Translated by Edward G. Durney
Case No. Heisei 1 (ra)-327--
A kokoku appeal against a denial of a petition for a provisional injunction to cease infringing of copyright.
Original decision --
Tokyo District Court Case Nos. Showa 63 (yo)-2531 and Showa 63 (yo)-2551
INDEX
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Appellant (Petitioner):
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Representative Director:
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Attorneys :
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Appellee (Respondent):
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Representative Director:
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Appellee (Respondent):
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Representative Director:
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I. The original decision is modified as follows.
- The Appellees may not reproduce or adapt the programs listed in sections 1 , 2, and 4 of Appendix III.
- Appellee Toyo Sokuki K.K. may not distribute the devices listed in sections 1-4 and 9 of Appendix II which incorporate the programs listed in sections 1, 2, and 4 of Appendix III, nor may it advertise or exhibit them for the purpose of distributing them.
- Appellee K.K. Nihon Technart may not distribute the devices listed in sections 1-4 and 9 of Appendix II which incorporate the programs listed in sections 1, 2, and 4 of Appendix III.
- The Appellant's other requests are denied.
II. The costs of the petition and of the appeal shall be divided in half, with the Appellant bearing one half and the Appellees bearing the remainder.
I) GIST OF THE APPEAL
II) ALLEGATIONS OF THE PARTIES
The fact that program CA-9 is an adaptation of program CA-7 II is clear from the following facts.
I. We find from Explanatory Exhibits A-7, A-23, A-26, and A-71 (ail of which are reports from the Appellant's representative) and Explanatory Exhibit A-55 (report of Makoto Karasawa), from which we can recognize the truth based on what was presented in the oral proceedings, that, at the initiative of the Appellant, Representative Director Kiyoshi Sugano and Director Makoto Karasawa, who were engaged in the business of the Appellant, created in the course of their duties the program described in section 4 of Appendix III (the MIC program) by about March of 1981 , the program described in section 1 or Appendix III (the temporary edition program ZA-FM II) and the program described in section 2 of Appendix III (the temporary edition program ZA-FX II) by about September of 1985, and the program described in section 3 of Appendix III (the program CA-7 II) by about March of 1986, and in addition, that the Appellant was selling the device described in section 4 of Appendix I which has ROM installed on its circuit boards incorporating a copy of the MIC program in about December of 1981 , the device described in sections 1 and 2 of Appendix I which has ROM installed on its circuit boards incorporating a copy of the temporary edition program ZA-FM II and the temporary edition program ZA-FX II in about February of 1986, each program being made public under their own name as being of their authorship. It is then clear that the copyright in the programs described in sections 1 to 4 of Appendix III belongs to the Appellant.
With regard to this point, the Appellees argue that because th e programs described in sections 1 to 4 of Appendix III were creat ed in the course of their duties by the Appellant's engineers in t he course of the business of Appellee Toyo Sokuki K.K. and at the initiative of Appellee Toyo Sokuki K.K., their copyright belongs t o Appellee Toyo Sokuki K.K., and that even were that not found to be true, because the devices described in sections 1 to 4 of Appen dix I were developed with Appellee Toyo Sokuki K.K. bearing the ex pense and with the Appellant doing nothing more than supervising t heir production based on the directions of Appellee Toyo Sokuki K. K., and because the programs described in sections 1 to 4 of Appen dix III were created exclusively for the devices described in sect ions 1 to 4 of Appendix I, Appellee Toyo Sokuki K.K. should be sai d to have been conveyed the copyright to the programs described in sections l to 4 of Appendix III through the conveyance from the A ppellant of the devices described in sections 1 to 4 of Appendix 1 . However, because we are not convinced even from Explanatory Exhi bit B-7 (a document entitled "Request for Manufacturing Study") an d Explanatory Exhibits B-32(1) and B-32(2) (a document entitled "D evelopment Material Provided to SSO from Toyo Sokuki K.K. at the T ime of the Request for Study of Zone Analyzer ZA-FX" and its conte nts) that the Appellant's Representative Director Kiyoshi Sugano a nd Director Makoto Karasawa created each of the above-mentioned pr ograms as the business of Appellee Toyo Sokuki K.K. or that an agr eement had be made, even impliedly, between the Appellant and Appe llee Toyo Sokuki K.K. to convey the copyright in the programs desc ribed in sections 1 to 4 of Appendix III: we cannot accept the abo ve argument of the Appellees.
II. In the past (according to 12 of Appellee Toyo Sokuki K.K.'s Brief), the Appellees distributed each of the devices described in Appendix I, which have ROM installed on their circuit boards incorporating a copy of each of the programs described in Appendix III, and the Appellees themselves recognize and do not dispute that advertising and exhibiting for the purpose of distribution was carried out. Accordingly, that alone makes it difficult to deny that there is a danger that the Appellees would in the future reproduce or adapt any of the programs described in sections 1, 2, and 4 of Appendix III, and a danger that they would distribute, or advertise or exhibit for the purpose of distributing, the devices described in sections 1 to 4 and 9 of Appendix II incorporating them.
With regard to this point, the Appellees argue that reproduction of the programs described in Appendix III had already ceased and there were plans to change to new programs, and have submitted a development commission agreement (Explanatory Exhibit B-37) dated December 20, 1988 indicating that a development agreement was entered into between the Appellees for programs to replace the temporary edition program ZA-FM II and the temporary edition program ZA-FX II. However, as it has not been demonstrated at all that a program which can be used in the devices described in sections 1 to 4 and 9 of Appendix II has been created by now by the Appellees and that these programs do not infringe the copyrights in the temporary edition program ZA-FM II, the temporary edition program ZA-FX II, or the MIC program, it would be premature to decide that the danger of the Appellees reproducing or adapting any of the programs of sections 1, 2, and 4 of Appendix had disappeared simply due to the single fact that a program development agreement was entered into between the Appellees.
III. Although there is no dispute between the parties that the Appellees are distributing each of the devices described in sections 5 to 8 of Appendix II which have ROM installed on its circuit boards incorporating a copy of the program described in Appendix IV (the CA-9 program) or that they are advertising or exhibiting for the purpose of distribution, the Appellant argues that program CA-9 is an adaptation of program CA-7 II.
However, in order to be able to decide that a program infringes the copyright in a program work, it is of course necessary that there be a part of the set of instructions of the program work that can be found to be original, and that the set of instructions of the later-created program be similar to the part of the program work which can be found to be original, but we must say that we are not convinced that the portion of program OA-7 II which the Appellant has indicated can be found to be original.
In other words, because for any program the code which expresses it is extremely limited and the relevant system (grammar) is also strict, if one attempts to cause a computer to function and obtain a certain result in the most effective manner, there will be more than a few portions where one cannot avoid the set of instructions necessarily being similar. Therefore, finding copyright infringement with regard to program works must be done with careful consideration, and according to Explanatory Exhibits B-39 (report of the representative of Appellee Toyo Sokuki K.K.) and S-41 to B-43 (report of the representative of Appellee K.K. Nihon Technart), from which we can recognize the truth based on what was presented in the ora[ proceedings, we find that the functions in the devices described in sections 5 to 8 of Appendix II of changing measuring modes, keyboard input, setting the measurement area, measuring, and writing in common memory, are all accomplished by hardware, and the appropriate operations for programs CA-7 II or CA-9 are only the printer portion (waiting for the measurement data, etc., to be written into common memory, reading it out and converting it to printer code, and outputting it); that because the set of instructions for the "processing routine for after data entry from the processor" is constrained by hardware, it must be essentially the same set; that both program CA-7 II and program CA-9 adopt a very common set of instructions for the "processing routine when printer operation is disabled" (in other words, the processing routine for waiting for the printer); and that because in the devices described in sections 5 to 8 of Appendix II 4000H and above is FRAM area, it is common sense to set the subroutine stack at the ideal partition of 4100H. Moreover, because the "procedural flow" itself in a program is an "arugorizumu" (algorithm), or in other words a "kaiho" (solution) as provided for in Article 10(3)(iii) of the Copyright Law, and is a portion which does not receive protection as a copyrightable work, it has no relevance to the originality of the program.
As stated above, in addition to it being difficult to recognize
any originality in the set of instructions in the portion identified
by the Appellant in program CA-7 II, if we also consider that
program CA-7 II is 12 kilobytes compared to 763 bytes for program
CA-9, and yet the similar portions of the two programs put forth
by the Appellant are no more than a very small number of bytes,
we simply cannot be convinced that program CA-9 is an adaptation
of program CA-7 II. Explanatory Exhibits A-81 (report of Makoto
Karasawa) and A-82 (report of the representative of the Appellant)
cited by the Appellant are insufficient to sway us in that decision.
Moreover, as the fact that the Appellees are distributing each
of the devices described in sections 5 to 8 of Appendix II, which
have ROM installed on their circuit boards incorporating a copy
of the program CA-9, or advertising or exhibiting them for the
purposes of distribution is not disputed by the parties is as
discussed above, it is appropriate to consider the danger that
the Appellees will reproduce or adapt program CA-7 II, and the
danger that they will distribute, or advertise or exhibit for
the purposes of distribution, the devices described in sections
5 to 8 of Appendix II which incorporate that program, to have
disappeared.
IV. Because of the above, there are grounds for the portion of the Appellant's petition in this case which relate to the programs described in sections 1, 2, and 4 of Appendix III, but there are no grounds for the portions which relate to section 3 of that Appendix. Accordingly, we modify the original decision, which differs in part in its conclusion from the above, as set forth in part 1 of the Order, and with regard to the bearing of the cost of the petition and the cost of the appeal, applying Articles 96, 89, 92, and 93 of the Code of Civil Procedure, we decide as set forth in the Order.
June 20, 1989
Tokyo High Court, Sixth Civil Division
Chief Judge Toshihiko Fujii
Judge Tamio Kasuga
Judge Yoshihiko Iwata
APPENDIX I
- 1. Zone Analyzer System ZA-FM II (temporary edition)
- Zone Analyzer System ZA-FX II (temporary edition)
- Colony Analyzer System CA-7 II
- Image Processing Minimum Growth Impeding Density (MIC) Measuring Device
All are manufactured by the Appellant
APPENDIX II
- Zone Analyzer System ZA-FM II
- Zone Analyzer System ZA-FX II
- Zone Analyzer System ZA-FM III
- Zone Analyzer System ZA-FX III
- Colony Analyzer CA-9A
- Colony Analyzer CA-9M
- Colony Analyzer CA-9F
- Colony Analyzer CA-9D
- Image Processing Minimum Growth Impeding Density (MIC) Measuring Device
All have a "TOYO" nameplate attached
APPENDIX III
- Zone Analyzer System ZA-FM II (temporary edition)
Object Program Appendix I- Zone Analyzer System ZA-FX II (temporary edition)
Object Program Appendix II- Colony Analyzer System CA-7 II
Object Program Appendix III- Image Processing Minimum Growth Impeding Density (MIC) Measuring Device
Object Program Appendix IV
However, I to 4 are references to the object program dump lis ts appended to the decision of the original court.
APPENDIX IV The program work described in the appended object dump list, which the Respondent Toyo Sokuki K.K. claims is currently used in the Colony Analyzer System CA-9.