• HOME › 
  • Trademark Q&A › 
  • Is This an Infringement on an Intellectual Property Right?

Trademark Advice for Individuals and Small and Medium-sized Enterprises

 

Is This an Infringement on an Intellectual Property Right?

 

  • 1. In Case Where Parody Item Which Imitates Character of Famous Product or in Service-Providing Screen is Sold
  • Most of creations in recent years have been considered as being conceived from the foregoers’ creations. It can be said that parodies are somehow related to the development of culture. However, though parodies also need to be protected to a certain extent, they may constitute infringement of intellectual property rights.
  • (1) In a case where the parody item imitates a character which is registered as a design (in the case of screen, an image design), sale of the parody item is highly likely to be regarded as constituting infringement of the design right of that character. This is because the sale is likely to be regarded as assignment of a design similar to another person’s registered design as a business.
  • However, in a case where the parody item is not recognized as being identical or similar to the character, the parody item will not be regarded as constituting infringement of the design right of that character. Whether the parody item is identical or similar to the character is determined based upon whether a person, who is involved in transaction of the character, feels that the parody item is seemingly identical or similar to the character (Article 24(2) of the Design Act).
  • (2) In a case where (i) the character is a copyrighted work (in the case of screen, a graphical copyrighted work) and (ii) the parody item was created by merely imitating the copyrighted work without making any improvements thereto, the creation of the parody item is likely to be regarded as constituting infringement of the reproduction right of the copyrighted work (Article 21 of the Copyright Act), and an act of selling the parody item is likely to be regarded as constituting infringement of the transfer right (Article 26(2) of the Copyright Act).
  • On the other hand, in a case where the parody item contains some improvements but still includes the features of the copyrighted work, the creation of the parody item is likely to be regarded as constituting infringement of the adaptation right of the copyrighted work (Article 27 of the Copyright Act), and an act of selling the parody item is likely to be regarded as constituting infringement of the transfer right (Articles 28 and 26(2) of the Copyright Act).
  • In such a case, the creation of the parody item is highly likely to be regarded as further constituting infringement of the integrity right of the copyrighted work (Article 20(1) of the Copyright Act) or as being made by an act that constitutes infringement of the integrity right of the copyrighted work (Article 113(1)(ii) of the Copyright Act).

 

  • 2. In Case Where Pirated Product was Purchased for Use in Business Without Knowledge
  • The “pirated product” refers to a product produced by reproducing a copyrighted work without consent of the copyright owner of that copyrighted work.
  • Purchasing and use of a copyrighted work for the normal usage of that copyrighted work do not constitute copyright infringement. Note, however, that a copyrighted work of computer programming is subjected to special handling. More specifically, in a case where a person who purchased a product knew, at the time of the purchase, that the product was produced by pirating a copyrighted work of computer programming, an act of using the pirated work is likely to be regarded as constituting infringement of the copyright of the pirated work (Article 113(2) of the Copyright Act).
  • Therefore, in a case where (i) a person who purchased a product did not know, at the time of the purchase, that the product was produced by pirating a copyrighted work of computer programming and (ii) the person later on comes to know that fact, the act of using the pirated work will not be regarded as constituting infringement of the copyright of the pirated work as long as he/she privately uses the pirated work.

 

  • 3. In Case Where Free Application Imitating System of Commercially-Available Game or Having Title Similar to That of Commercially-Available Game is Distributed with Advertisements
  • Since a game system is highly likely to be protected as a copyrighted work of computer programming, attention should be paid to the following points (1) through (3):
  • (1) “Imitation of System”
  • In a case where the contents of the free application are identical to those of the original game system, the creation of the free application is likely to be regarded as constituting infringement of the reproduction right of the original game system (Article 21 of the Copyright Act).
  • In a case where the free application differs in content from the original game system but was produced by merely making minor changes to the original game system, the creation of the free application is likely to be regarded as constituting infringement of the adaptation right of the original game system (Article 27 of the Copyright Act).
  • Furthermore, in a case where the free application was produced by making modifications in contradiction to the intent of the author of the original game system, the free application is likely to be regarded as constituting infringement of the integrity right of the original game system (Article 20(1) of the Copyright Act).
  • (2) “Imitation of Title”
  • Titles of works are usually not protected as copyrighted works. However, since Article 20(1) of the Copyright Act forbids making modifications to a title in contradiction to the intent with which that title was created, an act of imitating a title of a copyrighted work is likely to be regarded as constituting infringement of the integrity right of the copyrighted work.
  • (3) “Distribution of Free Application with Advertisements”
  • Since the free application is “distributed”, the free application may be in a state where indefinite and many people can access to the free application via the internet.
  • In such a case, the distribution of the free application is likely to be regarded as constituting infringement of the public transmission right of the original game system (Article 23(1) of the Copyright Act).

 

  • 4. In Case Where T-shirt with Logo “Victory of Hanshin” Printed Thereon is Produced and Sold Despite Presence of Prior Trademark “Victory of Hanshin” (“Hanshin” refers to a famous baseball team from the Kansai region of Japan)
  • Mere obtainment of a trademark right does not allow you to have an exclusive right to use your trademark in all products and services.
  • For example, in a case where a mark constituted by characters “Victory of Hanshin” is registered as a trademark and T-shirt is selected as one of its designated goods, an act of producing and selling a T-shirt with the logo “Victory of Hanshin” printed thereon, as described in the above caption, is likely to be regarded as constituting infringement of the trademark right.
  • On the other hand, the following acts (i) and (ii) will not be regarded as constituting infringement of the trademark right:
  • (i) An act of producing and selling a product (e.g., cup or plate) with a logo “Victory of Hanshin” which product is not related to (is not similar to) T-shirt; and
  • (ii) An act of using such a cup or a plate in a coffee shop.
  • That is, in order to have a trademark registered, it is necessary to select in advance designated goods and services for which your trademark is to be used. This means that, in a case where a third party uses your trademark for a product or a service which is not related to the designated goods or services selected for your trademark, the use will not be regarded as constituting infringement of your trademark right.
  • However, in a case where a third party uses a trademark for a product or a service which is not related to the designated goods or services selected for the that trademark but the trademark is famous as indication of, for example, a product or a business of a specific person (or organization), the use is likely to be regarded as violating the Unfair Competition Prevention Act.

 

  • 5. In Case Where Person Draws and Sells Manga in Which Famous Trademark of Unrelated Company Appears
  • (1) As described above, in a case where drawing and sale of the manga are not related to the designated goods or services selected for the famous trademark, the act of the person will not be regarded as constituting infringement of the trademark right. However, in a case where the trademark is famous as indication of, for example, a product or a business of a specific person (or organization), the act may be regarded as violating the Unfair Competition Prevention Act.
  • (2) In a case where the famous trademark is a copyrighted work, drawing and sale of the manga are highly likely to be regarded as constituting infringement of the reproduction right (Article 21 of the Copyright Act) and the transfer right (Article 26(2) of the Copyright Act) of that copyrighted work. Furthermore, in a case where the manga is made downloadable through the internet, the act is highly likely to be regarded as constituting infringement of the public transmission right of the copyrighted work (Article 23(1) of the Copyright Act).