1. 1 1 AIPLA Firm Logo American Intellectual Property Law Association Recent IP Case in Japan Interplay of Protection by Copyright and by Design Patent Chihiro Onishi YUASA and HARA IP in Japan Committee Meeting AIPLA Annual Meeting 2015 1

2. 2 2 AIPLA Firm Logo Case name : 2014 (Ne) No. 10063 Appellant （ Copyright Holder, Plaintiff ） Peter Opsvik AS Stokke AS Appellee （ Defendant ） Katoji Co., Ltd. Judgment awarded on April 14, 2015 Intellectual Property High Court 2

3. 3 3 AIPLA Firm Logo 1. Summary of Dispute This is a case where plaintiff asserted that the shape of a chair of defendant is very similar to the shape of a chair of plaintiff, and that production and sale of defendant’s chair infringes copyrights of plaintiff. 3

4. 4 4 AIPLA Firm Logo 2. Legal Issue Requirement of protection of a design for/in an industrial product under Copyright Law 4

5. 5 5 AIPLA Firm Logo 3. Court opinion The court opined (1) that the shape of a chair can be protected by both Copyright Law and Design Patent Law without limitation, but (2) that the shape of defendant’s chair is not so similar as to infringe plaintiff’s copyrights. 5

6. 6 6 AIPLA Firm Logo 4. Plaintiff’s product 6

7. 7 7 AIPLA Firm Logo 7

8. 8 8 AIPLA Firm Logo 5. Defendant’s product (1) There are 5 other kinds of defendant’s product, but they are more or less similar to the product above. 8

9. 9 9 AIPLA Firm Logo 9 9

10. 10 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Article 2 Section 1 Subsection 1 (Definition) “Work” means a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain. 10

11. 11 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Article 10 Section 1 As used in this Law, “works” shall include, in particular, the following: … (iv) paintings, engravings, sculptures and other artistic works. 11

12. 12 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Article 2 Section 2 As used in this Law, “artistic work” includes a work of artistic craftsmanship. 12

13. 13 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law An applied art is protected without doubt if it is within the scope of “a work of artistic craftsmanship” under the Copyright Law. What if an applied art does not fall within “a work of artistic craftsmanship”? - The answer is not clear. 13

14. 14 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law What are works of an applied art that fall within the scope of “a work of artistic craftsmanship?” - Under Japanese culture and law, pottery is typical What are works of an applied art that do not fall within the scope of “a work of artistic craftsmanship?” - Designs for fabric material - Industrial designs (for various products), etc. 14

15. 15 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Questions -Kimono designs? -Dolls made for display and appreciation? -Designs for T-shirts? - Designs of figures or toys? -Designs of furniture? -Designs of religious instruments? 15

16. 16 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Majority view “A work of artistic craftsmanship” is an illustrative enumeration of an artistic work. An applied art can be protected by Design Patent Law, and to the extent that it falls within the scope of artistic craftsmanship or it can be equated with a pure art, the applied art can be protected by Copyright Law. Others should be protected by Design Patent Law or by the Unfair Competition Law, but not by Copyright Law. 16

17. 17 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Minority view (1) “A work of artistic craftsmanship” is a limitative enumeration of an artistic work – other applied art cannot be protected under the Copyright Law. An applied art not falling within the scope of artistic craftsmanship can be protected by Design Patent Law or by the Unfair Competition Law. An administrative agency takes this view, but the courts do not. 17

18. 18 AIPLA Firm Logo 6. Interplay of Copyright Law and Design Patent Law Minority view (2) “A work of artistic craftsmanship” is an illustrative enumeration of an artistic work – other applied art could be protected under Copyright Law even if it falls outside of artistic craftsmanship and is not equated with a pure art. An applied art can be protected by any one of the following: Copyright Law, Design Patent Law, or Unfair Competition Law. 18

19. 19 AIPLA Firm Logo 7. What is new in this judgment? This is the first judgment in which the court adopted the Minority view No.2 above. 19

20. 20 AIPLA Firm Logo 8. Reasoning for the Court Opinion (1)An artistic craftwork means a craftwork whose main purpose is to be appreciated by people as is the purpose of pictures, engravings, and sculptures. (2)Appel ｌ ant=Plaintiff’s product is a chair for infants. The main purpose of it is to be used practically. Therefore, the chair does not fall within the scope of artistic work. (3)Appellant=Plaintiff’s product is not a work of artistic craftsmanship. 20

21. 21 AIPLA Firm Logo 8. Court Opinion (1) - Rules on protection of applied art (1)It is not proper to flatly deny the protection of Copyright Law for an item of expression (work) just for the reason that it is used for practical purposes or it is used in an industry. (2)The work of an applied art can be protected as an “artistic work” if it meets the requirement of “work” as set forth in Article 1 Section 1. (3)An item needs to be a production in which “thoughts or sentiments are expressed in a creative way.” 21

22. 22 AIPLA Firm Logo (4)“In a creative way” means that the character/personality of a creator is exercised in the expression, although originality in a strict meaning is not required. (5)If the expression is common, the character/personality of a creator is not exercised in the expression, and it cannot be evaluated that it is expressed “in a creative way.” (6)It is not proper to set a higher standard of creativity to be applied to a work of applied art. Whether the character/personality of a creator is shown (exercised) in a work should be evaluated on a case by case basis. 22

23. 23 AIPLA Firm Logo (1)Plaintiff’s product is a work in which the character/personality of the creator is exercised in that (i) the legs of the chair are composed of a pair of parts A, both parts G and F are inserted and fixed in the gutters made inside of parts A, and (ii) parts A are attached to parts B with the surface of parts B, in a manner so that the surface is cut diagonally at an angle of 66 degrees and parts A touch the floor, and therefore, the thoughts or sentiments of the creator are expressed in a creative way. 23 9. Court Opinion (2) - Is Plaintiff’s product copyrightable?

24. 24 AIPLA Firm Logo (2) Plaintiff’s product is an “artistic work” according to the meaning of Article 2 of the Copyright Law. 24

25. 25 AIPLA Firm Logo 10. Ruling of the court (3) – Denying defendant’s view (1)Defendant argues that for a work of applied art to be protected by Copyright Law, the work should have artistic creativity that renders the work object of (art) appreciation if the aspect of utility is separated from the work. (2)The court did not agree with defendant’s argument above because (i) it is not proper to set a higher standard of creativity universally applicable to applied arts without such language in the statute, (ii) the concept of “artistic” is very subjective, each individual may have a different interpretation, and a common understanding is often hard to reach even if objective observation is applied, (iii) while a study was made into the process of the law-making of the current Copyright Law aiming to separate the scope to which the Design Patent Law applies and the scope to which the Copyright Law applies, the protection of applied arts is left to further investigation by later generations, 25

26. 26 AIPLA Firm Logo 10. Ruling of the court (3) (iv) the purpose of the Design Patent Law and Copyright Law is different, and no exclusivity or priority is given to Design Patent Law, (v) the requirement for obtaining protection under the Design Patent Law is harder than under Copyright Law, but the protection under the Design Patent Law is stronger, and as such the incentive to obtain design patents will not be lost even if both laws cumulatively cover items of a certain scope. (3)For the reasons above, reasonable grounds cannot be found in applying stricter standards in recognizing creativity (copyrightability) for works of applied art. 26

27. 27 AIPLA Firm Logo 11.Ruling of IP High Court of 2014 Aug. 28 In the case of applied art… (1)A work of artistic craftsmanship is included in artistic work (Copyright Law Article 2 Section 2). (2)Article 2 Section 2 of the Copyright Law illustratively enumerates the scope of the work of applied art to be protected by Copyright Law (Supreme Court 2000.9.7 and many judgments of lower courts). (3)Works of artistic craftsmanship which are mass produced should be protected as artistic works if they are produced for the purpose of appreciation because those mass produced and those made on a small scale or custom made are no different when they are observed objectively. 27

28. 28 AIPLA Firm Logo 11 Ruling of IP High Court of 2014 Aug. 28 In the case of applied art… (4)Even in the case of an applied art for practical use, if the part holding an artistic element can be acknowledged by separating that portion from the portion having practical purposes, that artistic portion can be recognized as a work of the same kind as a work of pure art, and that portion should be protected as an artistic work as set forth in Copyright Law Article 2 Section 2. (5)If the part holding an artistic element cannot be acknowledged by separating that portion from the portion having practical purposes, the entire work cannot be recognized as a work of the same kind as a work of pure art, and the work cannot be protected as an artistic work as set forth in Copyright Law Article 2 Section 2.. (6)With the particular products argued in the case, protection for some products was denied for the reason that they were not produced for appreciation or that the artistic portion cannot be separated from the practical portion, and protection for the others was denied because they are so common. 28

29. 29 AIPLA Firm Logo Thank you very much! Chihiro Onishi YUASA and HARA E-mail: onishi@yuasa-hara.co.jp 29