How Does the Fame of a Copyrighted Work or Consumer Confusion Impact Similarity Judgments in Japanese Copyright Cases?

Japanese Attorney at Law - Bengoshi L.L.

• 6 min read

In the intricate world of copyright infringement litigation, a core question revolves around how "similarity" between two works is assessed. The traditional approach in Japanese copyright law, as in many jurisdictions, emphasizes an objective comparison of the creative expressions embodied in the works themselves. However, a persistent question arises: do external factors, such as the pre-existing fame of the copyrighted work or the likelihood of consumer confusion—elements more commonly associated with trademark or unfair competition law—play any role in how Japanese courts determine copyright similarity? While the formal legal doctrine tends to separate these concerns, practical realities and nuanced legal arguments suggest a more complex interplay.

The Traditional Stance: Objective Comparison of Expressive Features

The foundational principle of Japanese copyright law is the protection of an author's "creative expression." Consequently, the determination of whether one work infringes another by being illicitly similar is, in theory, based on a direct comparison of the plaintiff's copyrighted work and the defendant's allegedly infringing work. This comparison focuses on identifying whether the "essential expressive features" of the original are "directly perceivable" in the subsequent work.

Under this traditional and orthodox view, external factors are generally considered irrelevant to the core copyright similarity analysis. These include:

  • The market success or commercial fame of the plaintiff's work.
  • Whether consumers are likely to be confused as to the source or origin of the defendant's work (a primary concern of trademark law).
  • The defendant's intent, unless it relates directly to the act of copying (i.e., reliance or ikyo).

This perspective was explicitly upheld by the Intellectual Property High Court in the MUSASHI case (June 14, 2005). In this case, the plaintiff argued that for a famous copyrighted work, the threshold for recognizing "direct perception" of its essential features should effectively be lower, implying that even a lesser degree of resemblance should suffice for infringement. The court firmly rejected this line of reasoning. It stated that the Copyright Act does not differentiate the level of protection based on whether a work is famous or obscure. The standard for assessing the "direct perception of essential expressive features," the court clarified, does not and should not vary based on the renown of the copyrighted work. The comparison must remain focused on the objective expressive qualities shared between the works.

The Challenge Posed by Highly Famous Works

Despite this clear doctrinal stance, highly famous works, particularly iconic characters or widely recognizable artistic styles, present practical challenges. When a work achieves a very high degree of public recognition, even a minimal or partial reproduction of its distinctive elements can instantly evoke the original in the minds of the public.

Consider, for example, globally recognized characters where a specific silhouette, a unique combination of colors, or a particular facial feature is so ingrained in public consciousness that its mere suggestion can trigger immediate association. The question then becomes: if this ease of recognition due to fame leads the public (the "person who comes into contact with it") to perceive the essence of the original in a subsequent work that only takes a small quantum of expression, should this factor into the copyright similarity assessment? Or must courts strictly adhere to a purely objective comparison of the quantity and quality of expression taken, irrespective of the heightened recognizability conferred by fame?

To navigate this issue, it's essential to maintain a clear distinction between the objectives of different intellectual property regimes:

  • Copyright Law aims to protect the original creative expression of authors, providing them with exclusive rights to control the reproduction and adaptation of their works. The focus is on the unauthorized taking of that expression.
  • Trademark Law aims to protect source identification, goodwill, and prevent consumer confusion regarding the origin of goods or services. Fame of a mark and likelihood of confusion are central to trademark infringement.
  • Unfair Competition Prevention Act in Japan addresses a range of unfair market practices, including the misappropriation of well-known indications of source, slavish imitation of product configurations under certain conditions, and other acts that harm fair business competition.

While the effects of using a famous copyrighted work might include consumer confusion or an unfair association, these effects are not, in themselves, the primary concern of copyright's similarity analysis. Copyright asks whether protectable expression has been taken, not whether consumers are confused about the source.

Nuances and Emerging Considerations in Practice

While the MUSASHI case represents the formal judicial position, legal commentary and the undercurrents in some court decisions suggest that the reality might be more nuanced, particularly in "hard cases" involving blatant freeriding on extremely famous works.

  1. The Influence of "Strong Reliance" (Freeriding Intent):
    Some Japanese legal scholars and practitioners have observed that in situations where there is evidence of "strong reliance" (強い依拠 - tsuyoi ikyo)—meaning a clear, deliberate intent by the defendant to trade on the fame and established appeal of a well-known copyrighted work—this factor might subtly influence the court's assessment of similarity, especially in borderline cases. This is often framed not as a formal legal rule but as a consideration of "fairness between the parties" (当事者間の公平 - tōjisha-kan no kōhei). The idea is that if a defendant has intentionally sought to benefit from the plaintiff's fame through a similar-looking work, a court might be less inclined to give the defendant the benefit of the doubt if the similarity is ambiguous. This doesn't replace the need for objective similarity in expression but could act as a "thumb on the scale."
  2. Character Names and Contextual Clues:
    In the realm of character protection, there has been discussion about whether extrinsic elements, such as the use of the original character's name on the defendant's product, could be considered part of the overall "expression" being compared. While a name itself is generally not copyrightable, its use in conjunction with visual elements that bear some resemblance to a famous character can powerfully reinforce the association. For instance, the Tokyo High Court decision in the Non-tan case (November 17, 1999), which involved a dispute over authorship and infringement of a famous children's book character, affirmed infringement. While the primary issues were different, the fact that the infringing goods bore the character's name ("nontan") alongside the similar visual depictions might have practically contributed to the perception of similarity and the finding of infringement by leveraging the character's established identity.
  3. The Subjectivity of "Perception" and the Role of Fame:
    If the "direct perception of essential expressive features" is ultimately a judgment made by "a person who comes into contact with it," then the fame of the original work could arguably influence what this person perceives. A highly famous work is, by definition, more easily recognized and its features more readily brought to mind. An observer familiar with a famous character might "directly perceive" its essential features in a defendant's work even from partial cues, precisely because of that pre-existing familiarity cultivated by fame. This line of reasoning suggests that fame can lower the perceptual threshold for recognizing similarity.

The Prevailing Doctrine Versus Practical Realities

Despite these nuanced discussions and the potential for underlying judicial sentiments to be swayed by factors like fame or blatant freeriding, the prevailing and formally articulated legal doctrine in Japan, as exemplified by the MUSASHI case, maintains a separation. Copyright similarity is, first and foremost, an assessment of shared creative expression, an objective comparison between the two works at issue.

However, it is also acknowledged that in the practical realities of litigation, especially in cases where the defendant's conduct appears particularly unfair or exploitative of a highly famous work, courts might be, consciously or subconsciously, influenced by these "equitable" considerations. This influence is more likely to manifest in how the court weighs evidence in borderline situations or in the overall framing of the judgment, rather than through an explicit statement that fame alters the legal standard for similarity.

There are valid reasons for caution against overtly incorporating fame or consumer confusion into the copyright similarity calculus:

  • Distinct Legal Regimes: It risks blurring the carefully demarcated boundaries and distinct purposes of copyright law, trademark law, and unfair competition law. Each body of law has its own criteria and policy goals.
  • Overprotection: It could lead to the overprotection of famous works, extending copyright beyond its intended scope of protecting specific creative expression to something more akin to a general right against any commercial association.
  • Uncertainty: Fame is a dynamic and somewhat subjective quality. Making copyright protection dependent on such a fluctuating factor could introduce significant legal uncertainty.

For legal practitioners, the landscape requires careful navigation. The primary argument in a copyright infringement claim must always be centered on demonstrating substantial similarity in creative expression, based on an objective comparison of the works. However, evidence related to the fame of the original work and any indications of the defendant's intent to freeride can serve as important contextual elements. While these may not formally alter the legal test for similarity, they can shape the overall narrative of the case and potentially influence judicial perception in close calls, or at least play a role in settlement negotiations. Conversely, defendants will emphasize that any resemblances stem from shared unprotectable ideas, commonplace elements, or are within the bounds of independent creation, regardless of the plaintiff's work's fame.

Conclusion: A Tension Between Doctrine and Equity

In conclusion, the formally stated position in Japanese copyright law is that the fame of a copyrighted work or the likelihood of consumer confusion does not directly alter the standard for assessing similarity. This assessment should remain an objective comparison focusing on the "direct perception of essential expressive features." The MUSASHI case stands as strong authority for this principle.

Nevertheless, the potent influence of fame on public perception and the equitable concerns raised by clear instances of freeriding on well-established goodwill mean that these factors can, in practice, hover in the background of copyright disputes involving famous works. They may subtly affect how evidence is weighed or how borderline cases are ultimately decided, reflecting an inherent tension between maintaining doctrinal purity and achieving outcomes that align with broader notions of fairness in the marketplace. Understanding both the formal legal rule and these underlying practical considerations is key to effectively addressing copyright similarity issues in Japan.