Defendant has been granting licenses to third parties for merchandising goods using drawings from “The Tale of Peter Rabbit” covered by their copyright until it expired in Japan on May 21, 2004. After the copyright expired, the defendant continued to require third parties who are using the drawings from “The Tale of Peter Rabbit” to display the © mark.
Plaintiff had been planning to distribute towels displaying drawings from “The Tale of Peter Rabbit.” In the trial, the plaintiff asserted as follows:
1) The defendant does not possess the right to obtain an injunction based on an expired copyright.
2) Displaying the © mark on merchandises after the copyright has expired can be considered to be misleading the public as to the quality of goods, as stipulated in Unfair Competition Prevention Law, Article 2, (1),(xiii). The defendant’s actions must be enjoined.
3) The defendant must pay compensation for their illegal acts, in accordance with Unfair Competition Prevention Law Article 4 or Civil code Article 709.
In the ruling, the Court acknowledged the plaintiff’s assertion 1) but dismissed 2) and 3). The reasons for dismissing 2) and 3) are as follows:
Because copyrights are not protected in a methodical way in Japan, the “C” mark on a design not always guarantee that the design is protected under a copyright. On the other hand, it is difficult to deny that use of the “C” mark asserts that the merchandise is copyrighted and that it can be perceived as a warning to consumers.
False indications of patent right are often ruled to be a violation of the unfair competition law. Such rulings are based on the reasoning that false indications of a patent right can cause the consumers to think that the product has a superior design and advanced technology and, as a result, mislead consumers as to the quality of goods. However, such reasoning cannot be used for copyrights.
Goods having a copyrighted design do not necessarily excel in quality over a design for which the copyright has expired, for example, a painting by van Gogh. The consumers are likely to choose a product by evaluating the beauty and artistic value of the design without any regard to whether the product is copyrighted or not. Therefore, making the public think that the goods are copyrighted does not mislead the public as to the quality of goods.
On the other hand, forcing the licensee to include the © mark on the design may mislead the public to think that they need permission from the defendant if they want to use reproductions of the original drawings by Beatrix Potter. In other words, the public may be misled into thinking that the defendant still has the right to grant licenses for use of the design. Such a state will not, however, pose any threat to the plaintiff with regard to the profit in their business. Therefore, plaintiff’s assertions 2) and 3) were dismissed.
