Dayton Progress Japan, a subsidiary of Dayton Progress in Dayton, Ohio, USA (http://www.daytonprogress.com) was sued at the Tokyo District Court by a Japanese company, Punch Industry Co., Ltd. (http://www.punch.co.jp/english/en-topf.htm) in 2000 (H12-Wa-25382). The lawsuit involved a notice letter sent by Dayton Progress Japan to their customers, Mitsubishi Motors Corp. and Fuji Heavy Industry of "SUBARU."

The letter by Dayton Progress Japan requested the customers:

(1) not to buy or use a product of Punch for a press; and

(2) to inform Dayton Progress Japan about how many of the products they bought and how much they had paid;

because the product infringed a Japanese Utility Model patent.

The product of Punch apparently lacked an element of the claim that the patentee had added during prosecution to overcome a rejection based on prior art. Accordingly, the court concluded on January 30, 2003 that the act of notice by Dayton Progress Japan constituted unfair competition and there was negligence in the act because Dayton Progress Japan sent the notice too hastily.

According to Articles 4 and 7 of the Japanese Unfair Competition Prevention Law; a person who negligently infringes on the business interests of another person through unfair competition shall be liable to compensate for damages and may be ordered to restore the business reputation of that person. (YM)

Sunny Health (http://www.microdiet.co.jp: written in Japanese) is a company who manufactures and sells a powder-type diet food with the "MICRODIET" trademark. They started selling the diet food with the trademark in 1988 and intensively advertising the diet food on several famous Japanese magazines in 1990. Sunny Health had been continuing the intensive advertisement and sold more than 61 million bags of the diet food, when they sued HORUS Co., Ltd. (http://www.horus-jnl.co.jp: written in Japanese) and HORUS's associated companies at the Tokyo District Court in 2001 (H13-Wa-2721).

The defendants were selling a powder type diet food with "MICRO SILHOUETTE" trademark. Their "MICRO SILHOUETTE" trademark is properly registered at the Japanese Patent Office (JPO). The registration was made in 1997 and the defendants started selling their product with the trademark in the same year.

According to the Japanese Unfair Competition Prevention Law, your trademark is protected from somebody using a similar trademark on similar goods if your trademark is

1) famous, or

2) well known among consumers and the use of the similar trademark causes confusion.

The Tokyo District Court indicated in the decision made on February 20, 2003 that "MICRODIET" was not famous but it was well known, and the use of the "MICRO SILHOUETTE" trademark caused confusion. The court also indicated that the JPO's decision on "MICRO SILHOUETTE" during the prosecution of the registration should not bind the court when deciding whether the trademark caused actual confusion. (YM)

The Tokyo District Court found infringement on at least Japanese Patent #3012127 of Toshiba's five patents. There were four different types of massage chairs that Family, the defendant, sold in Japan, and the court found literal infringement on only two types of the chairs. However, the court held the infringement decision on the other two types of the chairs under the Japanese Doctrine of Equivalents.

The doctrine used for one of the two chair types in the court decision will be summarized below.

The following drawings show the structure of one of the defendant's chairs that does not literally infringe the patent. To see the patent, click here and input the patent number after inputting Kind Code "B" on the JPO's database.

The claimed invention requires air bags on both sides of each recess for the user's legs. However, the defendant's chair has only one air bag on one of the sides and a polyurethane pad on the other side. There is no literal infringement.

The court applied the Japanese Doctrine of Equivalents to the deference, using the following five tests:

Accordingly, the court concluded that the defendant's chair infringed the patent under the Japanese Doctrine of Equivalents. (YM)

Toshiba Tec (click here) sued Family Co. Ltd. (click here; written in Japanese) in 2001 at the Tokyo District Court on five Japanese patents for massage chairs, one of which is JP3012127. (H13 (Wa) 3485) To see the patent, click here and input the patent number after inputting Kind Code "B" on the JPO's database.

The court held an infringement decision on March 26, 2003, and awarded the plaintiff about US$13 million (at the rate of US$1.00=JPY120).

The calculated damage amount basically consists of two parts, i.e., the damage amount due to the patent infringement and the payment of compensation for the Laying-Open Publication.

<Damage>

Family sold 96,054 of the patent infringing massage chairs in Japan. The average price of the chairs was about US$396. By subtracting the material costs, the profit per chair is $396 X 0.35 = $139.

Assuming that the contribution rate of the patents to the product was 95%, the court concluded that the damage was $139 X 0.95 X 96,054 = $12.7 million.

<Compensation for Laying-Open Publication>

Compensation for the Laying Open Publication was also awarded. According to Japanese Patent Law Article 65, the compensation amount should be a reasonable royalty. The court decided the reasonable royalty rate was 5%.

Family sold 5102 massage chairs before the patents were issued. The average price at that time was estimated to be at least $916.

Accordingly, the court decided that the compensation amount was $916 X 5102 X 0.05 = $60,000.

According to the Japanese Patent Law Article 65, a patentee may claim the payment of compensation against a person who commercially worked the invention after the laying open of the patent application but before the issuance of the patent, if the patentee gave an infringement warning of the laid-open invention. The payment of compensation is equivalent to what the patentee would be entitled to receive for the working of the invention if the invention were patented. (YM)

At the Tokyo District Court in 2001, Donaldson (an American company; http://www.donaldson.com) filed a patent infringement law suit against Mahle Tennex Corporation, the Japanese associated company of Mahle (a German company; http://www.mahle.com/) on two Japanese patents #2605072 and #2688479 for automobile air filters. To see the patents, click here and input the patent numbers after inputting Kind Code "B" on the JPO's database.

The court dismissed the law suit on March 12, 2003. (H13 (Wa) 15276)

Before the law suit, Mahle Tennex filed oppositions providing prior art during the prosecution of both patents at the JPO. However, the JPO Appeal Board denied both oppositions and maintained the patents. Donaldson then filed the patent infringement law suit against Mahle Tennex.

Mahle Tennex submitted newly found prior art, i.e. USP#3147100 and Japanese Patent Laid-Open Publication #S56-111081, to the court. The court decided that the enforcement of the patents constituted an abuse of right. According to the court, both patents should be invalidated due to lack of novelty in view of USP#3147100, or at least were obvious in view of the combination of USP#3147100 and Japanese Patent Laid-Open Publication #S56-111081. (YM)

The Japanese customs restrained 6,978 cases of importation that were suspected to infringe intellectual property rights in 2002. The 2002 number is 2.5 times larger than 2001.

The largest origin country was South Korea, which took 76.4 % of the entire number of cases, followed by China (7.9%), Hong Kong (6.8%), Thailand (3.5%) and the Philippines (2.0%). 98.2 % of the cases related to Trademark. The second, Copyright, took 1.5 %, the third, Design Patent, 0.2 %, and the fourth, Utility Patent, 0.1 %.

The Customs Intellectual Property Information Center (CIPIC) shows more accurate data at http://www.kanzei.or.jp/cipic/ (written in Japanese). (YM)

The Japanese Supreme Court did not recognize contribution-type infringement of a US patent in Japan on Fujimoto vs. Newlon. (H12 (ju) 580)

Mr. Fujimoto, a Japanese citizen, owned US Patent No. 4,540,947 (click here) but did not own a patent for the same invention in Japan.

Newlon, a Japanese company, manufactured products in Japan and exported them to the United States for several years. The products would constitute patent infringement of Fujimoto's US patent in the United States.

Mr. Fujimoto sued Newlon in Tokyo in 1997 to obtain an injunction to prevent Newlon from exporting products to the United States.

Tokyo District Court first decided that no injunction or damage award would be granted on the US patent. Tokyo High Court upheld the District Court's decision. On September 26, 2002, the Japanese Supreme Court terminated the 5-year old argument and concluded that there would be no injunction or damage award for the US patent in Japan. (YM)

Enika, a Japanese company, owns Japanese Patent No. 2707018 on a card that may be used as a train pass.

Yokohama city wanted cards of the patent in 2000. The city gave senior retired residents and disabled residents the cards as special passes for public transportation. The city bought 124,000 cards from Kyodo that were originally manufactured by Enika in 2000. However, in 2001 the city bought different cards from Kobayashi instead.

Enika sued Yokohama city at Tokyo District Court and received a court decision on October 9, 2002 (Case No. H13-Wa-16820). The court admitted patent infringement by Kobayashi's cards, and decided that the city had to pay Enika about $7,000. Enika wanted about $60,000 though.

Enika asked the court to use a calculation formula based on how much the city paid to the direct suppliers, i.e. Kyodo and Kobayashi. However, the court did not use this formula, but calculated the damage amount based on how much Enika obtained from Kyodo in 2000. The award was $7,000 instead of Enika's desired $60,000. Enika won patent infringement, but could not have been economically satisfied after consideration of attorney fees and their time and effort in court.

The court decision is silent on why Enika did not sue Kobayashi. (YM)

Parallel importation of genuine goods does not constitute trademark infringement in Japan. However, this Fred Perry trademark case was not parallel enough.

There are two Japanese registered trademarks, Nos. 650,248 and 1,404,275 owned by Fred Perry Ltd., UK. To see more info on Fred Perry, click here.

THREE-M, a Japanese company, bought clothing goods with the Fred Perry trademarks from a company in Singapore and sold them to people in Japan. The Singaporean company was a licensee of "Fred Perry" and allowed to manufacture and sell their Fred Perry goods. However, the company was not allowed to manufacture the licensed goods in China. The clothing goods THREE-M bought were originally manufactured in China.

The Supreme Court approved on February 27, 2003 the decision of Osaka High Court that the importation by THREE-M constituted trademark infringement (Case No. H14-Jyu-1100). The court explained that the importation of goods manufactured outside of the area allowed by the licensing agreement is not a parallel importation of genuine goods. (YM)

The Tokyo District Court awarded the plaintiff, Frederick Warne & Co Ltd. the licensor of "Peter Rabbit" all over the world (click here for more info), compensation of damages and an injunction against the activities of the defendant, Familiar Co Ltd, under the Japanese Unfair Competition Prevention Law on December 27, 2002.

Familiar had been a licensee of "Peter Rabbit" and owned several registered trademarks of "Peter Rabbit" in Japan. However, when Frederick Warne & Co sued Familiar, Familiar was not a licensee any more. Familiar was using their owned trademark of "Peter Rabbit" and wanted to keep using it on their products.

The court decided that the use of the trademark was deemed to be unfair competition, and the defendant's use should not be allowed after the licensing agreement expired, even though the defendant owned the registered trademark in Japan. (YM)

The Tokyo District Court decided on January 29, 2003 that MMO Japan Ltd. infringed copyrights owned by JASRAC (Japanese Society for Rights of Authors, Composers and Publishers; click here for more info). The court made the decision as an interlocutory judgment and will decide on injunction and indemnification.

MMO, the defendant, was providing Japanese users free use of "File Rogue" (click here for more info) for swapping music files through the Internet. According to JASRAC, more than 63,000 music files were swapped by users without approval from JASRAC. MMO did not make or keep copies of music files, but through their server system users could swap personally owned music files. The court decided that MMO was liable for copying and violated the Japanese Copyright Law.

MMO stopped the service last year when the Tokyo District Court granted the provisional injunction. (YM)

Sendai High Court in Japan denied aesthetic features on Furby dolls (click here for photo images) in July 2002 (Case No. H13-U-177). Accordingly, Furby is not protected by the Japanese Copyright Law. The defendant had sold "Porpy" that quite resembled Furby, but the accusation against the defendant failed.

The court said "(Furby's) design is...in applied art that is created for use in utility or industry...The Copyright Law is supposed to protect only crafts in the applied art...The other works in the applied art should be protected by the Design Patent Law...However, if a work is made almost as aesthetically as fine art, the work could be protected by the Copyright Law."

The court also said "(Furby's) form strongly indicates utility and functionality as an electronic toy which wipes out its aesthetic features. Therefore, its entire form does not have as many aesthetic features as fine art."

Tiger Electronics, the manufacturer of Furby, should have filed a design patent application to protect their important dolls from copycats. (YM)

The trademark application for the ingot shape of Goldkenn's Goldbar chocolate (click here for photo examples) was rejected by the JPO. The Tokyo High Court approved the JPO's decision in 2002 (Case No. H13 Gyo-Ke 418).

The shape of the world famous chocolate box has been registered as a 3-D trademark (or tradedress) in many countries such as the United States. Furthermore, the applicant, Goldkenn, has been selling many of the chocolate boxes in Japan since 1985. However, the JPO or Tokyo High Court did not see any distinctive feature through use of the tradedress and decided that the Goldkenn's ingot shape is an indistinctive shape for boxed chocolate.

The Japanese Trademark Law was amended in 1997 to register 3-D trademarks. However, it seems to be still difficult for tradedresses to be registered in Japan. (YM)

Japan Intellectual Property Arbitration Center (JIPAC) made three rulings in 2002 in favor of three world famous companies, ROLEX, Christian Dior and Pharmacia Corp.

That is:

On June 19, JIPAC ordered a parallel importing company to cancel their domain name registration for "pro-lex.co.jp" because it was similar to "ROLEX", which is a famous registered trademark in Japan;

On July 1, JIPAC ordered a Japanese beauty parlor to cancel their domain name registration for "dior.co.jp" because it was similar to "Dior",which is a famous registered trademark in Japan; and

On August 18, JIPAC ordered a Portuguese company VASCO to transfer their domain name registration for "pharmacia.jp" to Pharmacia Corp. that has a famous registered trademark "Pharmacia" in Japan.

JIPAC has become an important legal dispute resolution tool for not only Japanese companies but also non-Japanese companies. The JIPAC's procedures for obtaining a ruling on domain names are much simpler and quicker than the Japanese court. Also these procedures are usually relatively inexpensive compared with litigation in Japanese courts. (YM)

著作権の存続期間を著作者の死後50年から70年に延長したソニー・ボノ著作権期間延長法の合憲性が争われていたEldred vs. Ashcroft事件で、連邦最高裁判所は2003年1月15日、米国議会が著作権の存続期間を延長することは合憲との判断を下した。

今回の裁判は、パブリックドメインの著作物をインターネット上で配信するウェブ出版業者が、1998年の著作権存続期間延長は、米国憲法違反であると訴えていたもの。1998年の著作権期間延長法は人気の高い著作物を所有する米国巨大エンターテイメント企業などからの圧力を受け米国議会が可決したもので、この法律により、従来著作者の死後50年だった著作権の存続期間が70年に延長された。原告側は、同法は米国憲法中の「議会は『限られた期間』において著作権保護を与えることが出来る」という規定と、「表現の自由を保障する」規定に反すると主張していた。

これに対し連邦最高裁判所は、著作権存続期間の延長は、すでに著作権の存続期間を70年と認めていたヨーロッパ連合の規定と足並みを揃えたものでもあり、憲法に定められた範囲内での議会の適正な権力行使であったとし、7対2の多数決で合憲の判断を下した。表現の自由に違反するという訴えについては、著作権法自体が、教育などの目的に応じて著作物の使用を例外的に認めており、表現の自由を保障する手段を含んでいるなどとし、原告の主張を退けた。 (NT)

連邦最高裁判所の判決文　(Eldred vs. Ashcroft)（PDF、英文）