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Law applicable to infringement of moral rights in Japan (Case Comments) – “Chinese poem” case (Tokyo District Court decision of 31 May 2004, Case No. 26832 (wa) of 2002) [ Volume 2 – 2012 ]

11 May 2012

INTRODUCTION

Exploitation of creative works goes beyond national boundaries. By this very nature, an infringement on the rights of the author may lead to a question of applicable law.

The applicable law on the infringement of economic rights, illegal copy for example, is generally considered to be the law of the country where the illegal exploitation occurred. This idea is broadly accepted in many countries and is the dominant thinking within academia.

However, we should not forget that an author not only has economic interests but also moral interests on his creative work. With this in mind, could we then approach the question of applicable law regarding infringement of moral rights the same as we would an infringement of economic rights, considering that the object of moral rights is different from that of economic rights?

In Japan, though there have been decisions that dealt with the applicable law question on cases of infringement of economic rights, there has never been one on infringement of moral rights until the case at hand. The “Chinese poem” (Tokyo District Court decision of 31 May 2004, Case No. 26832 (wa) of 2002; Hanrei Taimuzu, No.1175, p.265) is the singular case that decided on the applicable law of infringement of moral rights.

The case covers two important issues. Firstly, what law should be applied to the question of infringement of moral rights? Secondly, given the fact that there exists no rule to determine the applicable law on infringement of intellectual property (including author’s rights) in the Japanese private international law, which legal provision can then be used in the determination of the applicable law?

For further reference, the Tokyo High Court Decision of 9 December 2004 on the koso appeal (Case No. 3656 (ne) of 2004) did not refer to the question of applicable law.

FACTS

A was a famous Chinese poet and composer from Xiamen City as well as an author of many literary works. He has published in journals and literary reviews, and is widely known all over China. One of his works, a poetry book (“the Parnassus”), contains around one hundred poems, some of which are brought into question in this case (“the Poems”).

Y2, one of the defendants, is a Chinese woman living in Japan and was dating A’s brother, B. She wrote a novel (“the Novel”) in Japanese based on her personal experiences. Y1, the other defendant, is the publishing company that printed and sold the Novel in Japan.

In the Novel, the heroine (modeled after Y2) is dating a guy (modeled after B) who has a brother; a “Chinese contemporary poet from Xiamen”. Y2 used the original text in Chinese and its translation in Japanese of the Poems in her Novel and introduced these as the works of the brother of the heroine’s partner who is a “Chinese contemporary poet from Xiamen”. Moreover, in the Novel, the “Chinese contemporary poet from Xiamen” is described as an alcoholic and a violent person.

Soon after the lawsuit was brought, A died. The plaintiffs Xs (A’s parents and child) are A’s heirs and asked for the injunction on the printing and distribution of the Novel as well as publication of remedial advertising, based on the infringement of A’s moral rights and of defamation, compensation was also demanded for the infringement of the A’s moral rights.

The issues on moral rights which were in question in this case are as follows:

• Infringement of the right of attribution; in the Novel, the author of the Poems is described as a “Chinese contemporary poet from Xiamen”, the brother of the heroine’s partner. The plaintiffs insisted that the right of attribution of the real author A was infringed.
• Infringement of the right of integrity on the title of the Poem; some of the Poems, the originals in Chinese and the translated versions in Japanese, were used in the Novel with the alteration to the titles. The plaintiff claimed the infringement of the right of integrity on the title provided for by the article 20(1) of Japanese Copyright Act[1].
• Infringement of the right of integrity on the content of the Poem; there are mistranslations, lacks or misinterpretations beyond the original which were found in the translations of Y2. The Plaintiffs claimed the infringement of the right of integrity of the content of the Poems.

DECISION

The Court ruled in the negative on the claim of infringement of the right of attribution, but affirmed the claim of infringement of the right of integrity on the basis of the alteration of the titles and of the mistranslations.

The decision on the applicable law by the Court is as follows:

“The claim for injunction and for publication of the remedial advertising to protect the personal interests post mortem should be considered as remedy to conserve the personal interest of the author, that is, the right of the author. Therefore, it must be classified as a remedy to conserve the right of the author. Standing on the article 6bis(3) of the Berne Convention, the law applicable to the remedy to conserve the right of the author must be the law of the country for which the protection is sought. In this case, the country for which the protection is sought is Japan and the injunction and publication of the remedial advertising should be governed by Japanese law. In addition, according to the article 6bis(2) of the Berne Convention, the person who can enjoy the right of claim must be decided by Japanese law, the country for which the protection is sought.”

“The claim for compensation on the ground of the violation of the moral rights must be classified as tort and the article 11(1) of Hōrei[2] designates the applicable law. As to the claim for compensation, in this case, it is the “place where the facts forming the cause of such obligation have occurred” provided in the article 11(1) of Hōrei should be Japan, considering the fact that the printing and distribution of the Novel has taken place in Japan and it is the violation of moral rights in Japan that is being raised. Therefore, the law applicable to the claim for the compensation must be Japanese law.”

COMMENTS

(1) Classification

The plaintiff made three claims: Injunction, compensation and publication of the remedial advertising. The Court classified the injunction and publication of the remedial advertising as “remedy to conserve the right of the author” and the compensation as tortuous claim.

In Japan, the classification to separate the injunction from the compensation can be found in the case concerning economic rights[3]. This position was first shown in the Card Reader Case[4] and this became the jurisprudence of like cases. However, I see no reason to distinguish between the injunction and the compensation at the level of classification is problematic. The classification must be decided independently by private international law[5], the injunction and the compensation should be considered simply as remedy against the violation of the author’s economic right[6].

Also with regard to the moral rights, there is no necessity to distinguish between the injunction and compensation. These claims should be considered as the remedy to conserve the legal interests of the author, his moral rights.

Therefore, at the level of private international law, the claim of injunction, publication of the remedial advertising and compensation should be classified together as one, as remedy against the violation of moral rights.

(2) Choice-of-law rule

In this case, the Court classified the claim for injunction and for publication of the remedial advertising as “remedy to conserve the personal interest of the author, that is, the right of the author”.

Since the author A has already passed away in this case, the court decided that to determine the person who can enjoy the right of claim should be in accordance to the article 6bis item (2) of the Berne Convention, and then applying item (3) in determining the applicable law.

The article 6bis provides as follows:

1. (1) Where any country outside the Union fails to protect in an adequate manner the works of authors who are nationals of one of the countries of the Union, the latter country may restrict the protection given to the works of authors who are, at the date of the first publication thereof, nationals of the other country and are not habitually resident in one of the countries of the Union. If the country of first publication avails itself of this right, the other countries of the Union shall not be required to grant to works thus subjected to special treatment a wider protection than that granted to them in the country of first publication.
2. (2) No restrictions introduced by virtue of the preceding paragraph shall affect the rights which an author may have acquired in respect of a work published in a country of the Union before such restrictions were put into force.
3. (3) The countries of the Union which restrict the grant of copyright in accordance with this Article shall give notice thereof to the Director General of the World Intellectual Property Organization (hereinafter designated as “the Director General”) by a written declaration specifying the countries in regard to which protection is restricted, and the restrictions to which rights of authors who are nationals of those countries are subjected. The Director General shall immediately communicate this declaration to all the countries of the Union.

The provisions that concern this case are items (2) and (3).

The question of who can enjoy the right must first be decided. In this case, the actual author A has died after the action has been brought and the plaintiffs (Xs) are A’s heirs (A’s parents and child). Their claim is based on A’s moral rights and it is necessary to decide if they have the right to claim, standing on the moral rights. In this point, the court examined if Xs came under the definition of “persons or institutions authorized by the legislation of the country where protection is claimed” provided on article 6bis(2) of the Berne Convention. Here, however, the court simply decided that “the country for which the protection is sought is, in this case, Japan” and the reasoning why it is Japan has not been sufficiently explained.

If Japanese law is applicable, the article 116(1)[7] of the Japanese Copyright Act should be applied in deciding the person who can enjoy the moral rights after the author’s death. According to this provision, Xs are the parents and the child of A and they legitimately come under the definition of “bereaved family” and can therefore enjoy A’s right after his death.

Next, as to the remedy for the violation of the moral rights, the Court declared that the article 6bis(3) governs this question. Here again, the Court simply decided that Japanese law is the “law of the country for which the protection is sought” without showing any reason. Therefore, Xs could claim for the injunction provided by the article 112(1)[8] of the Copyright Act and the measure of the restoration of the honor provided by the article 115[9] of that Act.

Secondly the Court classified the claim for the compensation as tortuous claim and determined the applicable law standing on article 11(1) of Hōrei, the former law concerning the application of laws of Japan. This provision takes the “place where the facts forming the cause of such obligation have occurred” as the connecting factor for the tort. In this case, the Court decided on Japan for the reason that it is the place where both the printing and the distribution took place. This decision is justifiable because the “facts forming the cause” is no other than the publication and the distribution of the Novel done by the defendants.

In 2007, Hōrei was amended and Tsūsokuhō, the Act on General Rules for Application of Laws, entered into force. The article 17 of Tsūsokuhō prescribes “the law of the place where the result of the wrongful act occurred” is the applicable law of the tort. If this case were in question under this new law, where would “the place where the result of the wrongful act occurred” be? The Novel is published in Japan and distributed in the Japanese market. Considering this fact, “the place where the result of the wrongful act occurred” would be Japan and the conclusion reached would be the same as that of which the Court decided. The applicable law would be Japanese law.

In short, the stance of the Japanese court for the infringement of the moral rights is as follows: The claims of the injunction and publication of remedial advertising are classified as “remedy to conserve the right of the author” and the applicable law is the law of the country for which the protection is being claimed (lex loci protectionis) standing on the article 6bis(2) of the Berne Convention. On the other hand, the claim for compensation is classified as tortuous claim and the applicable law is the law of the place where the result of the illegal act occurred as per article 17 of the Tsūsokuhō.

(3) Analysis

This is the only Japanese case on applicable law for transborder infringement of moral rights. The ruling of the court based on its interpretation of the Berne Convention is however, not appropriate.

The Court considers the Berne Convention in determining the choice-of-law rule. However, it must be understood that the Berne Convention does not provide a direct choice-of-law rule. Therefore, the decision of the Court to designate the applicable law based on the Berne Convention cannot be justified.

The question as to whether or not the Berne Convention has the choice-of-law rule is the issue actively discussed especially in the context of the economic rights, concerning article 5(2) of the Convention[10].

Comparing article 5(2) on economic rights and 14bis(2) on ownership of cinematographic works, article 6bis is less mentioned in the discussion on the choice-of-law nature of the Convention[11]. However, the wording used in article 6bis, “the country where protection is claimed” is exactly same as the wording in article 5(2) and 14bis(2). Therefore it is not reasonable to interpret one as the choice-of-law rule and not the other. Thus, both article 5(2)[12] and article 6bis can be treated in the same manner as an object in the discussion concerning choice-of-law rule of the Berne Convention.

As previously mentioned, the concept of moral rights was first introduced in the Rome Conference of 1928. At that time, Member States each had its own legislation on author’s rights and the rights in each country existed separately and independently from one other. Some countries, such as France and Italy, valued the concept of the moral rights, while others, such as the United Kingdom and the United States, did not have this legal concept.

Standing on this difference, when Italy proposed the introduction of moral rights into the Convention during the Rome Conference, many common-law countries strongly objected. This led to the provision, which was introduced in the Rome Amendment that included a reservation clause[13]. It seems like a product of compromise among Member States, with each State having different legislations on moral rights. The Convention “respected” this differences and left the decision on how to interpret moral rights to the individual Member States.

Taking into account the discussion made during the drafting, as previously mentioned, the Convention should not be the venue in deciding the choice-of-law rule[14] and article 6bis should not be used in determining the choice-of-law rule in matters of moral rights.