Business law essay

1 BUSL377 Japanese Trade Law Week 10: Intellectual Property Law Dr Kay-Wah Chan E4A 241 Tel: 9850 7088 Email: [email protected] (2017) 1 2017 Note:  If there is any discrepancy between the Textbook and these slides/lecture notes or what I said in lecture, follow these slides/lecture notes and what I said in lecture. 2 2017 What is Intellectual Property (IP)?  WIPO definition:  “creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce” (WIPO, “What is Intellectual Property?” )  Definition in the Intellectual Property Basic Act (2002):  “inventions, devices, new varieties of plants, designs, works and other property that is produced through creative activities by human beings (including discovered or solved laws of nature or natural phenomena that are industrially applicable), trademarks, trade names and other marks that are used to indicate goods or services in business activities, and trade secrets and other technical or business information that is useful for business activities” (Art.2) 3 2017 Intellectual property rights in Japan  Patent  Trademarks  Copyrights  Trade secrets  Designs  Utility models  Etc. 4 2017 2 Relevant authorities  Japan Patent Office (http://www.jpo.go.jp/)  METI  Japan Copyright Office  Agency for Cultural Affairs, MEXT  Intellectual Property High Court (http://www.ip.courts.go.jp/eng/) 5 2017 Japan Patent Office  Registration of the following IP rights: 1. Patents 2. Trademarks 3. Utility models 4. Designs 6 2017 Intellectual Property High Court  Established on 1 April 2005, under the Justice System Reform  Specialized in intellectual property cases  Purpose of establishment  A special branch of the Tokyo High Court  Cases heard by a panel of three judges or (for cases with important issues and provision of unified opinions of the court without delay is appropriate) the Grand Panel of five judges 7 2017 Intellectual Property High Court  Jurisdictions over:  Appeals against decision made by the Japan Patent Office (as a court of first instance)  Appeals from any district court on civil cases relating to patent rights, utility model rights, rights of layout- designs of integrated circuits, and rights of the authors of a program work  Appeals from district courts on civil cases relating to design rights, copyrights (excluding rights of the authors of a program work), trademark rights etc. that come within the jurisdiction of the Tokyo High Court (i.e.

depending on the court of first instance)  Other civil and administrative cases under the jurisdiction of the Tokyo High Court that needs expertise on IP for conducting the proceedings and making judgment on the main issue 8 2017 3 Patents 9 2017 Patent law - Patent Law/Act 特許法 (Law No. 121, 1959)  Purposes of the Act/Law: “to encourage inventions, and thereby to contribute to the development of industry” “through promoting the protection and the utilization of inventions” (Art.1)  Subject matters protected: Inventions  Definition: Art.2 para 1 : “ the highly advanced creation of technical ideas utilizing the laws of nature ”  Patent rights depend on: Registration  Japan Patent Office (JPO)  First-to-file system  Not all inventions can be registered: Must be patentable 10 2017 Patent law - Patent Law/Act (Law No. 121, 1959)  Patentability  Novelty  Inventive step  Industrial applicability  Not patentable if likely to harm public order, good morals (or translated as morality), or public health (Art.32)  “Where two or more patent applications claiming identical inventions have been filed on different dates, only the applicant who filed the patent application on the earliest date shall be entitled to obtain a patent for the invention claimed” (Art.39 para 1) 11 2017 Patent law - Patent Law/Act (Law No. 121, 1959) Application procedure 1. Submission of application to JPO 2. Formality examination 3. Publication of application in Official Gazette 4. Request for examination 5. Substantive examination 6. Decision to grant a patent 7. Registration 8. Publication in Patent Gazette 9. (Opposition/Appeal for invalidation) 10. (Appeal examination) 11. (Appeal to the Intellectual Property High Court – not available for the opposing party) 6. Notification of reasons for refusal 7. Written argument / amendment 8. Substantive examination 9. Decision to grant / decision of refusal 10. Appeal against decision of refusal 11. Appeal examination 12. (Appeal to the IP High Court) 12 2017 4 Patent law - Patent Law/Act (Law No. 121, 1959)  Period of Protection:  20 years from the date of filing of application (Art.67 para.1) 13 2017 Patent law - Patent Law/Act (Law No. 121, 1959)  Infringement:  Use, offering for sale, sales, production, etc.  Remedies:  Injunction (Art.100)  (in cases of intentional/negligent infringement) restoration of business credibility (Art.106)  Damages  Tort (N.B. presumption of negligence on the part of the infringer [ Art.103 ])  Presumption of amount  Criminal liability (Art.196; Art.196-2) 14 2017 Trademarks 15 2017 Trademark law - Trademark Law/Act 商標法 (Law No.127, 1959)  Subject matters protected: character(s), figure(s), sign(s), three-dimensional shape(s) or colour(s), or any combination thereof, sound, or any mark specified by Cabinet order that can be recognized by human perception and are used in connection with: a. goods of a person who produces, certifies or assigns the goods as a business; or b. services of a person who provides or certifies the services as a business (Art.2, para.1) 16 2017 5 Trademark law - Trademark Law/Act 商標法 (Law No.127, 1959)  In general, trademark rights depend on: Registration  Registration with: Japan Patent Office (JPO)  First-to-file system  Not all trademarks can be registered 17 2017 Trademark law - Trademark Law/Act (Law No.127, 1959)  To be registrable, the mark must be: A. Distinctive B. Not falling within any of the “unregistrable” marks specified in the Trademark Law/Act (Art.4) 18 2017 Trademark law - Trademark Law/Act (Law No.127, 1959) A. Distinctive - e.g. following marks not registrable: 1. trademark consisting solely of a mark indicating, in a common manner, the common name of the goods or services; 2. trademark customarily used in connection with the goods or services; 3. (in the case of goods) trademark consisting solely of a mark indicating, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, shape (including shape of packages), the method or time of production or use, other characteristics, quantity or price; 19 2017 Trademark law - Trademark Law/Act (Law No.127, 1959) A. Distinctive - e.g. following marks not registrable: 4. (in the case of services) trademark consisting solely of a mark indicating, in a common manner, the location of provision of the service, quality, articles to be used in such provision, efficacy, intended purpose, modes, method or time of provision of the service, other characteristics, quantity or price; 5. trademark consisting solely of a mark indicating, in a common manner, a common surname or name of a juridical person; 6. trademark consisting solely of a very simple and common mark; 20 2017 6 Trademark law - Trademark Law/Act (Law No.127, 1959) A. Distinctive - e.g. following marks not registrable: 7. trademark not enabling consumers to recognize the goods or services as those pertaining to a business of a particular person The above seven items are listed in Art.3 Para.1 . N.B. a trademark falling under any of items (3) to (6) above may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person (Art.3 Para. 2) 21 2017 Trademark law - Trademark Law/Act (Law No.127, 1959) B. Not falling within any of the “unregistrable” marks specified in the Trademark Law/Act (Art.4) , e.g.  Identical with or similar to Japan’s or another country’s national flag, the emblems or title of the Red Cross  (Subject to exceptions) identical with, or similar to, a mark indicating the United Nations or any other international organization which has been designated by the Minister of Economy, Trade and Industry  Identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest  Likely to cause damage to public order or good moral  Containing another person’s portrait, name, famous pseudonym, professional name or pen name or famous abbreviation thereof (except with approval from that person) 22 2017 Trademark law - Trademark Law/Act (Law No.127, 1959) B. Not falling within any of the “unregistrable” marks specified in the Trademark Law/Act (Art.4) , e.g.  Identical with, or similar to, another person's trademark which is well known among consumers as that indicating goods or services in connection with the person's business, if such a trademark is used in connection with such goods or services or goods or services similar thereto  Identical with or similar to a prior registered trademark and for use on goods or services identical with or similar to the designated goods or services under the prior registration  Likely to mislead as to the quality of the goods or services  Identical with or similar to a trademark well-known among consumers in Japan or abroad (as that indicating goods or services pertaining to a business of another person) and used for unfair purposes 23 2017 Trademark law - Trademark Law/Act (Law No.127, 1959) Application procedure 1. Submission of application to JPO 2. Publication of application in Official Gazette 3. Formality examination 4. Substantive examination 5. Decision of registration 6. Registration 7. Publication in Trademark Gazette 8. (Opposition / Appeal for invalidation / Appeal for revocation) 9. (Examination / Appeal examination) 10. (Appeal to the Intellectual Property High Court) 5. Notification of reasons for refusal 6. Written argument / amendment 7. Decision of registration / decision of refusal 8. Appeal against decision of refusal 9. Appeal examination 10. (Appeal to the IP High Court) 24 2017 7 Trademark law - Trademark Law/Act (Law No.127, 1959)  Period of protection  10 years from date of registration  renewable  Revocation  No usage for 3 consecutive years or more 25 2017 Trademark law - Trademark Law/Act (Law No.127, 1959)  Infringement:  The Trademark Law/Act deems certain acts as infringement (Art.37)  Remedies:  Injunction (Art.36)  (in cases of intentional/negligent infringement) restoration of business credibility (Art.39 applying Patent Act Art.106)  Damages  Similar to patent, presumption of negligence on the part of the infringer (Art.39 applying Patent Act Art.103)  Presumption of amount of damages (Art.38) but possible to put in a claim for higher amount  Criminal liability (Art.78 and Art.78-2) 26 2017 Copyright 27 2017 Copyright law - Copyright Act 著作権法 (Act/Law No. 48, 1970)  Subject matter:  “a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, academic, artistic or musical domain” (“work”) (Art.2, para.1 (i))  Examples of “works” (Art.10, para.1)  Person who creates the work: authors (Art.2, para.1 (ii)) 28 2017 8 Copyright law - Copyright Act (Law No. 48, 1970)  Protected works:  Works of Japanese nationals (including legal/juridical persons established under Japanese laws or having principal offices in Japan)  Works first published in Japan (including those first published overseas and then published in Japan within 30 days from date of first publication)  Foreigners’ works for which Japan has obligation to grant protection under international treaty (Art.6) 29 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Works not protected (Art.13) :  The Constitution and other laws and regulations  Public notices, instructions, circular notices and the like issued by State organs or local public entities, incorporated administrative agencies or local incorporated administrative agencies  Judgments, decisions, orders and decrees of courts, and rulings and decisions made by administrative agencies in proceedings of quasi-judicial nature  Translations and compilations of any of the above items prepared by State organs or local public entities, incorporated administrative agencies or local incorporated administrative agencies. 30 2017 Copyright law - Copyright Act (Law No. 48, 1970)  No registration requirement for copyrights  Rights arise when the author creates the work  What rights the author has: 1. Moral rights ( 人格権 ); and 2. Copyright ( 著作権 ) (“economic rights”) (Art.17)  Copyright is an economic right, transferable (in whole or in part), but with protection for only a specified period (discussed in more details later)  Moral rights are personal and exclusive to the author, and non-transferable (Art.59) but in principle perpetually protected (Art.60) 31 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Moral rights ( 人格権 ): 1. Right to make the work public (Art.18) 2. Right to determine indication of author’s name (Art.19) 3. Right to maintain integrity (Art.20) 32 2017 9 Copyright law - Copyright Act (Law No. 48, 1970)  Copyrights: 1. Reproduction right (Art.21) 2. Performance right (Art.22) 3. Screen-presentation right (Art.22-2) 4. Public transmission right (Art.23) 5. Recitation right (Art.24) 6. Exhibition right (regarding artistic works and unpublished photographic works) (Art.25) 7. Distribution right (regarding cinematographic works) (Art.26) 8. Right to transfer ownership (except cinematographic works) (Art.26-2) 9. Rental right (except cinematographic works) (Art.26-3) 10. Right of translation, dramatization, cinematization, adaptation etc. (Art.27) 11. Right to exploit a derivative work (Art.28) 33 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Derivative work ( 二次的著作物 ) (Art.2, para.1 (xi)) :  “a work created by translating, arranging musically, or transforming, or dramatizing, cinematizing or otherwise adapting a pre-existing work” 34 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Expiry of term of protection of copyrights:  50 years* from death of the author (if joint authors, the death of the last surviving co-author) (Art.51, para. 2)  For anonymous or pseudonymous work, 50 years* from publication BUT: if before the expiration of this 50 year period, 50 years have elapsed following the author’s death, then the copyright in such work shall be deemed to expire at the end of the 50 year period* following the author’s death (Art.52, para.1) (N.B. the above not applicable if the pseudonym is widely known as that of the author, Art.52 para.2 (i) or within the said 50 year period the author publishes the work on which he/she indicates his/her true name or his/her widely known pseudonym as the author’s name Art.52 para. 2 (iii) ) 2017 35 Copyright law - Copyright Act (Law No. 48, 1970)  Expiry of term of protection of copyrights:  If author is a legal/juridical person or other organisation , 50 years* from publication or, if not published within 50 years of creation, 50 years* from date of creation (Art.53, para. 1)  For cinematographic works , 70 years* from publication of the work or 70 years from date of creation if not published within 70 years* of creation (Art.54 para.1) * N.B. the date from which the calculation of the above- mentioned 50 year period or 70 year period is to be made (Art.57) 36 2017 10 Copyright law - Copyright Act (Law No. 48, 1970)  Expiry of term of protection of copyrights:  For foreign works protected in Japan under the Berne Convention etc., if copyright duration in the country of origin is shorter, the term shall be as that duration in the country of origin (Art.58) 37 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Limitations on copyrights (a work can be used without permission): 1. Reproduction for private use within a limited scope (Art.30) subject to some exceptions, such as reproduction by using publicly available copy machines (Art.30, para.1 (i)) . 2. Reproduction in the National Diet Library, libraries, etc.: a. As per request of users for research or study (must be single reproduction of (i) only a part of the published work or (ii) all of an individual work in a periodical already published for a considerable period of time) b. Reproduction necessary for preserving library materials c. As per request from other libraries etc. due to difficulty in obtaining the work. (Art.31 Para 1) 38 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Limitations on copyrights (a work can be used without permission): 3. Quotations of a published work: if compatible with fair practice and to an extent justified for the purpose of the quotation for news reporting, critique or research (Art.32 Para.1) . 4. (Subject to conditions and payment as fixed by the Commissioner of the Agency for Cultural Affairs) reproduction in school textbooks (Art.33) 5. (Subject to limitations/conditions) reproduction, etc. as examination questions (Art.36) 6. For reporting of current events, reproduction of a work involved in such event or a work seen or heard in the course of the event to the extent justified for purposes of news reporting (Art.41) 7. Etc. 39 2017 Copyright law - Copyright Act (Law No. 48, 1970)  Infringement  The Copyright Act deems certain acts as infringement (Art.113) : e.g. import for distribution, distribution with knowledge, etc.  Remedies for infringement:  Injunction (Art.112)  (in cases of intentional/negligent infringement of moral rights) measures to ensure identification of the author as the author, corrections [of distortions, mutilations, and/or modifications], or restoration of the honour and reputation of the author (Art.115) 40 2017 11 Copyright law - Copyright Act (Law No. 48, 1970)  Remedies for infringement:  Damages  Presumption of amount of damages in intentional or negligent infringement but possible to put in a claim for higher amount (Art.114)  Criminal liabilities 41 2017 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights 著作隣接権 (Chapter IV):  Four categories of neighbouring right owners: 1. Performers 2. Phonogram producers 3. Broadcasting organisations 4. Wire-broadcasting organisations (Art.89) 42 2017 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights (Chapter IV):  Performers’ rights: 1. Right to indicate name or not (Art.90-2) 2. Right to preserve integrity (Art.90-3) 3. Right to make sound or visual recordings (Art.91) 4. Right to broadcast and to wire-broadcast (Art.92) 5. Right to make performance transmittable (Art.92-2) 6. Right to offer performance to the public through transferring ownership of sound/visual recordings of the performance (Art.95-2) Etc. 43 2017 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights (Chapter IV):  Phonogram producers’ rights: 1. Right of reproduction (Art.96) 2. Right to make phonogram transmittable (Art.96-2) 3. Right to offer the phonogram to the public by transferring ownership of reproductions of the phonogram (Art.97-2) 4. Right to offer the phonogram to the public by rental of a commercial phonogram in which the phonogram has been reproduced (Art.97-3) Etc. 44 2017 12 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights (Chapter IV):  Broadcasting organisations’ rights: 1. Right of reproduction (Art.98) 2. Right to make rebroadcast and to wire-broadcast (Art.99) 3. Right to make broadcasts transmittable following reception thereof (Art.99-2) 4. Right of public display with enlarged images following television broadcast reception (Art.100) 45 2017 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights (Chapter IV):  Wire-Broadcasting organisations’ rights: 1. Right of reproduction (Art.100-2) 2. Right to make broadcast and to re-wire-broadcast its wire-broadcasts following reception thereof (Art.100- 3) 3. Right to make wire-broadcasts transmittable following reception thereof (Art.100-4) 4. Right of public display with enlarged images following television wire-broadcast reception (Art.100- 5) 46 2017 Copyright law - Copyright Act (Law No. 48, 1970) Neighbouring rights (Chapter IV):  Expiry of term of protection (Art.101) : 50 years 1. (for a performance) from the beginning of the year immediately following the year when the performance took place 2. (for a phonogram) from the beginning of the year immediately following (a) the year of publication; or (b) the year when the first fixation of sound was made if not published within 50 years commencing frpm the year immediately following the year when the first fixation of sound was made 3. (for a broadcast) from the beginning of the year immediately following the year when the broadcast took place 4. (for a wire-broadcast) from the beginning of the year immediately following the year when the wire-broadcast took place 47 2017 Other IP rights 48 2017 13 Utility models  Utility Model Law/Act (Law No. 123, 1959) 実用新案法  Subject matter: Devices concerning the shape, structure or combination of articles/items created using technological concepts/ideas based on the laws of nature (Arts.2 & 3)  Registration  Requirements of novelty, industrial applicability and non-obviousness  Must not be liable to harm public order, good morals, or public health (Art.4)  Period of protection: 10 years from the date of filing of application for registration (Art.15) 49 2017 Utility models - Utility Model Law/Act (Law No. 123, 1959) Application procedure 1. Submission of application to JPO 2. Fundamental important point examination and Formality check 3. Registration 4. Publication in Gazette 5. (Appeal for invalidation) 6. (Appeal examination) 7. (Appeal to the Intellectual Property High Court) 3. Invitation to amend 4. Amendment 50 2017 Designs  Design Law/Act (Law No. 125, 1959) 意匠法  Subject matter: Design (the shape, patterns or colours or combination thereof of an article which produces an aesthetic impression through the eye [Art.2 para 1] )  Registration  Requirements of novelty, industrial applicability and creativeness  Must not be liable to harm public order or good morals (Art.5)  Can have “secret registration”: secret for maximum of 3 years after registration (Art.14)  Period of rights: 20 years from date of registration (Art.21) 51 2017 Designs - Design Law/Act (Law No. 125, 1959) Application procedure 1. Submission of application to JPO 2. Formality check 3. Substantive examination 4. Decision of registration 5. Registration 6. Publication in Design Gazette 7. (Appeal for invalidation) 8. (Appeal examination) 9. Decision of invalidation / Decision of maintenance 10. (Appeal to the Intellectual Property High Court) 4. Notification of reasons for refusal 5. Written argument / amendment 6. Decision of registration / decision of refusal 7. Appeal against decision of refusal 8. Appeal examination 9. (Appeal to the IP High Court) 52 2017 14  Unfair Competition Prevention Act or translated as The Law Against Unfair Competition (Law No. 47, 1993) 不正競争 防止法 53 Trade secrets 2017 Reference list Web site of the Intellectual Property High Court (last visited on 12 May 2017) Web site of the Japan Patent Office (last visited on 12 May 2017) Tsuyoshi Yamada, Yo Ota, and Kenichi Masuda, Atarashii Bijinesu Ho (New Business Law) , Tokyo: Koubundou 2006. Edward S. ‘Ted’, Johnson Jr., “Intellectual Property and Licensing” in Gerald Paul McAlinn (ed) Japanese Business Law (The Netherlands, Kluwer, 2007). Hiroshi Oda, Japanese Law , 3rd edition, Oxford 2009. Kenya Tanaka and Miwako Kumagai, “Japan” in World Trademark Yearbook 2006 , pp.225-234. Peter Ganea, Christopher Heath and Hiroshi Saito, Japanese Copyright Law: Writings in Honour of Gerhard Schricker , Kluwer 2005. Masayo Kataoka, “Partial revision of the Copyright Act” (2005) 22 Ritsumeikan Law Review , 158. Anderson Mōri & Tomotsune, Introduction to Japanese Business Law & Practice 2nd edition, Tokyo: LexisNexis 2014 The above slides were (unless otherwise stated) prepared with use of information from the sources listed below: 54 2017