|Appellant||K. K. Matsudera
5-5-8 Abiko, Sumiyoshiku, Osaka City
represented by Yoshiji Matsudera Representative Director
|Counsel for Appellant||Kenichi Suemasa, Attorney at Law
Yukio Kano, Attorney at Law
Kyoichi Sato, Attorney at Law
Tsuneo Mizusawa, Attorney at Law
Masaki Hayashi, Attorney at Law
|Subordinate Counsel for Appellant||Yoichiro Ito, Attorney at Law
Sawako Takemoto, Attorney at Law
Miyuka Ishii, Attorney at Law
|Appellees||King Features Syndicate, Inc.
235 East 45th Street, New York, N. Y., U. S. A.
represented by Jodie W. King
The Hearst Corporation
represented by Jodie W. King
Yugen-kaisha American Features
represented by Keirokuro Nemoto Director
|Counsel for the three appellees||Kenji Yoshitake, Attorney at Law
Iwao Kamiya, Attorney at Law
|Adviser to the three appellees||Sakae Kikuchi, Patent Lawyer|
With reference to the Tokyo High Court cases, l990 (ne) No. 734 and No. 2007 in which on koso appeal and incidental appeal a claim for an injunction against a copyright infringement was reviewed inter alia, the judgment the court rendered on May l4, l992 was appealed by appellant for a reversal in part, and by appellees for dismissal of the instant jokoku appeal. Now the Court decides as followsFormal Judgment
In rebuttal of the foregoing, appellant contends as follows: (i) The instant cartoons are works made for hire, and the first product was published on January l7, 1929, with the result that the period o f copyright protection for it expires with the passage of May 21, 1990. (ii) If a character is an independent work, Popeye as a character is also a work made for hire. As the period of copyright protection for it run s from the time the first product was published in which Popeye made his first appearance in the instant cartoons, it expires with the passage o f the said day. (iii) Even assuming that a copyright accrued with each serial cartoon within the instant cartoons, and that the period of copyright protection for them runs from the respective times of their publication, the copyright in cartoons published serially or otherwise in newspapers or books after the first product (hereinafter called "succeeding product (s)") can be asserted only with regard to creative parts newly added to such succeeding products. (iv) In the instant case a picture of Popeye the hero with his distinctive features appeared already in the first product, and the pictures of Popeye in succeeding products are nothing but its copies. Since the instant design l does not contain any creative parts newly added in succeeding products, there is no reason why the copyright in succeeding products should not be a bar to appellant's use of the instant design l.
It is the finding of the court below that the instant design l simply
has all the features of the picture of Popeye in the first product and
has no other creative expression whatever, we cannot say that it infringes
the copyright in succeeding products, even if there are some of them for
which the period of protection has not yet expired. Thus appellee King
Features can no longer enjoin appellant from using the instant design l.
I. In the instant case appellee King Features, in its damages claim on the strength of its copyright requests that damages be awarded to it for the loss it suffered from appellant's sale of neckties bearing the instant design from May 31, 1982 to May 31, 1984. Appellant counters with the following defense of prescriptive acquisition of the right to copy the instant design l as follows:
(i) Zenji Matsumoto, with regard to a trademark formationally identical with the instant design l, applied for trademark registration on June 26, 1958, and got the establishment of the trademark right registered on June 12, 1959 (Registration No. 536992) (the trademark right hereinafter called "the instant trademark right," and the trademark "instant trademark"). On March 4. 1971 he assigned the instant trademark right to Osaka Sankei, the assignment being duly registered, and on July 30, l984 the company assigned the instant trademark right to appellant, the assignment being duly registered.
(ii) Matsumoto and Osaka Sankei had been continuously exercising, along with the trademark right, the right to copy the instant design l since June 26, 1958, with the result that on June 26, 1978 with the passage of 20 years required for acquisitive prescription Osaka Sankei acquired the right to copy the instant design l .
(iii) Appellant took over from Sankei Osaka the said right to copy, together with the instant trademark right.
II. The court below rejected appellant's defense of prescriptive acquisition on the following ground: (i) It is true that the right to reproduce a work under Sec. 21 of the Copyright Act is included in "any right of property other than ownership" within the meaning of Art. 163 of the Civil Code. (ii) When applying for trademark registration with respect to the instant trademark on June 26, l958, Matsumoto did not obtain the consent of appellee King Features to his making the instant design l by copying the picture of Popeye the hero in the instant cartoons. Therefore, Matsumoto's reproduction of the instant design l lacks "an intention to do so on his own behalf."
III . We disagree with the court below in respect to part (ii) of its holding, but we also find unfounded appellant's defense of prescriptive acquisition for the reason stated below, so that in the last result the error of the above stated part of the original judgment does not affect the conclusion.
- As the right to reproduce a work under Sec. 21 of the Copyright Act falls within "any right of property other than ownership" within the meaning of Act. 163 of the Civil Code, a person who peaceably and openly exercises continuously the right to reproduce the whole or part of a work with in an intention to do so on his own behalf can acquire the right of reproduction by acquisitive prescription. Seeing that the right of reproduction is a right to exclusively control the reproduction of a work, a proper interpretation would be that prescriptive acquisition conditioned on continuous exercise of the right of reproduction requires a continuous state in which the person has an exclusive right to reproduce the whole or part of a work, or a continuous state in which the person, outwardly like the copyright owner, exercises the right of reproduction, to the exclusion of all others. And the person who claims prescriptive acquisition has the burden of proof.
- On the other hand, "an intention to do so on his own behalf" within the meaning of Art. 163 of the Civil Code is outwardly and objectively determined by the fact that constitutes the cause of exercise of a right of property. A quasi-possessor who exercises a right of property on the basis of a title whose nature is such that he is deemed to have no such intention should be deemed to lack such intention. Now we will apply this to the instant case. From the fact that Matsumoto made the instant design l without the permission of appellee King Features, the court below concluded that he exercised a right of property on the basis of a title whose nature is such that he is deemed to have no intention to do so on his own be half (on the contrary, if he had done so with the appellee's permission, he could be said to have had no such intention). Thus the court proceeded to reject Matsumoto's defense of prescriptive acquisition on the ground of lack of an intention to do so on his own behalf. This ruling suffers from an erroneous interpretation and application.
- According to the findings of the court below, however, during the prescriptive period claimed by appellant (20 years beginning on June 25, 1958 ) appellee King Features were publishing in the United States the instant cartoons serially or otherwise in newspapers and books; appellee Hearst that was granted by the said appellee the exclusive right to use the copy right in the instant cartoons concluded in Japan license agreements with many enterprises for their use of the instant cartoons, with the result t hat under those agreements there came an extensive flow into the market o f goods such as confectionery, stationery, closing, sundries, and the like bearing the picture of Popeye. Moreover, as stated above, the picture of Popeye in the instant design l, devoid of any marked distinctive characteristics in its pose and others, has nothing recognizable that can distinguish it from other Popeye pictures in genera l. Neither Matsumoto nor Osaka Sankei can be said to have been solely exercising the right to reproduce the picture of Popeye, even if we confine our remark to the picture in the instant design l, to say nothing of Popeye pictures in general. Thus we find appellant's defense of prescriptive acquisition unfounded.
IV. It follows that because the instant design l as a copy of the picture of Popeye in the first product infringes the copyright in it as already stated, appellant is liable as copyright infringer for the loss appellee King Features suffered through appellant's sale of neckties bearing the instant design l during the period beginning on May 31, 1982 when the period of protection had not yet expired and ending on May 31, 1984. Thus because the holding of the court below can be affirmed in the conclusion, the reason for appeal is untenable in the final analysis. We will not support it.With regard to the first part of the third reason for appeal of the appellant's above named counsel:
In the court below, appellee Hearst and appellee Yugen-kaisha American Features demanded that the sale of mufflers bearing the design as shown in the first list (5) attached to the judgment of the court of the first instance (hereinafter called the instant design 2) and neckties bearing the instant design l and design 2 be enjoined and that those designs be stricken off mufflers and neckties. They invoked the old Unfair Competition Prevention Act (before its total revision by Law No.47 of l993), Art. 1 -1-1. Appellant by way of defense claimed that since its use of those designs is the use of the instant trademark right, it is by virtue of Art. 6 of the Act beyond the reach of any injunction appellees may get.
In this Court, however, the appellees contend with regard to the instant trademark right that the registration of the trademark in question has been invalidated by a finalized decision. Their contention was confirmed by a copy of the decision No. 19123 (1983) and a certificate of an entry in the original trademark registry submitted by them, which show that on January 24, 1995 a decision was given to nullify the trademark by the Trademark Act, Sec. 46-1-1 as falling under Sec. 4-1-7, that the decision became final on April 3, 1995, and that the trademark was stricken from the registry on June 27, 1995. This fact constitutes a ground for a new trial. Thus appellees' contention well merits our serious consideration, whereas since the trademark did not exist ab initio, appellant's defense is unquestionably unfounded and unjustified.
Appellant's argument in its defense, therefore, challenging the lawfulness of the judgment of the court below has to be rejected without so much as going into its merits.With regard to the rest of the reasons for appeal:
As to the points argued, we can approve the findings and holding of the court below in the light of the evidence and record cited by the original judgment, and find no such error in the process as was denounced. We cannot support appellant's argument, because it blames the factfinding which is exclusively within the power of the court, and, based on its own view, calls the original judgment erroneous, or attacks it on a ground not given below.With regard to the part of the claim of appellee King Features which demands that the sale of neckties bearing the instant design l be enjoined and that the said design be stricken from the neckties appellant owns, we have to reverse the original judgment and set aside the judgment of the court of the first instance. And we have to dismiss that part of appellee's claim and to dismiss the rest of appellant's appeal against the appellee and to dismiss its appeal against the other appellees.
Accordingly. the Court decides as in the formal judgment in accordance with Arts. 408, 396, 386, 384, 96, 95,89 and 92 of the Code of Civil Procedure.
This decision is the unanimous opinion of all the justices.
The First Petty Bench of the Supreme Court
|Presiding Justice||Masao Fujii|