Legislation, court cases and legal infrastructure of intellectual property rights within the context of international transactions.

Introduction

>>schedule Symposium 8-9 May

Industrial Property Right (Patent /Trademark Right)

Objectives of Study

This study aims to offer exhaustive and comprehensive information on the present situation surrounding the patent and trademark laws in Japan. Also, by reviewing Japan’s policy towards patent and trademark rights within the context of international transactions, this study will present certain proposed legislation and treaties to enhance its legal infrastructure. Japan’s policy on patent and trademark rights is considered to be one of the most important issues in its national strategy on intellectual property. This study constitutes a counterpart to the research on copyright headed by Associate Professor Kojima.

Patent and trademark rights are inherently different from any other rights because the exclusive right is obtained only after examination by a governmental authority. This infers that these rights are deeply connected with the national industrial policy and furthermore, deeply linked to the theoretical debate regarding regulation of these rights by a national sovereign and in accordance with public law. Past research on patent and trademark rights in Japan has been guided by the traditional principle of territorial jurisdiction and has not actively interacted with different research areas. However, considering the circumstances in recent years, under which the role of patent and trademark rights have gradually become more important in the field of international transactions and the fact that some conflicts with the foreign countries have accordingly arisen in connection with such rights, analysis from the viewpoint of private international law and international civil procedure law is essential for resolving such conflicts. The number of judgments by courts in Japan on the above-mentioned matters is increasing and there are an enormous number of companies and researchers abroad who desire clarification on such issues.. These precedent cases, however, tend to describe their points without any awareness of the international legal framework and with a viewpoint that is highly influenced by the traditional conception of patent and trademark rights in Japan. As described below, research on this issue has already commenced in many other foreign countries and the necessity with which Japan needs to catch up with such a trend and provide our updated information to other foreign countries has arisen.
The efforts above should result in the enhancement of the legal infrastructure and should include certain external recommendations to the proposed legislation, treaties and model laws. This study shall have the objectives as set out above.

Toshiyuki Kono
Representative of Industrial Property Study
Professor of Law, Kyushu University

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Copyright

Research Objectives

This study aims to investigate a certain scheme of protection for copyright in Japan which advocates “a country built on intellectual property” from the aspect of international transactions and to offer information on our present situation through research and analysis. Furthermore, this study seeks to enhance the legal infrastructure for international transactions involving copyright and thus recommend appropriate rules for proposed legislation and treaties. This study constitutes a counterpart to the research on patent and trademark rights headed by Professor Kono.

As globalization has progressed, the necessity of cross-border protection of copyright has become a material issue in practice and the number of precedent cases relating to this issue is increasing in Japan. The present treaties, including the Berne Convention, provide for attribution and effect of copyright as well as remedy against infringement. However, the treaties are far from providing a unified rule, as the substantive laws and the respective law on copyright exist independently in each respective country. In this situation, the necessity to deal with the issue above by resorting to private international law inevitably arises; however, an international unified rule needed for determining international jurisdiction or governing laws and the specified provisions of the domestic laws that are applicable to such a determination does not exist. In addition, precedent cases of Japanese courts have not provided clear guidelines for such determinations and related theories are also still under development. As described above, the rule concerning the international protection for copyright has not been developed and lacks transparency. As a consequence, this has resulted in preventing some international transactions among domestic and foreign companies. To breakthrough this current situation, we need to commence research on practices regarding this issue and investigate the precedent cases and theories with the alternative theoretical approaches, as has been done in other foreign countries. Furthermore, we need to offer our findings to other foreign countries to cooperate with the relevant institutions. Then, we will be able to conclusively provide the proposed legislation, treaties and model laws including disclosure of study results by documents written in English here and abroad to achieve the enhancement of the infrastructure in our legal system.

The detailed study subjects are as follows.
First of all, although the “principle of territorial jurisdiction” applies to the protection of copyrights, this term is multi-faceted and there is no common understanding of its contents and grounds. While entitlement to copyright is automatic and immediate when related works are created, entitlement to the exclusive rights of a patent or trademark are only granted after examination and registration by the governmental authority. Accordingly, the principle of territorial jurisdiction seems to have various meanings. Therefore, we are investigating the grounds and validity of the principle of territorial jurisdiction from the aspects of both private international law and intellectual property law.

Secondly, we should focus on issues related to priority in application between the Berne Convention and private international law (interpretation of “national treatment”) when we consider the applicable law for the protection of copyrights. Academic investigations in this area in Japan are insufficient while many theories have been raised in other foreign countries. We are reviewing each specific issue, including the issue of attribution (particularly, employee’s works) and infringement of the copyright by referring to the background of the conclusion of the Berne Convention. We are also reviewing the effective copyright-related laws in foreign jurisdictions with the cooperation of foreign researchers.

Finally, the recent issue of infringement of copyright by internet and satellite broadcasting has become another challenge for us due to our traditional understanding of the domestic laws which contemplates giving the copyright owner protection from such infringement. Therefore, we are exploring the possibility of developing a new framework within private international law for determinations relating to such infringement (for instance, application of laws of place of origin without exception). This framework will be formulated by referring to differences among the copyright-related legislation of foreign countries as well as precedents of courts and theories of foreign jurisdictions.

Ryu Kojima
Associate Professor of Law, Kyushu University

All members of this research group wish to express their sincere appreciation to
the following entities for their generous support of this project:
- Nagashima Ohno & Tsunematsu;
- International Law Association, Japan Branch;
- Yuhikaku Publishing Co.,Ltd.

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Members

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