1992 (o) No. 1443

• Formal Judgment
• Reasons the first/ the second/ the third/ the rest/

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 follows

1. With regard to that part of the claim of appellee King Features Syndicate, Inc. which demands that the sale of neckties bearing the design as shown on the accompanying sheet 1 be enjoined and that the said design be stricken off from the neckties appellant owns, we reverse the judgment of the court below and set aside the judgment of the court of the first instance.
2. That part of the appellee's claim that pertains to the preceding paragraph is dismissed.
3. The rest of appellant's appeal against the appellee is dismissed.
4. Appellant's appeal against the other appellees is dismissed.
5. The total costs of litigation between the appellant and appellee King Features Syndicate, Inc. shall be divided into five parts, Two parts shall be borne by appellee, and the rest by appellant, and costs of the appeal mentioned in the preceding paragraph shall be borne by appellant.

I. An outline of the facts lawfully determined by the court below is a s follows:

1. Appellee King Features Syndicate, Inc. (hereinafter called "King Features") and an American corporation of the same name King Features Syndicate, Inc. (hereinafter called "old King Features") which is not a party to this litigation began to publish serially or otherwise in newspapers or books in the United States on January l7, l929 cartoons, each complete by itself, under the title "The Simple Theater" in which Popeye and other characters appeared. Those cartoons were created by their employees within the scope of their employment. The cartoon that appeared in the New York Journal on the said day was the first to be published (hereinafter called "the first product"), and its contents were as shown on the accompanying sheet 2. Popeye was the hero in the Simple Theater, and he was represented as a sailor in a sailor's uniform with a sailor's cap on his head , with a pipe in his mouth and with an anchor tattoo on his arm, who exhibits superhuman power when he eats spinach.
2. The copyright in the series of cartoons was taken over by appellee Hearst Corporation (hereinafter called appellee Hearst) when old King Features was merged into appellee Hearst, and then it was assigned by appellee Hearst on December 31, 1943 to appellee King Features which was formed that day. Appellee King Features, since 1944 until the present or at least until April 28, 1989, has had its employees create, within the scope of their employment, cartoons in which Popeye and other characters appear, as a sequel to the said series of cartoons, and has been publishing them serially or otherwise in newspapers or books (the whole series of cartoon s created by the employees of old King Features and appellee King Features hereinafter called "the instant cartoons"). Old King Features registered its copyright in the first product out of the instant cartoons on February 25, 1938. Appellee King Features registered its renewal in its name on February 10, 1956.
3. Appellant has been selling neckties bearing the design as shown on t he accompanying sheet l (hereinafter called "the instant design l") since May 1982.
II.
1. In the instant case appellee King Features asserts as follows and by virtue of its copyright demands as injunctive relief against appellant t hat the sale of neckties bearing the instant design l be enjoined and that the said design be struck off from the neckties appellant owns:

(i) Seeing that Popeye, the hero in the instant cartoons, that has been consistently depicted through those series as regards his distinctive features, personality, etc. is a copyrightable work as an independent character distinct from the instant cartoons, the instant design l as a copy of Popeye as such character infringes the copyright in the work. (ii) Even if a character does not qualify as an independent copyrightable work, a copyright accrued with each new serial complete-by-itself cartoon within the instant cartoons. The instant design l as a copy of the picture of Popeye in each of those cartoons infringes the copyright in each cartoon.

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.

2. The court below, based on its following findings, granted injunctive relief as regards the instant design l to appellee King Features on the strength of its copyright in the instant cartoons:

(i) Popeye as a character cannot be a distinct work independent of the instant cartoons. (ii) But the instant design l is a copy of the picture of Popeye the hero in the instant cartoons. (iii) As regards the instant cartoons, a copyright accrues with each serial cartoon, and the period of protection for them runs from the respective times of their publication. Even if, therefore, the period of copyright protection for the first product expired with the passage of May 21, 1990, this is not necessarily true of some of the succeeding products. (iv) Even if a picture of Popeye the hero with his distinctive features appeared in the first product, the copyright in any of those succeeding products for which the period of protection has not expired affords a basis for the copyright owner's seeking injunctive relief.
III. However, we cannot affirm part (iv) of the judgment of the court below for the following reasons:

1. Our Copyright Act defines a work as "a production in which thoughts or sentiments are expressed in a creative way" (Sec. 2-1-1). In the case of serial complete-by-itself cartoons in which a character is repeatedly depicted with distinctive features such as his or her name, looks, role etc ., each of those cartoons is a work. But a character independent of those concrete cartoons does not qualify as a work, because such a character is an abstract expression, an ideal character as a product of sublimation of persona dramatis expressed in concrete form in those cartoons; it is not a concrete expression, nor is it a production in which thoughts or sentiments are expressed in a creative way. With regard to each serial complete-by-itself cartoon, therefore, a copyright infringement is possible. We have to know, therefore, which specific serial cartoon is involved in any copyright infringement claim.
2. In a series of cartoons, succeeding cartoons generally have, besides t he basically same original idea and setting, a hero and other characters with the same looks, personality and other features as in preceding cartoons, and add new plot s or new characters. In such a case, a succeeding cartoon, as it is to be considered as an adaptation of a preceding one, is a derivative work to which a preceding cartoon is the original work. It is proper that the copyright to a derivative work should extend only to newly added original parts, not to parts common to or identical in substance with the original work, since the reason for giving copyright protection to a derivative work as a work independent of the original work is that it has added original elements to the original work (Sec. 2-1-11), while its common parts, devoid of any new elements, do not justify such protection.
3. No doubt the period of copyright protection runs in regard to the respective works independent of each other. But so long as a character in a succeeding cartoon is identified with the character in a preceding one, the period of protection for the latter should apply to the former, so far as that particular character is concerned. If that period has expired, it necessarily follows that the owner of a copyright in the succeeding cartoon cannot stand on it, even if it has not yet lapsed.
4. Now copying a work means reproducing the original text of an existing work to such an extent that its contents and form can be perceived (See S up. Ct. 1975 (o) No. 324, Sup. Ct., Sept. 7, 1978, 1st Petty Bench, Civ . L. R., Vol. 32, No. 6, p. 1l45). We hold, however, that a third person' s product can be condemned as a copy even though it has not gone to the extent of being identical with the picture of a character in a cartoon in all its details; it is enough if its identity is recognizable from its features.
5. On the basis of the foregoing, we now proceed to go into the instant case. The first product, as the court below has found, presents from the third to the fifth frame the hero Popeye with a sailor's cap on, in a sailor's uniform, with a pipe in his mouth, and with an anchor tattoo on his arm. The instant design 1 is a picture of a sailor with a sailor's cap on, in a sailor's uniform, with a pipe in his mouth standing with a knot of swollen muscles on his bent right arm. Above and below the picture are the word "Popeye" and its Japanese version. In this picture of the instant design l we can recognize Popeye the hero in the first product , so that it is a copy of the picture of Popeye, and infringes the copyright in the first product.
Japan has been under an obligation to give the same protection to works of a citizen of the United States of America as to works of a Japanese national by virtue of the Berne Convention since March 1, 1989 and the universal copyright convention before then (Copyright Act, Sec. 6-3). Now the cartoon in the instant case is a work made for hire, for which the period of protection is 50 years. The period of copyright protection for the first product published on January 17, 1929 ran from January l, l930, the year following the year of publication, expired with the passage of May 21, l990, 3794 days added as the additional period of protection for works of U. S. A. citizens under Sec. 4 -2 of the Law making special exceptions for the Allies and nationals of t he Allies.

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.


IV. It follows as a logical consequence that the court below erred in interpretation and application of law and thereby deviated from law, when, based on a different view, it held that the copyright in some of the succeeding products for which the period of copyright protection has not yet expired affords good grounds for enjoining appellant from using the instant design l, and that it is proper to grant the claim of appellee King Features that by virtue of its copyright the sale of neckties bearing the instant design l be enjoined and the design be struck off from the neckties appellant owns. As the reason for appeal is well stated, and there is no need to go into the other reasons for appeal, the original judgment can not escape being reversed with regard to the part pertaining the enjoining of the sale of neckties bearing the instant design l and the striking off of the design from the neckties appellant owns. And with regard to the said part we set aside the judgment of the first instance, and dismiss that part of appellee's claim.

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.

1. 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.
2. 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.
3. 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.

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.

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.

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
Justice	Mikio Ono
Justice	Hisako Takahashi
Justice	Mitsuo Endo
Justice	Kazutomo Ijima