amendment to the Patent Law, the exercise of the patents includes the transmission over a network of computer software that is a patented invention.
The "monopoly" of exercise of the invention of a rights holder means that they can seek an injunction against unauthorized use or demand compensatory damages for such usage. It is possible to receive economic advantages as being able to sell the rights, permitting others to use it (licensing) or providing it for security for financing. In other words, the rights holder has every aspect of rights. The validity of the patent right is such that it can be used against those who are exercising usage without knowing of the existence of the patents.
What should be paid attention to here is that once the patent has been obtained it does not mean that one is necessarily free to use that invention. Many patents are incremental inventions. and there are many cases where the invention is one part only and an indispensable part may be subject to the patent of another party. Without that party's consent for use, your patented invention may be useless.
Of course there is also the other problem of the international system. Japanese patent law officially only applies within the borders of Japan. In general, if one wants one's invention to enjoy the patent protections of other countries, one must apply for a patent in that country.
The Meaning of Patent.
The Japanese Patent Law has as its objective is "contributing to the development of industry through the encouragement of inventions based on the protection of inventions and devising their usages." As this is a means of industrial promotion policy, inventions which are the point of these rights is limited to "advanced creative technological innovations using the laws of nature." Accordingly, calculation methods, educational methods, sales methods and drawing methods not based on the laws of nature can not qualify as inventions eligible for patent.
On top of that, technologies already known in the public, or lacking in newness, advance or industrial utilization in invention, in technology, testing and medical treatment that competitors could easily predict, would not be an invention eligible for patent.
Thus in Japan prior to the filing of the patent petition, it is important to have all the parties aware of the invention have non-disclosure and maintenance of secrecy agreements. If the information gets out into the public, one loses the argument thst it is new and unknown to the public.
Patenting of Software and Business Methods.
Computer software and business methods are difficult to classify as meeting the "using the laws of nature" when seeking a patent. As the modern world has become more electronic and digitized in 2002 the Patent Law was amended such that it became clear in the statute that computer software was eligible for patent.
In addition, business methods using computers or networks were also made eligible for patenting. However, those that have no connection to the laws of science and are mere rules devised by man, as in e-mail, are not eligible for patent protection.
Japan Grants Patents to the First Petitioner While the USA Gives it to the First Discover.
The procedure for obtaining a patent in Japan is as follows:
---File the petition for patent
---Make a request for examination of the petition
---Examination by an examiner
---Patent determination
---Payment of patent fee
---Patent right is born
---Decision for registration
---Publication in the Patent Agency's Official Gazette
If the determination is not to grant the patent, an opinion paper can be filed and it is possible to ask for a hearing on the rejected patent.
Whether the conditions have been met for patenting an invention which has been petitioned for, the examination is based on the timing of the filing of the petition. The first party filing for the invention wins over others petitioning for the same invention. The period of patent protection is for 20 years, and it is possible to seek an additional 5 years of rmedicines and agricultural chemicals. This system is actually the one used in most other foreign countries. The major exception being however, the biggest of them all, the United States of America where the principle is that first invetor wins, regardless of the timing of the filing of the petition.
Infringing the Patents of Other Parties
Obligation to Pay Huge Compensatory Damages
As mentioned above many Japanese remember the 1980s as the time when the Americans used intellectual property laws, such as patent laws to defend their economic position. Many of those cases were against Japanese companies. Corning sued Sumitomo Denko, Texas Instruments sued Japanese semiconductor makes, Honeywell sued Minolta and Genetech sued Toyo Spinning, etc etc. In these efforts they collected hundreds of millions of dollars in damages. Not only in such cases are huge damages paid, they must stop the sale and production of violating products unless a license is obtained. It can obviously be fatal to the business.
Penalties for Violating the Patents of Others
Using a patented invention without a license is a patent infringement. As to whether there is an infringement, it depends on whether it was within the technological scope of the patented invention. The validity of a patent is defined by the scope of the technology of the patented invention. The scope of the technology is written in the claim which is appended to the petition for the patent.
If an infringment of a patent is found the rights holder can sue for an injunction, compensatory damages, and seek measures to restore confidence. When a patent rights holder seeks compensatory damages against the infringer, based on the principles of the Civil Code, the rights holder must prove the intent or negligence of the infringer. However, as patents is a system presuming that an invention has now been publicly announced, the Patent Law establishes a presumption on the part of the infringer that he was negligent making it easy for the rights holder to win. Moreover, if the violation is particularly egregious, or massive, the violator can even be imprisoned for 5 years or fined up to 5 million yen.
COPYRIGHT
Copyright is a system established with the objective of contributing to the development of culture by devising mutual benefits for the creator and the use of society.
Although copyright initially concentrated on printed and published subject matter, now the scope of copyright has greatly expanded. Compared to other forms of intellectual property, copyright is a subject one is more likely to run into in daily life.
INFRINGEMENTS ON COPYRIGHT
Illegal Copying of Computer Software
One of the biggest problems of copyright infringement in the modern world is the copying of computer software. Computer software is protected by copyright law in Japan and other than making a backup copy, copying computer software is a violation of copyright law. In addition to being able to seek an injunction against the infringement, a civil suit is possible for compensatory damages. Criminal law penalties of up to 3 years imprisonment or 3 million yen in fines can be inflicted.
In fact, in May 2001 the Tokyo District Court found that a preparatory school for attorneys (?!?!?!) had been infringing copyrights on computer software and ordered it to pay damages of 80 million yen. Even though the school had bought appropriate software after receiving warning letters from the software firms, the court said compensation was still due for the initial violation.
Copying of Newspaper Articles
Newspaper and magazine articles and photos are protected by copyright. As it is protected by copyright, it is not permissible to use such material without the owners consent. There is one small exception however, for personal or home use or similar usages. That clearly does not include corporate or business usage.
Another exception is acts quoting part of the copyrighted material of another party in one's own work if they are within the scope of fair use, as in reporting, reviews, research and other appropriate objectives for quoting. In such cases, the permission of the rights holder is not required.
In addition to the copyright holders ability to seek an injunction or compensatory damages from an infringing party, there are a number of economic rights, including the right to license the rights, sell the rights or use it as collateral or security interests.
It is a matter of course that the copyright holder can also demand that copying or amending of his copyrighted interest be stopped, even if the infringer is not aware of the copyright.
In determining whether there has been a violation of copyright critical is whether there is the fact of touching on another party's copyrighted material and the similarity of the presentation. If there has been no touching on another party's copyrights material even if there is a similarity in presentation by chance there is no violation
THE SCOPE OF COPYRIGHTED MATERIALS.
Creative Presentation of Ideas or Feelings
The Copyright Law defines copyrighted material as "something that is the creative expression of ideas or feelings and that fall within the scope of culture, academia, art or music."
Note that the important point is that it is human internal activity "ideas or feelings" that are created creatively. It is not necessary that it be artistic but expressions are almost identical no matter who made them, can not be recognized as creative. For another example, mere collections of data are also lacking in creativity. On the other hand, if there is some kind of labor or construct in the editing or usage then it may be possible to claim a copyright, at least with respect to that part. In addition, explanatory materials prepared making calculations of data may also have a separate copyright.
There is also the matter of secondary copyrights. New products produced based on processing another's creation, is nearly a daily activity in its frequency. If the new product produced based on processing another's idea is substantially the expression of the original material or keeps its special characteristis, then it is a secondary copyright material. In the copying or alteration of the secondary copyright material, the consent of the first, original copyright holder is required.
In Japanese copyright it is not required that there be an application or registration. The copyright appears the moment of the creation of the copyrighted material. The term of protection of the copyright is the life of the creator plus 50 years in the case of an individual, but only 50 years when the creator is a business or other organization.
The Expanding Scope of Copyrighted Matters
The concept of copyright started almost as soon as the Guttenberg press started printing all those Bibles. The legal concept in Japan first began in 1899 with Japan's first copyright law. At the same time Japan joined the Berne convention. In 1956 Japan also joined the international treaty on copyright. As of November 2003 Japan had nine subject matters that could be copyrighted:
1. Computer programs
2. Words
3. Music
4. Movies
5. Drawings
6. Photographs
7. Architecture
8. Dancing, pantomine
9. Art
On top of that, there are secondary copyrights, based on another copyright matter, a compilation of copyrighted matters and databases which have creativity in the selection and structuring of information.
SUBSTANCE OF COPYRIGHTS
Personal Rights of the Copyright Party
The Copyright Law divides up rights related to copyright into two groups. First is the copyright assets protecting the asset values of copyrighted matters and the personal rights of the copyrighted matters protecting the personal rights of the copyright party.
The personal rights of the copyright party is made up of the rights of publication (make public), the right of manifesting one's name, and the right of maintaining identity or oneness. These rights pertain personally to the copyright party. They can not transferred to other parties or succeeded to by heirs.
The right of publication is the right whether a copyrighted matter is to be published or publicly announced and it is a right decided by the copyright party.
The right of manifesting one's name is whether or not to manifest the name at the time of making public the copyrighted material, and it is a right of the copyright party to decide whether to use the real name or a pseudonym.
The right of maintaining identity or oneness, is the right of the copyright party to deny alterations to the copyrighted matter that he does not desire. Provided, however, where it is deemed inevitable in light of the quality, objective, or form of the copyrighted matter, even without the consent of the copyright party, there can be alterations within certain limits.
Copyright Assets
Copyright assets is the right that the copyright holder has exclusively to approve or refuse for the duplicatioon fo the copyrighted matters or other usage activities or formats otherwise set out by law. The copyright assets of the copyright party is limited to the actions of duplicating and revising the copyrighted material. Of course in the privacy of your home enjoying copyrighted material you bought in a store, such as a book or music, is not an infringement of copyright.
List of Copyright Assets:
Right of Transfer: Excepting in the case of pictures the right to provide to the public by the transfer of copies or the original product itself.
Right of Distribution: The right to distribute of copies of picture copyrighted matters.
Right of Exhibition: The right to exhibit to the public copyrighted works of art, or copyrighted unpublished photos.
Right of Oration: The right to make public orally a copyrighted material.
Right of Public Transmission: The right to transmit to the public copyrighted material
Right of Screening: The right of screening a copyrighted matter to the public
Right of Performance: The right to perform copyrighted material
Right to Copy or Publish: The right to physically duplicate a copyrighted material.
Neighboring Rights of Copyright
Under the Copyright Law there also exists neighboring rights, for performers, the manufacturers of records or CDs, broadcasters and those broadcasting over wired lines, that are rights other than those of the real creator, and are completely separate rights from the copyright itself.
For example in the case of the sale of a musical CD, in addition to songwriter, there is also the performer and the manufacturer of the CD. These people have such neighboring rights as sound recording rights, video recording rights, broadcasting rights, transmission rights, transfer rights, and rental rights. They have the right to receive royalties or secondary usage rights on these just as the songwriters have.
These rights bear rights for compensation for performances such as long time playing in the office place or meeting halls, etc.
These neigboring rights also arise from the time of the act creating them and then last for 50 years.
Image Rights and Privacy Rights
There is no clear legal basis in Japanese legislation for these rights. These are rights that have arisen from a series of court decisions.
Image rights is the right to refuse the exposure of a person's image to the eyes of others against the desires of that person. When one person filed a court case for compensatory damages against an advertiser against an entry of a product ad in a newspaper with with a large picture of his face, the court agreed, recognizing an infringement against his image rights. When the party can be identified, taking a picture without their consent and using the image is not permitted.
In contrast to this, there is also privacy rights. These are rights whereby a famous person is able to restrict the commercial use of one's name or image. With such actions as using a famous person's photo without authorization in a handout, etc. would be a typical violation of such privacy rights. In such cases it is possible to seek an injunction against such infringement and demand compensatory damages.
This is completely separate from the copyright for the photo itself. Having received the consent of the party photographed, reproducing the photo without the consent of the photographer could be an infringement of copyright.
Copyright Assets During the Age of the Internet
During the age of the internet it has also become necessary to pay attention to such copyright issues as the right of transmission. In 1997 Japan revised its Copyright Law and added internet copyright protection in line with its acceptance of the World Intellectual Property Organization (WIPO). This public transmission right is the right to transmit (copy electronically) copyrighted content using the internet, etc. In this public transmission right, is included the right of transmittability, in other words, the right to consent or to refuse a transmittable format at a file exchange site, etc. One example would be to buy some software and put it on a server and use it on a network by a number of computers. This would ordinarily be a copying infringement or violation of the public transmission right, unless it is permitted by the contract.
Another problem would be to pull in the content of another website's page, information or images within a frame of your own website. This is likley to create confusion with the orginal creator and exceed the planned usage of that creator. Without the consent of the user, that is likely to the copyright holders rights to copy or alteration or public transmission rights.
TRADEMARK RIGHTS
Trademarks, sometimes also referred to as brands, is a symbol whether by letters, drawing, marks or concrete form, of where (the company, usually) the product or service originated.
This can be in a number of formats. It can be a mark or the letters of a company name, a standardized drawing or picture, or a combination thereof.
It is not the product itself. It is usually used on the products package or printed advertisements, indicating from where it was sourced. It can even include the container, the format, the coloring, the printed design, the feel or the materials. Famous department stores, for example have their unique wrapping paper.
Effectiveness of Trademarks
The trademark in Japan is valid only when it is registered for a certain category of goods. Thus it is possible to have the same trademark for different categories of products, without problem. The registration is with the Patent Agency.
However, to use the same trademark, or a similar one, for the same category of goods would violate the trademark. The trademark rights holder would then be able to seek an injunction and compensatory damages. There is also a possiblity of criminal penalties of five years imprisonment and 5 million yen in fines. This is obviously taken quite seriously, so it is advisable that adequate trademark research be carried out before using one. Nevertheless, even if another party had registered a trademark before you, if you have been using it from before, and it is well known among users, you may continue to use it. It is still advisable to make due research and timely registration in order to avoid conflict. Another exception is that if even a party registers a trademark first, if they do not use it for 3 years without suitable reason, another party can file to have it cancelled.
Requirements for Registering a Trademark.
Trademark registrations are made with the Patent Agency. The first to file gets the rights. The rights arise from the moment the moment it registered. The trademark is valid for 10 years and can be renewed.
As much as possible the symbol of the trademark should have characteristics such that as much as possible it can be distinguished from the products of services of other companies. Similarly, if there is already the same or similar trademark for the same category of goods or services, your application will b denied.
There are two times when similarity becomes a problem. At the time of application and at the time of infringement.
There are three aspects that are looked at in determining similarity.There is similarity in external appearance. Here if the trademark is looked at externally, and the lettering, drawings and markings look similar. Secondly is similarity in impression. If two trademarks have similar meanings there could be a similarity in impression. Finally, there is similarity in name, if they have similarity in sound. Thus Sony and Somy may fall in this category. In reality even experts often disagree in this area and there is a great deal of litigation on these issues.
Parallel Imports & Trademark Infringements
Parallel Imports is where one company's trademarked products are imported from another country. The reason for this is that even the same company's products may differ in prices a great deal. This is particularly true for Japan. So a businessman buys the same products from a cheaper country. The problem is that a local company may have obtained a trademark license from a foreign company for exclusive trademark rights in Japan. There is great dispute on whether parallel imports would violate such licensed trademarks. Some courts have found that if the imported goods are true products, not counterfeit, there is probably no violation. There is some evidence however that if some changes are made in packaging, etc. it may be in violation.
DESIGN RIGHTS
The Meaning of Design Rights
A design is the form, shape, color or a combination of these of a good, in toto or in part, that causes a sense of beauty. In this case, a good is an object that can be transported. As such, real property can not qualify as well as intangibles. A design right can be obtained by attaching a drawing of the design to the application made to the Patent Agency. Then if the design meets the standards of industrial utility, newness and creativity it can be registered. The meaning of industrial utility means that it can be mass produced by industrial production methods, thus making handicrafts made by hand ineligible, although that could be eligible for copyright protection. The holder of a design right can seek an injunction against those who "use" the design without authorization, as well as seeking compensatory damages. On top of this there are economic benefits such as the ability to license it to others, sell it, or use it as collateral. Here, "use" the design means to manufacture, use, transfer, lend, or import products using the design. The right is valid even against those who are unaware of its existence. The term of protection of the design right is 15 years from the date of registration.
Infringement of Design Rights.
An infringement of a design right is the use of a design previously registered by another party, or of a similar design. The rights holder can seek an injunction stopping sales as well as demand compensatory damages. On top of that, in particularly egregious cases, criminal sanctions of up to 3 years in prison or 3 million yen in damages can also be imposed. The standard for determining whether a design right has been infringed is based on feelings of beauty and confusion, which, being highly subjective, even causes disputes among experts, similar to the situation for trademarks. Here, the beauty standard revolves in many ways around originality, while the confusion standard revolves around whether there is confusion among consumers. For the courts it appears that the element of confusion among consumers has great import.
UTILITY DESIGN MODEL. Patent Lite or Patent Express
The Meaning of Utility Design Model
The utility design model right is a monopolistic right relating to ideas about the form, construction or combination/assembly of goods. The term of protection for utility design rights is 6 years from the date of application for registration. Basically, the conditions for registration is the same as for patents, but the strict inventiveness standards for patents are not required here. One might even call it "patent-lite." In broad form, a six sided pencil would qualify for form, adding an eraser to a pencil could qualify for construction, and a nut & bolt combo could qualify for combination/assembly. Historically, the utility design model system was adopted in 1905 to complement the patent system which was adopted in 1885.
Differences Between Utility Design Model and Patents
1. Patents put a high priority on "inventiveness" which have strong elements of progress, whereas utility design rights give priority to "idea" which has a much lower element of progress.
2. Patents take a long time for registration due to rigorous examinations, whereas utility design rights take only a few months as there is no real examination conducted.
3. The period of protection for a patent is 20 years, while that for a utility design right is 6 years.
4. There is no separate stage required for exercise of patent rights, in the case of utility design rights, a utility design right technology evaluation report issued by an official from the Patent Agency, is required.
Thus one can see that utility design right has commercial value in the speed of approval.
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