Dennis S. Karjala*

Keiji Sugiyama**

Copyright (c) 1988

Keiji Sugiyama

Dennis S. Karjala



Introduction 1

I. The Statutory and Judicial Framework 2

A. The Legal System in the United States and Its Relation to Copyright 2

B. The Copyright Statutes of Japan and the United States 6

1. Nature of the Works Protected 7

2. Nature of the Rights Granted 9

3. Limitations on the Scope of Protection 10

4. Fair Use Defenses 11

II. Fundamental Copyright Concepts in Japan and the United States 11

A. Nature of the Works Protected 11

1. United States 11

2. Japan 12

a. Expression of Thought or Sentiment 12

b. Belongs to the Literary, Scientific, Artistic, or Musical Realm 16

c. Creativity 21

(1) Quantum of Creativity 22

(2) Novelty 23

(3) Creativity in Idea 25

(4) Creativity in Expression 35

(5) Creativity in Compilation Works 38

B. The Scope of Protection 42

1. United States 42

2. Japan 47

a. Idea/Expression Distinction 47

b. Dependence on the Nature of the Work 48

c. Relation Between Standards for Copyrightability and the Scope of Protection 53

d. Proof of Infringement 61

(1) In general 61

(2) Independent production 62

(3) Copying of Mistakes 68

(4) Fair Use 75



United States Constitution

Article I, Section 8 3

Article III, Section 2 5

United States Statutes

17 U.S.C.A. 108-117 11

17 U.S.C.A. 101 9, 18, 53

17 U.S.C.A. 102(a) 8, 11

17 U.S.C.A. 102(b) 10, 42

17 U.S.C.A. 103 9, 53

17 U.S.C.A. 106 10

17 U.S.C.A. 107 11, 75

17 U.S.C.A. 301(a) 6

17 U.S.C.A. 302(a) 6

28 U.S.C.A. 1338 5

1909 Copyright Act 10 5

Fed. R. Civ. Pro. 56(c) 45

Japanese Statutes

Civil Code Art. 206 20

JCL Art. 1 7

JCL Art. 2(1)(xi) 32

JCL Art. 2(1)(x-iii) 9

JCL Art. 2(1)(xv) 8

JCL Art. 2(2) 17

JCL Art. 10(3) 75

JCL Art. 12(1) 9, 38

JCL Art. 12-2(1) 9

JCL Art. 27 32

JCL Art. 30 11

JCL Art. 59 10

JCL Art. 61(1) 10

JCL Arts. 19-21 10

JCL Arts. 21-27 10

JCL Arts. 30-50 11

JCL Arts. 75-78 30

Law No. 39 (1899) 6

Law No. 39 (1899), Art. 1 6

Law No. 48 (1970) 6

Law No. 125 (1959) 17

United States Cases

Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2nd

Cir. 1951) 11, 23, 47

Arnstein v. Porter, 154 F.2d 464 (2nd Cir. 1946), cert. denied, 330 U.S. 851 77

Baker v. Seldon, 101 U.S. 99 (1880) 14, 33, 34

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903)


Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986) 34

Central Tel Co. v. Johnson Pub. Co., 526 F. Supp. 838 (D. Colo. 1981) 68

Continental Casualty Co. v. Beardsley, 253 F.2d 702 (2nd Cir. 1958), cert. denied, 358 U.S. 816 13

Cooling Systems & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485 (9th Cir. 1985) 65, 69

Digital Communications Assocs. v. Softklone Distributing Corp., 659 F. Supp. 449 (N.D. Ga. 1987) 34

Donald v. Zack Meyer's T.V. Sales & Service, 426 F.2d 1027 (5th Cir. 1970) 14

Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905 (2nd Cir. 1980)


Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y. 1924) 23

Frybarger v. International Business Machines Corp., 812 F.2d 525 (9th Cir. 1987) 65

Goldstein v. California, 412 U.S. 546 (1973) 11

Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) 23

Greenbie v. Noble, 151 F. Supp. 45 (S.D.N.Y. 1957) 69

Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2nd Cir. 1980), cert. denied, 449 U.S. 841 44-46, 50, 51, 69

Hutchinson Tel. Co. v. Fronteer Directory Co., 770 F.2d 128 (8th Cir. 1985) 54

Italian Book Co. v. Rossi, 27 F.2d 1014 (S.D.N.Y. 1928) 31

Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (2nd Cir. 1922) 54

L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2nd Cir. 1976)


Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485 (9th Cir. 1984) 43, 44, 65, 68

Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937)


M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421 (4th Cir. 1986) 68

M.M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137 (6th Cir. 1973) 13, 14

Mazer v. Stein, 347 U.S. 201 (1954) 18

Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981) 46

Milworth Converting Corp. v. Slifka, 276 F.2d 443 (2nd Cir. 1960)


Morrison v. Solomons, 494 F. Supp. 218 (S.D.N.Y. 1980) 69

Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967)


National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F. Supp. 89 (N.D. Ill. 1982) 54

SAS Institute, Inc. v. S & H Computer Systems, Inc., 605 F. Supp. 816 (M.D. Tenn. 1985) 68

Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977)

54, 76

See v. Durang, 711 F.2d 141 (9th Cir. 1983) 51

Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) 65

Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2nd Cir. 1936), aff'd 309 U.S. 390 (1940) 23, 76

Southwestern Bell Tel. Co. v. Nationwide Independent Directory Service, Inc., 371 F. Supp. 900 (W.D. Ark. 1974) 68

Toksvig v. Bruce Publishing Co., 181 F.2d 664 (7th Cir. 1950)


Tompkins Graphics, Inc. v. Zipatone, Inc., 222 U.S.P.Q. 49 (E.D. Pa. 1983) 58

United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978) 41

Walker v. Time Life Films, Inc., 228 U.S.P.Q. 508 (2nd Cir. 1986) 65

White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1 (1909) 25

Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956) 31

Japanese Cases

American English Glossary, IV Chosakuken Hanreishu 109, 525 Hanrei Times 323 (May 14, 1984, Tokyo District Court) 38, 53,

58, 61

Ancient Photograph, IV Chosakuken Hanreishu 269 (Jan. 20, 1984, Supreme Court) 20

Bill of Lading Form, 1 Chosakuken Hanreishu 3 (Aug. 31, 1965, Tokyo District Court) 12-15

Buddhist Altar, II-1 Chosakuken Hanreishu 1042 (July 9, 1979, Kobe District Court, Himeji Branch) 18

Court Diary, II-1 Chosakuken Hanreishu 100, 104 (May 19, 1936, Osaka Court of Appeals) 7

Court Diary, II-1 Chosakuken Hanreishu 106 (Nov. 20, 1937, Great Court of Judicature) 13, 32-35, 38, 42, 56, 61, 69, 75-77

Digdag, 561 Hanrei Times 169 (Mar. 8, 1985, Tokyo District Court)


Diode Thesis, III Chosakuken Hanreishu 4 (Sept. 25, 1979, Osaka District Court) 15, 36, 48, 60

Fancy Seaweed Box, II-1 Chosakuken Hanreishu 36 (Apr. 27, 1979, Kobe District Court) 14, 15

Gateball Rulebook, IV Chosakuken Hanreishu 5, 1111 Hanrei Jiho 134 (Feb. 10, 1984, Tokyo District Court, Hachioji Branch) 63,

65, 67, 68

Globe World Map, I Chosakuken Hanreishu 59 (Feb. 2, 1971, Tokyo High Court) 41

Gold Coin, I Chosakuken Hanreishu 698 (Dec. 21, 1970, Osaka District Court) 22

Journalizing Table, II-1 Chosakuken Hanreishu 68 (Feb. 29, 1960, Kobe District Court, Himeji Branch), reversed II-1 Chosakuken Hanreishu 74 (Mar. 29, 1963, Osaka High Court) 27, 29, 30, 32,

34, 48, 55

Kanji Dictionary, 566 Hanrei Times 273 (Apr. 17, 1985, Tokyo District Court) 41, 72

Knitting Graph, II-1 Chosakuken Hanreishu 80, (Aug. 16, 1958, Tokyo District Court) 16, 24, 26, 28, 30, 31, 48, 55

Long Tail Cock, IV Chosakuken Hanreishu 71, 559 Hanrei Times 291 (Oct. 29, 1984, Kochi District Court) 19, 21, 23, 26, 27, 30,

48, 55

Marine Supplies Ad, 566 Hanrei Times 278 (Mar. 29, 1985, Osaka District Court) 36, 56, 58, 61, 73-75, 77

Minister of Internal Affairs, II-1 Chosakuken Hanreishu 425 (May 5, 1905, Great Court of Judicature) 62, 63

Minsei Confessions, I Chosakuken Hanreishu 83 (Oct. 11, 1972, Tokyo District Court) 16, 23

Mujin Table, II-1 Chosakuken Hanreishu 60 (1940, Yokohama District Court) 24, 55, 63

Music Notation, II-1 Chosakuken Hanreishu 139 (Nov. 6, 1933, Fukuoka District Court), aff'd, II-1 Chosakuken Hanreishu 151 (Nov. 6, 1934, Nagasaki Court of Appeals), aff'd, II-1 Chosakuken Hanreishu 159 (Jan. 24, 1936, Great Court of Judicature) 31,

32, 55, 56

One Rainy Night in Tokyo, I Chosakuken Hanreishu 396 (Dec. 24, 1974, Tokyo High Court), aff'd II-1 Chosakuken Hanreishu 760 (Sept. 7, 1978, Supreme Court) 51, 63, 64

Operating System, 1987-3, No. 92 Industrial Property Law Research 27 (Jan. 30, 1987, Tokyo District Court) 38, 80

Pac Man, IV Chosakuken Hanreishu 367 (Sept. 8, 1984, Tokyo District Court) 15

Perpetual Calendar, IV Chosakuken Hanreishu 61, 1102 Hanrei Jiho 132 (Jan. 26, 1984, Osaka District Court) 19, 25, 26, 48

Residential City Map Book, II-1 Chosakuken Hanreishu 560, (Sept. 22, 1978, Toyama District Court) 41, 51, 63, 76

Space Invader, IV Chosakuken Hanreishu 305, 1060 Hanrei Jiho 18 (Dec. 6, 1982, Tokyo District Court) 37

Strategy X, IV Chosakuken Hanreishu 352, 1106 Hanrei Jihou 134 (Jan. 26, 1984, Osaka District Court) 38

Student Map, II-1 Chosakuken Hanreishu 575 (Oct. 18, 1951, Osaka District Court) 70

Study Aid Book, II-1 Chosakuken Hanreishu 221 (July 25, 1962, Tokyo District Court) 51

Sunshine Rights, II-1 Chosakuken Hanreishu 195 (June 21, 1978, Tokyo District Court) 35, 37, 50, 59, 61

Telephone Directory, II-1 Chosakuken Hanreishu 84 (June 20, 1919, Tokyo District Court) 23, 24, 26, 30, 31, 38, 42, 55

Traditional Song/Story, II-1 Chosakuken Hanreishu 169 (July 4, 1914, Great Court of Judicature) 24, 25

T-Shirt, III Chosakuken Hanreishu 251 (Apr. 20, 1981, Tokyo District Court) 18

Typeface Design, II-1 Chosakuken Hanreishu 8 (Mar. 9, 1979, Tokyo District Court) 17, 18

War Chronicles, III Chosakuken Hanreishu 28 (June 23, 1980, Tokyo District Court) 36, 49, 61, 62, 74, 75

Warehouse Design, II-1 Chosakuken Hanreishu 654 (Feb. 23, 1979, Osaka District Court) 47, 49

Secondary Sources

Conley & Bryan, A Unifying Theory for the Litigation of Computer Software Copyright Cases, 6 Computer/L.J. 55 (1985) 68

Cultural Affairs Agency, Report of the 7th Subcommittee (On Databases and the New Media) of the Copyright Commission (September 1985) 55

Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981) 54

Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119 (1986) 68

Gorman, Copyright Protection for the Collection and Representation of Facts, 76 Harv. L. Rev. 1569 (1963) 11, 14,


H. Rep. No. 94-1476, 94th Cong., 2nd Sess. (1976) 11

Hinckley, NEC v. Intel: Will Hardware Be Drawn into the Black Hole of Copyright?, 3 Computer & High-Tech. L.J. 23 (1987) 68

Karjala, Copyright, Computer Software, and the New Protectionism, 28 Jurimetrics 33 (1987) 34, 68, 75, 80

Karjala, Protection of Computer Databases Under Japanese Law, 9 Eur. Intell. Prop. Review 267 (1986) 41, 55

Karjala, Protection of Computer Programs Under Japanese Copyright Law, 8 Eur. Intell. Prop. Rev. 105 (April 1986) 38

Karjala, The First Case on Protection of Operating Systems and Reverse Engineering of Programs in Japan, 10 Eur. Intell. Prop. Rev. 172 (June 1988) 80

Karjala, The Limitations on Protection as Program Works under Japanese Copyright Law, 8 Mich. Yearbook on Internat'l Legal Studies 25 (1987) 38

M. Handa, Outline of Copyright Law (4th ed. 1987) 7, 18

M. Kato, Commentaries on Copyright (3rd. ed. 1979) 16

M. Nimmer, Nimmer on Copyright 11, 18, 23, 29, 34, 65, 68, 69

Studies of Copyright-Related Cases Brought before the Tokyo District Court (I), 713 Hanrei Jiho 11 (1973) 55

Sugiyama & Kosins, The Japanese Solution to the Protection of Computer Programs, 4 Software Protection, No. 4, at 11 (1985)


Other Statutes

German Copyright Act, Art. 24 52


With the advent of the information age and the gradual breakdown of physical and legal barriers between nations, the differences in the type and scope of protection of information-based products from country to country becomes a matter of increasing concern to the legal community. The near dominance of Japan and the United States in computer and information-based products, especially computer software, and the already strong mutual economic dependence of the two countries will necessarily lead to steadily increasing exchange of intellectual property related to new technologies. Moreover, both countries have chosen copyright law as the primary vehicle for the legal protection of information-based products. Consequently, an understanding of the similarities and differences in copyright law between the two countries becomes a matter of increasing concern.

This article undertakes a study of the fundamental concepts of copyright protection under Japanese law and compares them to related concepts under the copyright law of the United States. Those concepts involve the nature of the works protected (including requirements for originality, creativity, and novelty), the scope of protection (including the idea/expression dichotomy and its relation to the nature of the work), proof of infringement, and fair use defenses. We begin with an introduction to the relevant provisions of the Japanese Copyright Law, along with corresponding provisions of the United States Copyright Act. We then continue with an analysis of the reported cases in Japan that have interpreted the Japanese statutory provisions (or similar provisions of earlier statutes). This case analysis from Japan is comprehensive, in that we have attempted to uncover all reported cases in Japan whose factual holdings are relevant to the fundamental conceptual topics under consideration. It is impossible to be as comprehensive with the American cases, however, because there are simply too many. We have therefore chosen representative cases from the United States for comparision with the Japanese cases.

I. The Statutory and Judicial Framework

A. The Legal System in the United States and Its Relation to Copyright

Probably the most prominent feature distinguishing the United States legal system from that of Japan is federalism. Under the United States Constitution, the national (federal) government is, at least in principle, a government of limited powers--one that is authorized to regulate only in enumerated areas. All legal and political power not expressly granted to the United States government by the Constitution is reserved to the various states. One of the important powers, for purposes of this article, expressly granted to Congress by the Constitution is the power to adopt legislation relating to "writings and discoveries":

The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.(1)

Over the years, the scope of national power has steadily broadened, largely under the clause of the Constitution authorizing the federal government to regulate interstate commerce. As a practical matter, there are now probably few areas into which the federal government is constitutionally prohibited from entering. Nevertheless, many important aspects of life in the United States remain subject primarily to state or local regulation, simply because the national government has not chosen to take over.(2)

As a result of the federal system, there are two judicial systems in the United States that operate roughly in parallel with one another. Each state has set of trial and intermediate appellate courts, with one state supreme court. The federal judiciary is similarly constructed, consisting of trial courts (the Federal District Courts, of which there is at least one in every state), eleven intermediate appellate courts (the Circuit Courts of Appeal) that hear appeals from district court judgments in their respective geographic areas (the "Circuits"), and one Supreme Court. Normally one judge sits for each district court trial, while three-judge panels hear appeals to the Circuit Courts of Appeal.(3) The Supreme Court consists of nine Justices,(4) each of whom participates in all of the cases brought before the Court.(5)

The courts in the United States operate, at least in theory, under a system of precedent, pursuant to which decisions of law in one case will be binding on at least some courts in subsequent cases raising the same legal issue. Decisions of the United States Supreme Court are in principle binding on all federal courts (and on all state courts to the extent the decision involves a constitutional question). Decisions of the three-judge panels of the Circuit Courts of Appeal are binding on all subsequent panels of that same Circuit, even if they are composed of different judges, as well as on all district courts in that Circuit. District court decisions are formally binding only on later judges who decide cases in that same court.

Because the United States Supreme Court decides copyright cases only on rare occasions, most of the judicial interpretation of the United States Copyright Act comes from the Federal District Courts and Circuit Courts of Appeal. It is common for the opinion in a case to refer to relevant decisions by other federal courts, even when the deciding court is not formally bound by a prior decision (because, for example, it is a decision of a different Circuit). Moreover, the opinions tend to follow earlier decisions on matters of law even when not formally bound as a matter of precedent. Nevertheless, it is quite common for a federal judge expressly to reject the reasoning or conclusion of another, where the court is not formally bound by precedent, and to render an opposite decision. It is even more common for federal courts to write their opinions as if they are following earlier cases (whether within or without their own Circuit) but to come to results that, upon careful analysis, more closely resemble a rejection of the earlier case than an acceptance of it. This leads to great variety in the decisions, even within a single Circuit, and this variety is especially noticeable in copyright cases. It is therefore impossible to reconcile all of the case results under a common set of principles that adequately explains them.

In general, the federal courts are limited in the types of disputes they may hear. The most important are disputes arising under federal statutes or the United States Constitution, and disputes raising issues of state law between citizens of different states.(6) State courts, on the other hand, are not in general limited in subject matter jurisdiction. That is to say, state courts are generally authorized to decide disputes raising questions not only under their own state law but also questions of federal statutory or constitutional law or even the law of other states, provided that the court has personal jurisdiction over the parties to the dispute. However, in some types of cases Congress has reserved exclusive jurisdiction to the federal judiciary, and both patent and federal copyright cases fall within this category.(7) Consequently, nearly all cases raising an issue of federal copyright law will be heard in the first instance by a Federal District Court,(8) and appeals will remain strictly within the federal court system.

Until 1976, the federal Copyright Act did not occupy the entire field of copyright protection in the United States, because the Act only applied to published works.(9) The protection of unpublished works was left to the states.(10) The 1976 United States Copyright Act ("USCA"), under which we are currently living, eliminated the publication requirement for federal protection and provides that copyright protection in a work "subsists from its creation."(11) Moreover, state regulation of rights within the general scope of federal copyright in fixed works of authorship was wholly preempted by the federal statute.(12) Therefore, both the legislation and the judicial interpretations relating to copyright law in the United States are now almost exclusively federal.

B. The Copyright Statutes of Japan and the United States

Japan adopted its first modern copyright statute in 1899(13) and joined the Berne Convention in the same year. This statute, as revised from time to time, remained in effect for 70 years. As the technology of reproduction and communication progressed, however, pressure for major revision intensified, and ultimately the current Japanese Copyright Law ("JCL") was approved in 1970.(14) Among other changes, the 1970 Law divided the panoply of author's rights into moral rights and economic rights, extended copyright protection to broadcasting and phonograms, increased the period of protection, created a number of specific fair use provisions, and established neighboring rights for performers, phonogram producers, and broadcasting organizations.(15) The 1970 Law did make changes in the statutory language governing the nature of the works protected and the scope of protection in them,(16) but the older cases added gloss to the earlier statutory definition using language very similar to that of the current statute.(17) Consequently, the pre-1970 cases still have influence on these important conceptual problems.

Because copyright protection is statutory in both the United States and Japan, the copyright laws of the two countries cannot be coherently compared without reference to some of the statutory language. To place some order on these comparisons, we have divided the statutory coverage into four topics: Nature of the works protected, nature of the rights granted, limitations on the scope of protection, and the fair use defenses.

1. Nature of the Works Protected

Article 1 of the JCL states its overall purpose:

JCL Art. 1. The purpose of this Law is, by providing for the rights of authors with respect to their works . . . , to secure the protection of the rights of authors . . . having regard to a just and fair exploitation of these cultural products, and thereby to contribute to the development of culture.(18)

The objects of protection under Japanese copyright law are "works" (chosakubutsu), defined in Article 2(1)(i) as follows: JCL Art. 2(1)(i). "[W]ork" means a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain.(19)

Article 10(1) of the JCL sets forth certain specific examples of works:

JCL Art. 10(1). As used in this Law, "works" shall include, in particular, the following:

(i) novels, dramas, articles, lectures and other literary works;

(ii) musical works;

(iii) choreographic works and pantomimes;

(iv) paintings, engravings, sculptures and other artistic works;

(v) architectural works;

(vi) maps as well as figurative works of a scientific nature such as plans, charts, and models;

(vii) cinematographic works;

(viii) photographic works;

(ix) program works.(20)

For ease of later comparison, the counterpart to these provisions in the United States Copyright Act ("USCA") is set forth below:

USCA 102(a). Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings.(21)

The United States Copyright Act ("USCA"), while containing a similar list of examples of works of authorship in section 102(a), thus does not independently define the term "work" and does not protect any work unless it is original and until it is fixed in a tangible medium of expression. The JCL does not require fixation (note that "lectures" are included among the literary work examples)(22) but otherwise appears to limit the products of intellectual activity that qualify as works in three ways: First, a work must express thought or sentiment; second, such thought or sentiment must be expressed in a creative way; and third, a work must fall within the literary, scientific, artistic, or musical domains. A primary goal of this article is to investigate the degree to which these definitions result in different protective schemes.

Both statutes provide separately for compilations:

JCL Art. 12(1). Compilations which, by reason of the selection [or] arrangement of their contents, constitute intellectual creations shall be protected as independent works.(23)

The JCL does not independently define "compilation," but a recent amendment introduced the term "database" and expressly provided for database protection in a manner similar to compilations:

JCL Art. 2(1)(x-iii). "Database" means a collection of information consisting of essays, numbers, diagrams, and the like that is systematically organized so that it can be searched by an electronic computer.

JCL Art. 12-2(1). Databases which, by reason of the selection or systematic organization of the information they contain, constitute intellectual creations shall be protected as [independent] works.(24)

On the other hand, the USCA does not independently define databases but does define compilations:

USCA 101. A "compilation" is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.

Protection of compilations is explicitly provided for by section


USCA 103. (a) The subject matter of copyright as specified by section 102 includes compilations and derivative works . . . .

(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work . . . .(25)

2. Nature of the Rights Granted

The United States copyright Act grants to the owner of the copyright the exclusive right to reproduce the work, to prepare derivative works based on the work, to distribute the work to the public, and to perform or display certain works publicly.(26) The JCL is similar in most important respects, granting to the author the exclusive right to reproduce the work, to perform the work publicly, to broadcast the work, to recite literary works publicly , to exhibit publicly the originals of artistic works and unpublished photographic works, to present publicly and distribute cinematographic works, to lend copies of the work to the public (except for cinematographic works), and to translate, arrange musically, transform, dramatize, cinematize, or otherwise adapt the work.(27) The foregoing economic rights (copyrights) in Japan may be transferred in whole or in part.(28) Japan also grants to authors moral rights to make a work public, to determine what name, if any, should be placed on the work as author, and to preserve the integrity of the work,(29) and these moral rights are inalienable.(30)

3. Limitations on the Scope of Protection

The traditional idea/expression distinction is expressly incorporated into the United States statute:

USCA 102(b). In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

The Japanese copyright statute contains no such general limitation on the scope of protection. As discussed below, however, the cases have imputed the idea/expression distinction into the law.

4. Fair Use Defenses

United States copyright law has long incorporated a judicially created principle of fair use, which provided a defense to liability even where copying of protected elements was proved. The fair use defense was vague but general, in the sense that it was not limited to particular types of works or fact situations. That principle now has explicit, if no less vague, statutory authorization.(31)

Japanese copyright law has never contained a general fair use defense under either the statute or the case law, although the statute does contain a number of provisions that permit reproduction or exploitation of works in specific situations or for specific purposes. Thus, the JCL permits, among other things, reproduction for private use,(32) "fair" quotation, reproduction in school textbooks (subject to paying a royalty in an amount fixed by the Agency for Cultural Affairs), reproduction in Braille, nonprofit performance, exploitation of political speeches, and reproduction for judicial proceedings.(33) These specific fair use provisions under Japanese law, while different in many of their details, are roughly analogous to the specific limitations on the exclusive rights of the copyright holder under United States law.(34)

II. Fundamental Copyright Concepts in Japan and the United States

A. Nature of the Works Protected

1. United States

United States copyright law protects "original works of authorship" that are fixed in a tangible medium of expression.(35) Outside the seven nonexclusive categories listed in section 102(a) of the USCA, the phrase "works of authorship" was intentionally left undefined by the drafters of the statute.(36) In general, the originality requirement means simply that the work must be the product of independent efforts by its creator and not the product of copying.(37) Thus, novelty in the sense of variation from prior works is not a factor in determining whether a work is protected by copyright provided independent creation can be demonstrated.(38) Creativity in the sense of an input of intellectual labor may be part of the constitutional basis for federal copyright protection, but if any such creativity requirement remains, the quantum of creativity that must be shown is minimal.(39) Broadly speaking, United States law treats as a copyrightable work of authorship any expression that is fixed in a tangible medium and is the product of independent effort. Most of the policy issues involved in drawing the balance between providing an incentive to create new works and allowing as much free use of existing works as is consistent with that incentive and basic notions of fairness are resolved by varying the scope of protection (including the standards for infringement), in conjunction with the doctrine of fair use.(40)

2. Japan

The Japanese copyright statute, in contrast to that of the United States, does define the "works" that are protected by copyright,(41) and at first glance this definition appears to be more limited than the courts have permitted for copyrightability in America. Thus, protected works cannot be just any expression but rather must express "thought or sentiment." Moreover, the thoughts or sentiments must be expressed "in a creative way," and the work must fall within the literary, scientific, artistic, or musical domain. Furthermore, the absence of a general fair use defense against a charge of infringement may mean that some of the social policy tradeoffs must be effected at the copyrightability stage. Therefore, although Japanese copyright law protects more broadly by covering even works that are not fixed in a tangible medium, it appears that Japan sets a higher threshold to qualify for copyright protection. The succeeding subsections analyze the Japanese case law interpreting these elements of the definition of the works protected by copyright.

a. Expression of Thought or Sentiment

Only two cases in Japan have directly faced the issue of whether the work under consideration was ineligible for copyright protection on the ground that it did not contain expression of thought or sentiment. In the Bill of Lading Form case,(42) plaintiff developed at defendant's order a form bill of lading and sold defendant 2 million copies. Later, defendant printed and began to use additional sets of the bill of lading that were identical to those created by plaintiff except for an emblem in the corner. Plaintiff sought damages for both copyright infringement and breach of contract. Defendant challenged plaintiff's claim of copyright, and the court upheld the challenge, concluding that the form contained no expression of plaintiff's thoughts. Rather, what was expressed in the form was nothing more than a manifestation of intent between defendant and the persons with whom defendant would transact business regarding a contract to be entered into in the future. The court went on to say that plaintiff's effort in selecting the clauses used in the form could not create a basis for copyright protection.(43)

From an American point of view, the reasoning in the Bill of Lading Form case is incomplete, because the court should have considered whether plaintiff's selection process qualified the work for protection as a compilation.(44) Nevertheless, there is a clear problem in granting copyright protection too broadly in forms of this type, in that the first creator of a concise, easy to use, but still comprehensive form might have a long-term monopoly on a particular method of contracting. The well-known case of Continental Casualty Co. v. Beardsley(45) provides an interesting contrast to the Japanese Bill of Lading Form case. The plaintiff in Continental Casualty sought a declaratory judgment that defendant's copyright in a pamphlet describing a plan for insuring lost securities was invalid to the extent it purported to cover three pages of contractual forms used to implement the plan. The court agreed with the defendant that such forms are in principle copyrightable but found no infringement by the plaintiff's forms, because the scope of protection is such works is necessarily narrow:

These cases [earlier precedents discussed by the court] indicate that in the fields of insurance and commerce the use of specific language in forms and documents may be so essential to accomplish a desired result and so integrated with the use of a legal or commercial conception that the proper standard of infringement is one which will protect as far as possible the copyrighted language and yet allow free use of the thought beneath the language. The evidence here shows that Continental in so far as it has used the language of Beardsley's forms has done so only as incidental to its use of the underlying idea.(46)

Thus, where the Japanese court denies copyrightability on the ground that the form did not express plaintiff's thought or sentiment,(47) the American court admits that such forms can be the object of copyright protection, at least in principle, and solves the problem of undue monopoly by severely limiting the scope of protection. It protects the literal language used by the creator of the first form to the extent consistent with the free use of the underlying thought and idea.(48)

The Fancy Seaweed Box case(49) is the second in which a Japanese court has invoked the "thought or sentiment" requirement of the JCL to deny status as a work. Defendant designed a fancy container for gourmet sales of kombu and shiitake. The box had a wood-grain appearance and pictured the sea and craggy mountains with pine trees. Large Japanese brush script of the words "Kombu" and "Shiitake" appeared at the top and smaller but similar script said "Specialty" near the right corner. Both the scenery and the words had the appearance of gold leaf, with the letters raised in relief.

Plaintiff began wholesale sales of specialty kombu and shiitake in a box identical to defendant's, except for name and other identifying marks. This came to defendant's attention about a year later, at which time defendant wrote to plaintiff's customer demanding a cessation of sales involving the box.(50) The customer immediately refused to deal further with plaintiff until new boxes were made. Plaintiff therefore acquiesced but later sued for the loss of sales and the cost of switching boxes, arguing that defendant had no proprietary rights in the box. Defendant countered that his design was protected by copyright, but the court, while reducing the amount of damages on the basis of plaintiff's "negligence" in deciding to adopt defendant's design,(51) simply concluded that defendant's design did not express thought or sentiment, without giving any reason for such conclusion.(52)

The Bill of Lading Form and Fancy Seaweed Box cases thus seem to place Japanese copyright law in the "hard to copyright" rather than the "easy to copyright/hard to infringe" category.(53) The Japanese cases dealing with compilations(54) as well as those involving useful articles(55) tend to give further support for this conclusion. Rather than denying the expression of thought or sentiment, however, these cases often find that the work in question does not belong to the literary, scientific, artistic, or musical realm or that the thought or sentiment is not expressed in a creative way.(56)

b. Belongs to the Literary, Scientific, Artistic, or Musical Realm

Some cases in Japan seem not to regard the statutory specification of four realms to which works must belong as substantive limitations, provided creativity is present. For example, in the Minsei Confessions case,(57) defendant publisher compiled a book entitled "Minsei Confessions," containing notes and articles written by members of the plaintiff Japan Union of Democratic Youths (nicknamed Minsei) and originally published in plaintiff's newspapers and magazines. In response to defendant's argument that the works were not copyrightable, the court responded:

Works protected by copyright law are considered to be creations of thought or sentiment, that is, mental, intellectual creations belonging to the literary, scientific, artistic, or musical realms. In other words . . . , all creations of thought and sentiment in which truth, goodness, beauty, or other values of human society are expressed [are protected works]. So long as they are creations containing this type of thought or sentiment they can be considered as belonging to one of the literary, scientific, artistic, or musical realms.(58)

While dictum in the actual case, because the notes and articles in question would surely qualify as literary works without appeal to more abstract language, this same general view has been taken by some of the commentators as well.(59) Still, at least a few cases have taken a narrower view and are worthy of some attention.

For example, in the Knitting Graph case,(60) plaintiff created a quick reference chart for use in knitting and weaving, showing the relation between the length of the cloth and the number of stitches in accordance with the thickness and nature of the yarn being used. While finding an absence of both creativity and novelty, which may constitute independent grounds for the result,(61) the court also concluded that the chart did not belong to one of the four statutorily mandated realms:

While copyright applies to those intangible intellectual creations that are the fruit of a person's creative mental efforts, the sphere of application is limited to things belonging to the literary, scientific, artistic, or musical realms. We should consider that the law treats other things as the object of rights like patent and trademark, excepting them from the sphere of copyrightable works.(62)

The court then concludes, unfortunately without giving any reasons, that the knitting graph chart in question did not fit into any of the protected categories.

In contrast, the court in the Typeface Design case(63) discussed at length one of the four statutory categories, namely, artistic works. At issue was the copyrightability of typeface designed by plaintiff. The reasoning of the court is important because it extends well beyond the copyrightability of typeface alone and applies to all useful articles with an artistic component.

The court begins its analysis by observing that the JCL expressly includes "works of artistic craftsmanship" within the category of "artistic works."(64) The court acknowledges arguments that industrial designs and models could have characteristics of pure art but notes that the industrial property system, in particular the Design Law,(65) gives a certain degree of protection to useful articles that contain esthetic features. The difficulty of harmonizing this protection with a copyright statute interpreted to protect similar features led the court to conclude that the only useful articles protected as artistic works under copyright are those specifically covered by the statute and most closely related to pure works of art, namely, works of artistic craftsmanship. Typeface functions primarily as a means of communicating information and not solely to appeal to esthetic appreciation; therefore, it is not protected by copyright law.

It can of course be argued that typeface is a sui generis category that should be given special treatment. In the United States, for example, both the Copyright Office and the courts have so far concluded that typeface is not protected by copyright notwithstanding their inability to find statutory authority for their position.(66) If limited to its facts, therefore, the Typeface Design case in Japan may have little influence on the development of the law in other areas. Nevertheless, as outlined above, the reasoning of the court in the Typeface Design case is much more general. It divides works having artistic value into two mutually exclusive groups: pure works of art and works with artistic value having in addition a practical or utilitarian function or element. These latter (except for works of artistic craftsmanship) are completely excluded from copyright protection as artistic works.(67)

The intellectual property section of the Osaka District Court recently followed this approach to artistic works in the Perpetual Calendar case(68) and also considered the word "scientific" as applied to works under JCL's Article 2(1) definition. In this case, plaintiff created a single-sheet perpetual calendar based on color-coding the months of each year from 1917 to 2084 in a rectangular array.(69) Defendant used a very similar scheme in handbooks and almanacs that it produced.

The primary ground for denying copyrightability in this case seems to have been the idea/expression distinction.(70) With respect to plaintiff's argument that the calendar was an artistic work, however, the court restricted that term to works whose object was artistic appreciation like pure works of art or individually created works of artistic craftsmanship. While a viewer might at first regard the calendar as attractive, it could not be considered a pure work of art.(71)

The court also concluded that the calendar could not be considered a scientific work: It used colors and an index chart to do no more than replace earlier revolving or slide form calendars. Thus, the calendar only communicated the known idea of a perpetual calendar and did not itself express scientific creativity. Unfortunately, this cursory treatment mixes up the nature of the work with the requirement for creativity and is therefore uninformative about the types of works that might qualify for copyright protection if they do meet the creativity requirement.

A final decision dealing with the nature of works protected by copyright in Japan in the Long Tail Cock case.(72) Defendants bred and raised cocks of unusual beauty and uniquely possessing extraordinarily long tails, up to 9 meters in length. The cocks were very famous as objects of tourist interest and were even designated special natural treasures by the national government. The plaintiff in this litigation had taken a picture of the cocks and had it printed on postcards he offered for sale. Defendants had previously brought a copyright claim against plaintiff but abandoned the suit before decision. Now, plaintiff is suing defendants for damages caused by the former, allegedly frivolous, lawsuit.

In defense, defendants again asserted copyrights in the cocks. Because of the effort and skill that go into the breeding and raising of these unique cocks, the court concluded that plaintiff did infringe a general property right of the owners in the cocks.(73) It therefore denied plaintiff's claim. However, the court also denied copyrightability:

We should interpret creative expression of thought [or sentiment] in this provision as requiring novelty in the activity creatively expressing such thought [or sentiment]. With respect to the management and breeding [activity] necessary to produce the cocks, no evidence has been submitted to permit a finding that defendant's scheme was novel and that this novel scheme operated to produce the cocks. Therefore, we cannot view defendant's special management and breeding activity in raising the cocks as novel creative expression. Moreover, the principle of copyright protection of works is to protect creative activity of a cultural nature. . . . Basically, the raising of the cocks comes down to breed improvements based on cross-fertilization and special management and breeding methods, and we should not say that anyone else who produces the same or a similar organism infringes defendant's rights by copying defendant's novel activity.(74)

This is a very interesting case, raising as it does the basic question of the extent to which copyright protection attaches to living "works." Unfortunately, the court's reasoning is far from clear as to the basis for denying protection and, in particular, does not rely in any way on the living nature of the work. Lack of "novelty" seems to be at the forefront of the court's thinking,(75) and the last sentence quoted above seems to show concern that copyright protection in the cocks might somehow extend to the methods for creating them.(76) With respect to the issue of immediate concern here--whether the work belongs to the artistic, scientific, literary, or musical domains--the court is typically terse and uninformative. But by focusing on the "cultural nature" of artistic works, the decision seems to be in line with those noted earlier that limit artistic works to works of pure art or works of craftsmanship.(77)

c. Creativity

The cases briefly summarized above relied in their reasoning, at least in part, on the statutory requirements that protected works must express "thoughts or sentiments" and must belong to the "literary, scientific, artistic, or musical domain." It seems, however, that the results in most of these cases can be explained by reference to other copyright concepts and that, except possibly in the case of artistic works where there is a problem of overlap with the Design Law, neither of these statutory requirements presents a significant barrier to copyright protection.

On the other hand, the statutory requirement that thought or sentiment be expressed "in a creative way" may be more substantive. While it cannot be said that Japanese courts apply a uniform interpretation to the creativity requirement, and while at least some cases and fact patterns seem to call for an interpretation that differs little from the originality requirement of American law, a comprehensive study of the Japanese cases leaves the impression that Japanese creativity differs from American originality in general and constitutes a greater obstacle to copyrightability.

(1) Quantum of Creativity. The Gold Coin case(78) is the only decision in Japan denying copyright protection on the ground of insufficient difference from existing public domain works. In this case petitioner designed and sold gold and silver coins based on a large, well known coin of the 16th century. Petitioner substituted the style from a 17th century coin for the form of the characters indicating the face amount of the coin and substituted common but more distinct tree figures at various places on the coin. Petitioner sought a preliminary injunction against respondent, who sold coins of a similar design.

The court concluded that making such slight changes in a preexisting coin did not result in a work of artistic craftsmanship and denied petitioner's copyright. Although a United States court may have admitted a copyright as a derivative work on these facts,(79) the general standard used by the court in the Gold Coin case seems not too different from the more-than-merely-trivial, distinguishable variation standard for determining originality under American copyright law.(80)

(2) Novelty. It is generally accepted under United States copyright law that novelty--having characteristics new and different from all prior works, whether or not known to the current author--is not a condition of copyright protection. The originality requirement demands only independent creation by the author, whose work is then protected even if it turns out to be substantially similar to a preexisting work.(81) While one modern case in Japan, in dictum, seems to interpret the Japanese creativity requirement in a similar way,(82) others adopt an approach suggesting that novelty is an element of copyrightability in Japan.

We have already seen one modern court, faced with unusual facts in the Long Tail Cock case, emphasize that novelty is an element in the creative expression requirement of Japanese copyright law.(83) An oft-cited old decision is the Telephone Directory case.(84) Plaintiff had compiled a telephone directory equivalent to the American Yellow Pages, in which the telephone subscribers were classified in accordance with their types of business or occupations, arranged in alphabetical order. The court begins its analysis with some general thoughts on the nature of copyright:

The essence of copyright is that the work must contain the crystal of new thought. . . . While a simple list of names would not be eligible for protection, . . . a directory should be copyrightable if it is the product of considerable thought faculties, systematically employing a method of arrangement, and contains new thought content.(85)

The court denied the copyrightability of plaintiff's directory on the ground that a directory of identical arrangement (occupations in alphabetical order) had been published some years earlier:

The plaintiff's telephone directory cannot be considered a product of new thought, because the fundamental concept of arranging the telephone numbers in alphabetical order by occupation is identical to the thought [in the earlier work].(86)

The Telephone Directory court did not rely on any allegation that plaintiff had in fact copied from the earlier work. The mere prior existence of a work containing the same copyrightable elements was sufficient to deny protection. If the case remains authoritative, therefore, it implies the presence of a novelty element for copyrightability under Japanese law.

Similarly, the Knitting Graph case, discussed briefly above,(87) offered as an alternative reason for denying copyrightability that showing the functional relationship between two numbers on a graph was a routine, everyday event. Therefore, to do so did not require plaintiff's creative thought, thereby repeating the theme that something new and nontrivial is required for copyright protection and that originality in the sense of independent creation is insufficient.(88)

The Traditional Song/Story case(89) is another venerable and frequently cited decision of the Great Court of Judicature, the prewar forerunner of today's Supreme Court, and it contains a dictum relevant to the novelty question. The owner of the purported copyright at issue was a professional reciter of traditional stories presented in a more or less monotone song form. Defendant was charged in a criminal proceeding with reproducing without permission authorized recordings of the recitations.

The Great Court of Judicature overturned a verdict of guilty by holding that there was no copyright in the original recordings. Recall that Japanese copyright law does not require a work to be fixed in a tangible medium of expression. It appears, however, that recitations of the particular type of song/stories at issue would vary somewhat from one to another. The Court says that no particular variant of unscored music would be protected until it was so firmly fixed in the performer's mind that it could be repeated from time to time and place to place. It held for the defendant on the ground that the reciter's song/stories were not sufficiently definite.(90) In any event, the Court had the following to say about novelty in musical works:

Copyright is born when an author composes a new song with his own creativity or creates a melody that has not been found by his predecessors.(91)

Although the express ground for the decision was lack of definiteness, the opinion implies that the particular recitation did not add sufficiently new material to the song/stories in question to qualify for copyright protection.

Finally, and much more recently, the Intellectual Property Division of the Osaka District Court looked for novelty as a condition to copyrightability in the Perpetual Calendar case, discussed briefly above.(92) After concluding that the arrangement of colors in a color-coded scheme to distinguish the seven possible months (depending on the day of the week with which the month begins) was not an artistic work, the court bolstered its conclusion with the following remark:

Once one decides to use colors to distinguish the seven elements of the marking scheme required by the conception [of the calendar], choosing the seven colors of the rainbow as was done here is something that anybody could think of. Therefore, the choice of those colors does not show any kind of originality.(93)

Moreover, in independently rejecting plaintiff's claim on the ground that plaintiff was seeking protection for the underlying idea or conception of the calendar, the court said:

Even if we assume that the conception is something scientific and contains new originality, [the calendar] is simply a useful article not belonging to the category of works that "express in a creative way" that thought (conception).(94)

There are therefore at least some cases in Japan in which the absence of novelty has stood as a barrier to copyright protection.(95) Moreover, there is another side to the novelty coin, suggested by the Telephone Directory case discussed above.(96) A number of decisions have found the creativity requirement satisfied when there is novelty in the underlying idea or conception expressed by the work, as opposed simply to novelty or newness in the expression of the idea. These cases and the problems resulting from this approach are discussed in the next subsection.

(3) Creativity in Idea. American copyright law adopts the following general logic: The works protected are original works of authorship. If a work contains originality of expression, in that the expression owes its origin to the purported author, that expression is protected, while the ideas expressed, whether or not new or original with the author, may be freely adopted by others. The scope of protection is thus limited to the original expression that qualified the work for protection in the first place.

In Japan, a protected work must express thought or sentiment in a creative way. The statutory language thus looks toward creativity of expression in much the same way that the United States statute looks to originality of expression. Nevertheless, some Japanese courts, especially in cases dealing with works of utility, have severed the statutory creativity requirement from its moorings in the work's expression of thought and sentiment and have sought creativity in the underlying idea as a condition to protection. Such an approach can not only lead to denial of protection when a work presents new information in accordance with an established methodology, but if carried too far it can lead to protection of an underlying creative idea.

We have already introduced the Telephone Directory, Knitting Graph, Long Tail Cock and Mujin Table cases, all of which denied copyright protection to the work in question. In the Telephone Directory case,(97) the court denied a copyright on a compilation arranged pursuant to a scheme that was itself not creative (alphabetical order by occupation) and had been used in the past to make a similar compilation (telephone directory). In the Knitting Graph case,(98) the underlying idea of showing the functional relationship between two variables on a graph was deemed too mundane to warrant protection, even in the absence of evidence that anyone had previously shown those particular variables (length of cloth versus number of stitches) on a chart before. In the Long Tail Cock case,(99) the court found no particular creativity in the method by which the cocks were bred and raised, notwithstanding that such method led to the long and beautiful tails for which they were prized. The Mujin Table case(100) denied protection on the ground that there was no creative value to protect in plaintiff's expression of a public domain idea concerning a method for making installment payments.

Much of the policy basis for denying copyrightability in cases like these is set forth in the reasoning of the Journalizing Table case,(101) in which plaintiff joined concentrically two paper disks that were marked in such a way that rotations gave a ready reference for the accounting journal entries necessary for some 36 transactions. Defendant modeled a similar device on plaintiff's, and it resembled plaintiff's work in terminology and figures. The Kobe District Court, Himeji Branch, allowed the copyright claim, but the Osaka High Court reversed:

Plaintiff's journalizing table does not show specific scientific creativity, because the sentences printed in the radial-shaped columns represent common, everyday transactions and because the names, arrangements, combinations, and methods of classification for titles of accounts in debit and credit columns shown by revolving the disk are most fundamental and typical. If copyright were admitted on such common expressions of technical terms, the result would be that only the author could use them. Consequently, the development of culture would possibly be hindered.(102)

Nevertheless, notwithstanding the result denying copyrightability, the focus of these courts on creativity in the underlying idea is an invitation to analytical confusion because it operates broadly and carries with it no natural limitations that can adjust the level of protection or free use to the nature of the work at hand. The works involved in these cases do, in fact, deserve more individualized treatment. For example, to deny copyright protection of a telephone directory simply on the ground that it uses a traditional (and highly useful) ordering scheme can largely obliterate copyright protection for factual compilations. This results in turn in a lessened incentive to produce some socially valuable compilations, while at the same time possibly giving a socially undesirable long-term monopoly in the first person to make a valuable compilation in accordance with a creatively new scheme. What is needed is not an outright denial of copyright protection but a limitation on the scope of protection that permits independent production of a similar compilation (independent legwork) but does not protect the useful aspects of the ordering or arrangement scheme. While United States copyright law, too, has had its difficulties adjusting to the "selection and arrangement" standard for copyrightability of factual compilations,(103) courts have generally found ways to protect the physical labor of collecting the information against misappropriation while leaving the road clear for independent collection of similar groupings of facts.(104)

On the other hand, the Knitting Graph and Mujin Table cases both involved the creation of charts showing the functional relationship between two variables in accordance with ideas determined to be in the public domain. Any chart seeking to show the same functional relationship will necessarily be similar in that fundamental respect, and that level of similarity alone should not be enough for a finding of copyright infringement. There is, however, in almost all of these cases considerable room for individualization in the labelling of axes, titles, explanatory notes and similar textual information, so it is not necessary to deny copyrightability outright, as these two cases do, to insure against monopoly over the underlying useful idea. The charts in these cases are their authors' particular expression of the idea, and it is not unreasonable to protect them at least against verbatim copying. Thus, United States copyright law generally protects such works against literal copying, provided of course that the expression in question is original with the purported author.(105)

Even American copyright law, however, will not protect expression that merges with the idea expressed, that is, where there is only a limited number of ways of expressing the idea or where practical or use considerations dictate that the expression be formulated in a particular way.(106) This may well be the teaching of the Journalizing Table case in Japan, because once the transactions covered and the concentric disk method of representation are chosen, there is likely to be little room for variation in the standard accounting terms that must go into the disk columns. Still, it seems preferable to deny copyright protection on the ground of merger of idea and expression rather than because there is no creativity (or originality) in the idea expressed. While both theories may come to the same result in the Journalizing Table case, the former approach gives (limited) protection in cases like Knitting Graph and Mujin Table. Again, therefore, we see Japan, at least in general, in the "hard to copyright" rather than the "easy to copyright/hard to infringe" category.(107)

Furthermore, an approach that focuses on creativity in idea as a basis for copyright protection risks protecting too much once sufficient creativity is found. Several cases, for example, have followed the suggestion of the Telephone Directory case to the effect that the first person to make a factual compilation in accordance with a new and creative idea obtains a copyright in the work. The risk is that the scope of protection will be associated with the assumed prerequisite for copyrightability, namely, creativity in the idea, and extended to cover that organizational concept.

Some of the problems that can emerge from reliance on creativity of idea as a basis for copyright protection are exemplified by the Music Notation case. Plaintiff obtained copyright registrations covering 15 musical pieces for the koto.(108) Under the traditional methods of musical notation, works created by playing and singing(109) were taken down only incompletely and could not be fully reproduced simply from the written notations. Defendant created a new style of notation and, with the permission of plaintiff's predecessor in interest as to at least some of the works at issue, took down the works in scores from which they could accurately be reproduced instrumentally or vocally. Defendant then registered her scores as new works, and plaintiff sued for cancellation of the registration and a declaration that defendant had no copyright in the scores.

Three opinions were handed down in the Music Notation case, including a final decision by the Great Court of Judicature.(110) The important point for present purposes is the emphasis by all of the courts in the case on novelty and creativity of the defendant's new scoring technique in concluding that her works were protected, whether as derivative works or as new works.(111) While it is clear that the Great Court did not intend to imply copyright protection in the scoring methodology developed by defendant, the emphasis on creativity in the method as a basis for copyrightability of the individual scores leaves a logical hiatus concerning precisely what is protected by defendant's copyright. If copyright law protects creative expression and creativity is found in the methodology, then either the methodology is protected or there is nothing to protect. Coupled with the reasoning of the Telephone Directory, Knitting Graph, and Mujin Table cases, it implies that scores of other music made by third parties using defendant's notation method might be denied protection altogether. A narrower ground for the decision that would have avoided these difficulties would be that defendant's scores were derivative works as complete written adaptations(112) of the oral and incompletely scored musical works of plaintiff.(113)

Another venerable case out of the pre-war Great Court of Judicature also illustrates some of the problems that can result from seeking creativity in the idea of a useful work as a basis for copyright protection. In the Court Diary case, plaintiff printed and published a "Court Diary" that added to a standard schedule book or calendar blank columns for each day with headings relevant to judicial proceedings, intended for use by trial lawyers to keep track of the dates and other developments in their cases.(114) It also included tables of information useful to lawyers.(115) Defendant published a "Lawyer's Diary" that was similar to plaintiff's work, and plaintiff sued for copyright infringement. Two district courts and one court of appeals(116) held for defendant, reasoning that plaintiff's work was not copyrightable on grounds similar to those of the Journalizing Table case:(117) The headings and organization of plaintiff's diary, albeit useful and convenient, could easily be conceived of by anyone experienced in litigation. Consequently, there was no creative idea or thought that could serve as a basis for a copyright.

The evidence of actual, verbatim copying in the Court Diary case was, however, strong, in that omissions and mistakes in plaintiff's work were carried over into defendant's. Possibly responding to the obvious injustice of allowing verbatim appropriation of the efforts of another, the Great Court of Judicature reversed the lower courts.(118) It found the mental effort of plaintiff in selecting, collecting, arranging, and classifying the material to be the expression of creative thought that was manifested in the work as a whole, which thereby qualified for copyright protection as a compilation. Nevertheless, the Court emphasized plaintiff's creativity in the underlying idea for making a convenient judicial diary, and while permitting a finding of infringement with respect to the slavish copying evident in that case, this approach leaves open both the scope of protection provided by plaintiff's copyright and the question of whether a later producer of a noninfringing diary can show the necessary creativity to obtain a copyright on his own work.

The Court Diary case in Japan invites comparison to the famous decision of the United States Supreme Court in Baker v. Selden.(119) The plaintiff in Baker was the author of a book explaining a new system of bookkeeping, and included in the book were some sample forms appropriately laid out with lines, columns, and headings for using the system explained in the book. Defendant wrote a book explaining the same system, with his own set of sample forms that in fact differed in their overall arrangement of headings and columns from plaintiff's forms. Plaintiff sought relief under copyright law asserting that defendant's use of the same system infringed plaintiff's copyright.

The Baker Court could have found for defendant on the limited ground that defendant did not appropriate plaintiff's expression, as defendant's forms were laid out differently. In fact, Professor Nimmer criticizes the case for not so limiting its language.(120) Instead the Court wholly denied copyright protection, reasoning that plaintiff's forms were necessary for the implementation of plaintiff's system and that copyright did not protect systems or methods.(121) In this respect the Baker approach is much more similar to that of Journalizing Table than Court Diary.

The approach taken by Baker is also important when the question of standardized methodology is considered. Under the Baker approach, even if a variety of ways exists for implementing a system or methodology through graphic or literary works, so that the works would normally be copyrightable, they may not be protected if standardization of a particular form is important in assuring compatibility among users of the system.(122) This issue is now arising with increasing frequency in connection with the degree of copyright protection available for user interface screens and displays associated with computer programs and is of great importance.(123) The work in Court Diary was not only a collection of blank columnar forms for use by lawyers. It also collected other types of public domain information useful in the legal profession, and this may distinguish it from the work in Baker. Nevertheless, even if the Baker Court had limited its decision in the manner suggested by Professor Nimmer, the emphasis in the Court Diary case on creativity of idea as a basis for copyrightability would still show a sharply different philosophical approach.

(4) Creativity in Expression. In contrast to the cases discussed in the previous subsection, which tended to focus on works of utility and were generally older, more recent cases involving literary and artistic works have based a finding of copyrightability on creativity perceived in the work's expression. At least with respect to traditional literary and artistic works, creativity is rarely even a serious issue provided the book or painting, for example, was not copied from another's. This represents an approach that is much closer to that taken by United States copyright law.

In the Sunshine Rights case,(124) for example, the plaintiff was an attorney (and former judge) who specialized in the so-called "right to sunshine." He wrote a book on the subject entitled "Sunshine Rights--The Sun and Cities of Tomorrow, which was published in 1973, and defendant, also an attorney, published a book on the same subject in 1974 entitled "The Sunshine Cases and Environmental Rights--Theory and Practice." Defendant sought to deny plaintiff's copyright by arguing that plaintiff's book lacked creativity in that its content was all public information and general knowledge. The court, however, had little difficulty finding that the book creatively expressed plaintiff's thought and upheld the copyright. On the standard for creativity, the court stated:

The creativity element of copyrightability is not required with respect to the thought that is the content of the expression but rather in the concrete form of the expression. Even with regard to public information and general knowledge, the perception and words used to express it will vary with the personality of the individual.(125)

Later the court indirectly rejected the notion of creativity in the underlying idea as a basis for copyrightability:

The existence of copyright infringement, in short, is a question of whether there was unauthorized use not of the thought as such but of the creative concrete expression relating to that thought (without necessarily inquiring whether there is novelty in the thought itself).(126)

In the War Chronicles case,(127) the copyrightability of plaintiff's textual work was not even questioned, so the only issue was the scope of protection in historical works. As discussed below when we compare the scope of protection,(128) Japanese law seems very close to that of the United States with respect to works of this type.(129)

The Intellectual Property Section of the Osaka District Court recently followed the approach of focusing on creative expression as a basis for copyrightability in the Marine Supplies Ad case, which involved a commercial advertisement.(130) Plaintiff's ad consisted of a single page picturing a linked chain parallel to the borders of the page, depicting on the outside of the chain 18 evenly spaced marine tool parts (pulleys, anchors, etc.) and showing on the inside a marine oil drilling rig in silhouette in the ocean, a marine valve in inset, and English language text concerning the company and its products. The court concluded that, taken as a whole, the ad was designed for its visual effect by placing all of the visual and textual elements in balance and expressed this composition as a single artistic collection. In concluding that this expression was creative, the court reasoned as follows:

Looking at the content of what the ad is trying to express, it does not go beyond merely showing the services and parts offered by [the plaintiff], but if we turn our eye to the expressive form, the work appeals to the esthetic appreciation of the viewer as a graphic expression of the single collection taken as a whole and is seen as the manifestation of the maker's creativity [dokusousei] in the composition. Therefore, as a graphic work, [plaintiff's ad] can be considered an artistic work similar to the category of paintings listed in Article 10(1)(iv).(131)

Therefore, plaintiff's ad satisfied the requirements for copyrightability. Perhaps more important, however, by focusing on composition as supplying the creative basis, the court was able to conclude that defendant's ad, involving a different composition of otherwise quite similar elements, did not infringe.(132)

The quotation from the Sunshine Rights case above found creativity when the final product would inevitably vary with the personality of the author. It is important to observe that the Japanese courts have carried this notion over to computer programs. In the Space Invader case,(133) defendant made a direct ROM-to-ROM copy of plaintiff's videogame and defended against plaintiff's assertion of copyright infringement on the ground that the symbolic language used to write the program could not be understood by human beings and so was incapable of expressing thought at all, let alone creatively. The court responded that experienced expert programmers could in fact understand the program's expressive content and further found that the program was creative:

Discovering the algorithms and combining the instructions require logical thought by the program maker. Moreover, it is obvious that the program that is the final product will manifest individual differences depending on the programmer. Therefore, the program is the creative expression of the program maker's scientific thought and is a work protected by copyright.(134)

A similar approach was followed in two other videogame cases(135) as well as in a recent case upholding the copyrightability of a computer operating system.(136)

(5) Creativity in Compilation Works. The Telephone Directory and Court Diary cases discussed above(137) involved compilations of preexisting factual information or elements in which the courts seemed at least in part to look for creativity in the idea that gave utility to the works. In general, however, compilations must be treated differently from other works, if for no other reason than that the statute gives compilations special treatment by protecting only those that, "by reason of the selection or arrangement of their contents, constitute intellectual creations."(138) Japanese courts tend to read this definition strictly, requiring intellectual--mental as opposed to physical--activity leading to creativity in the selection or arrangement of the compiled materials.

An important and carefully reasoned recent example comes from the Intellectual Property Section of the Tokyo District Court in the American English Glossary case.(139) Here, plaintiff was the author of two works, the "American English Glossary" ("Glossary") and "Introduction to American English" ("Introduction"). The Glossary contained some 3,000 standard American words, idioms, and common phrases, in alphabetical order of English headings, with sample sentences, occasional pronunciation guides, Japanese translations, other ways of saying the Japanese translations in English, notes, and other explanatory material. The sample sentences were taken or adapted from American newspapers and magazines published between 1946 and 1954 and from Japanese university entrance examinations. The Introduction also presented under some 113 headings American words, phrases, and sentence patterns in conversation form, followed by explanations and practice problems (with solutions at the end of the book).

The court had no difficulty in finding that the Glossary was a compilation work, as plaintiff's explanatory notes and arrangement made it a kind of dictionary. Moreover, plaintiff's own thought was applied in choosing appropriate sample sentences from a wide variety of sources. Thus, the "intellectual creation" by "selection or arrangement" standard was easily satisfied. However, plaintiff also asserted a copyright in the new methods of use and sample sentences themselves, and the court denied this claim on several grounds: First, the words, phrases, and idioms collected by plaintiff to show the new methods of use expressed nothing more than language itself and not plaintiff's thought or sentiment. Moreover, plaintiff was not the "creator" of the sample sentences, because all were taken or adapted from other sources. Second, and more important, the court denied creativity, even in those parts that did involve plaintiff's thought:

The Japanese translations of the words, phrases, idioms, and sample sentences as well as the other ways of phrasing the headings in English can be said to express the result of plaintiff's mental activity. However, they are all Japanese translations of, or other English ways of saying, everyday, widely used English words, phrases, idioms, and short sentences. This differs from the translation of a long book, in that anyone having the ability to understand English vocabulary correctly would produce something similar. It cannot be said to be solely plaintiff's creative expression.(140)

Furthermore, the court extended this reasoning to deny even a compilation copyright in the Introduction:

Plaintiff argues that the Introduction is a compilation work as well. While we do not ignore the elements of selection and arrangement of materials such as the words, phrases, idioms, and sample sentences collected in [the Introduction] and, in the light of the content of the writing, recognize that they form ingredients of the content of a single work, we cannot say on that ground alone that the Introduction is a compilation work, so plaintiff's argument is unjustified. Moreover, and for the same reasons as given above for the Glossary, we cannot recognize a copyright in the individual words, phrases, idioms, and sample sentences contained in the Introduction.(141)

Thus, even a lengthy collection of sentences designed to illustrate basic English language skills and arranged according to a scheme devised by the author was denied status as a compilation.(142) Of course, the number of books in Japan purporting to teach English is reaching astronomical proportions, and the court was perhaps understandably reluctant to give any further incentive to litigate to so many authors, knowing that there could be a very large number of at least colorable claims of similarity. Still, the case evinces a higher barrier to copyrightability than would be expected under American law.

Maps represent another important area raising difficult conceptual problems under copyright law. Maps are expressly included among the Article 10 examples of works, but the courts still require some form of creativity before admitting protection. For example, the Residential City Map Book case(143) offered by way of dictum some observations on the kinds of maps that could qualify as works:

In general, as maps do nothing more than express terrestrial phenomena objectively through specified symbols, there is little room for individual expression. Compared with authorship in literature, music, or the plastic arts, it is usual that the scope of copyright protection is narrow. However, with respect to the methods for choosing, selecting, arranging, and displaying the various materials, the author's individuality, knowledge, and experience play an important role, and one can say that creativity is expressed therein. Thus, copyrightability can be recognized in maps in the synthesis of the selection and arrangement of materials and expressive methods.(144)

Similarly, the Globe World Map case looked for creativity in a selection or arrangement scheme, and one based on mental as opposed to purely physical efforts.(145) Moreover, by emphasizing creativity that distinguishes the work from other maps,(146) these courts seem to have some concept of novelty in mind, if not as an element of copyrightability then at least as a justification for awarding copyright protection where it appears that the maker has expended significant time and effort in putting the map together.(147)

The compilation cases are relevant to the protection of computer databases.(148) Although Japan now makes express provision for the protection of databases,(149) the statutory language invites, if not compels, an interpretation of the creativity requirement similar to that applied to compilations. But by focusing on mental efforts of selection or arrangement, many valuable databases deserving of protection can easily fall outside the protective umbrella. The most comprehensive databases, for example, will not show much ingenuity in what is included because their very purpose is to include everything relevant to a particular area or discipline.(150) Moreover, the individual elements of the database may be facts or other noncopyrightable works. Still, the physical labor of collecting the information and entering it into the database can be enormous, with a concomitant high cost in time and money. In order to include such databases within the protective scheme of copyright, Japanese courts will have to look beyond creativity in selection or arrangement. Even if they do this, however, there remains the possibility that they will start looking for creativity in the underlying idea, as in the Telephone Directory and Court Diary cases.(151) This carries with it the danger of significantly enlarging the scope of protection relating to factual information and ideas involving data format and structure.

B. The Scope of Protection

1. United States

The scope of copyright protection in a work of authorship under United States law is succinctly, although vaguely, contained in the idea/expression dichotomy, now statutorily embodied in section 102(b) of the USCA.(152) No formalities are a prerequisite to copyright protection, and, in sharp contrast to patent law, the author need make no claim concerning which aspects of his work are entitled to protection. In other words, the author is not required to distinguish a priori those parts of his work he considers original expression, which are protected, and those parts he considers idea that are not protected (whether or not original). That problem is left to the courts in infringement litigation. In resolving the problem, courts attempt to draw a social policy balance between incentives for authorship, on the one hand, and free and open exchange of ideas and information on the other. But because the originality threshold for copyrightability is very low, requiring little more than that the work "owe its origin" to the purported author,(153) the analysis for achieving the proper balance primarily involves distinguishing idea from expression. Only one verbal formulation of the test--idea versus expression--is thus made to serve in a wide variety of circumstances. Yet, depending on the circumstances, the social policy balance must often be drawn at a different point. It is not surprising, therefore, that what the courts consider "idea" and what the courts consider "expression," or in other words the "scope of protection," varies with the nature of the work.

It is not possible here to account for or reconcile all the nuances associated with this general principle. However, the Ninth Circuit in Landsberg v. Scrabble Crossword Game Players, Inc.,(154) provides an excellent summary in distinguishing fact works from fictional works:

One consequence of the policy in favor of free use of ideas is that the degree of substantial similarity required to show infringement varies according to the type of work and the ideas expressed in it. Some ideas can be expressed in myriad ways, while others allow only a narrow range of expression. Fictional works generally fall into the first category. . . .

Factual works are different. Subsequent authors wishing to express the ideas contained in a factual work often can choose from only a narrow range of

expression. . . . Therefore, similarity of expression may have to amount to verbatim reproduction or very close paraphrasing before a factual work will be deemed infringed. . . .

[C]opyright law protects expression of unprotectible ideas only insofar as is possible without protecting the ideas themselves. . . .

The plaintiff in Landsberg had written a book on strategy for the popular word game called "Scrabble," and defendant produced a similar book. Much of defendant's phraseology was similar, but not identical, to plaintiff's, and many sentences were of a simple declarative type that did not permit much variety in expressing their underlying idea.(155) The court noted that defendant's book did not reproduce the overall arrangement or plaintiff's work and concluded that the similarities between the two factual works were no more than necessary to explain the unprotected systematic strategy developed by plaintiff.

Another important United States case is Hoehling v. Universal City Studios, Inc.,(156) which sets up a similar distinction between works of fiction and historical works. In this case the plaintiff published a book, based on exhaustive research, offering a theory concerning who was responsible for the explosion and fire aboard the German dirigible "Hindenburg," which took the lives of 36 people in 1937. Defendant made a movie about the Hindenburg disaster, and plaintiff asserted copyright infringement, claiming that defendant copied the essential plot of his book. The lower court granted defendant's motion for summary judgment, and plaintiff appealed. Because of this procedural setting, the appellate court had to accept as true plaintiff's claim that his essential plot had been copied.(157) Nevertheless, the court found defendant not liable, reasoning as follows:

[The cases cited by plaintiff], however, dealt with works of fiction, where the distinction between an idea and its expression is especially elusive. But, where, as here, the idea at issue is an interpretation of an historical event, our cases hold that such interpretations are not copyrightable as a matter of law. . . . To avoid a chilling effect on authors who contemplate tackling an historical issue or event, broad latitude must be granted to subsequent authors who make use of historical subject matter, including theories or plots. . . .

. . .

In works devoted to historical subjects, it is our view that a second author may make significant use of prior work, so long as he does not bodily appropriate the expression of another. This principle is justified by the fundamental policy undergirding the copyright laws--the encouragement of contributions to recorded knowledge. The "financial reward guaranteed to the copyright holder is but an incident of this general objective, rather than an end in itself." Knowledge is expanded as well by granting new authors of historical works a relatively free hand to build upon the work of their predecessors.(158)

In holding for the defendant, the court concluded that all elements of plot allegedly taken were based on plaintiff's interpretation of the historical facts, or involved reporting those facts themselves, or involved simply the use of characters and settings typical of the times (so-called "scenes a faire") that are standard literary devices, none of which are the subject of copyright protection.

Moreover, while there is contrary authority,(159) the most recent federal appellate decision on the subject holds that labor expended in discovering and reporting factual information does not render the information copyrightable. In Miller v. Universal City Studios, Inc.,(160) plaintiff was the author of a book based on an actual kidnapping, in which the daughter of a wealthy land developer was buried alive for 5 days before she was rescued. Defendants made a movie for television at least arguably based on the book. A jury found infringement and defendant appealed, arguing that the trial judge's instruction to the jury to the effect that "research is copyrightable" was erroneous.

The court of appeal agreed with the defendant:

The valuable distinction in copyright law between facts and the expression of facts cannot be maintained if research is held to be copyrightable. There is no rational basis for distinguishing between facts and the research involved in obtaining facts. To hold that research is copyrightable is no more or no less than to hold that the facts discovered as a result of research are entitled to copyright protection. Plaintiff argues that extending copyright protection to research would not upset the balance because it would not give the researcher/author a monopoly over the facts but would only ensure that later writers obtain the facts independently or follow the guidelines of fair use if the facts are no longer discoverable. But this is precisely the scope of protection given any copyrighted matter, and the law is clear that facts are not entitled to such protection.(161)

In summary, because of the low threshold presented by the originality requirement, there is only a tenuous relation under United States copyright law between the standard for copyrightability (originality) and the scope of protection (idea/expression). That is to say, only those elements of the work original to the author are protected against copying, but original expression is protected to the extent it consists of more than a "merely trivial" variation or combination of preexisting works.(162) Among the elements original to the author, the scope of protection is determined largely by policy judgments under the idea/expression distinction concerning how much of an author's original contribution should be freely available to subsequent authors. Neither facts nor the effort involved in discovering facts are protected by copyright law, and the scope of protection in factual and historical works is very narrow.

Japanese copyright law is similar in many respects, but to the extent the Japanese creativity requirement differs from the American originality requirement, the standards for determining copyrightability and those for determining the scope of protection can conflict with one another. This is discussed in the next section, after reviewing the Japanese conception of the idea/expression distinction and the way courts in Japan adjust the scope of protection according to the nature of the work.

2. Japan

a. Idea/Expression Distinction

Japanese copyright law does not contain a statutory equivalent to USCA section 102(b) expressly excluding ideas from the scope of copyright protection, but this general principle has been firmly established by judicial rule. For example, in the Warehouse Design case,(163) plaintiff held a copyright in the design of a refrigerated warehouse and asserted that defendant's design, and the building constructed pursuant to defendant's design, infringed his copyright. Plaintiff admitted that there were differences in scale and form as well as floor plans, so that defendant's design was not a simple reproduction of plaintiff's. The court agreed that even a partial taking can be an infringement if the part taken is essential to the first work and itself shows originality and individual distinguishing features but was careful to limit the meaning of "essential":

However, as to whether or not the part taken is essential, the decision should be based on the existence or nonexistence of novelty or individual distinguishing features in the concrete or material expressive form itself. It is inappropriate to compare the thoughts or ideas (in this case, the technological thought in building a refrigerated warehouse) that are perceived or understood from the work.(164)

Other cases equally illustrate the general reluctance of Japanese courts to extend the scope of protection beyond the form of expression to ideas.(165) On this point, Japanese and American copyright principles seem nearly identical.(166)

b. Dependence on the Nature of the Work

There is also much similarity in how the scope of protection varies with the nature of the work, and this is exemplified by a number of cases. The Diode Thesis case(167) dealt with scientific works, in which the scope of protection is narrow:

Laws of nature, their discovery, and the creations of technological thought that make use of them are the common truths of everyone. Because their free use should be permitted to anybody, they cannot become the object of protection of the moral or economic rights set forth in the Copyright Law and should be considered the object of protection only of industrial property rights like patent rights, utility model rights, and design rights separate from copyright. Of course, even with regard to laws of nature, their discovery, and inventions that make use of them, if something describes such things creatively, expresses creatively their logical processes, and belongs to the scientific, artistic, etc., realm, it can be the object of protection of moral or economic rights, separately from its content. The question here is whether [the scientific theses involved] fall into this class.

. . .

Concerning the parts of the theses that deal simply with the explanation of scientific laws, there is a difference from a general work of literature in which there are many ways to explain similar circumstances. By their nature there is much universality and limited individuality in the forms (methods) of expression.(168)

The court found no evidence of room for creativity in plaintiff's method of explaining the scientific laws pertaining to the crystal under consideration or its characteristics.(169)

Several cases vary this theme by denying infringement on the ground that a narrow range of expressive possibilities will necessarily lead to some similarities in the final product. These cases are rarely clear about whether they are simply raising the standard for proving infringement with respect to such works because the probability of independent production is higher,(170) or whether they are narrowing the scope of protection as a matter of policy, but the result is generally the same, namely, a lesser degree of protection for the original work.

For example, a narrow scope of protection in historical works is shown in the War Chronicles case.(171) Plaintiff was a historian specializing in modern political and military history. Plaintiff published two works, "The Japanese Naval Air Corps--Lives of Aces" and "The Japanese Army Air Corps--Lives of Aces." Defendant published two works on the same World War II subjects as two of plaintiff's works, "Legends--Lives of the Japanese King Attack Pilots" and "A Swift Wind," and admitted that he referred to plaintiff's works as one of his sources. Plaintiff sued for copyright infringement based on descriptive similarities, but the alleged taking covered fewer than nine pages, accounting for some 1/20th, of defendant's work. The court recognized that a taking of less than the entire work could still constitute infringement, but reasoned that in the case of historical narrative the range of what should be considered substantially similar should be narrow:

When we review the nature of the works and the form and content of their narratives and consider the case of descriptively treating an identical subject as these works, there are times when not only the themes will be the same but we can fully expect the partial occurrence of identity or similarity even in the form of description. In this sense, we should say that the range of identity of [the works] is not too broad. Therefore, in order to say that a work is identical [for purposes of copyright infringement] we should require a showing of complete identity or that the large part is identical.(172)

In this case, at most 8-10 pages (less than 5%) were allegedly taken, and even assuming that a verbatim taking of that amount would infringe, there was sufficient variation in language beyond the basic biographical information that defendant's language fell outside the scope of plaintiff's copyright.(173) The effect of the case is to treat historical works very much in the same way as the United States decisions.(174)

Yet another Japanese variation on the scope of protection may be analogous to the scenes a faire doctrine under American law. Under that doctrine, stock scenes, events, and characters based on common experience and ideas are not protected and may even be copied verbatim.(175) The Study Aid Book(176) case applied a similar limitation to deny infringement in the case of books designed to help high school graduates do better in composition writing on their employment exams. Many standard subjects for composition, such as "My Family," "My Favorite Book," and "The Person I Respect," were taken up in both books, and the analytical treatment of the subjects showed additional similarities. Given that there was no verbatim similarity, the court was not too interested in looking further to find infringement:

Both works are aimed at the same readers and have essentially identical purpose and character. There are not a few similar student reference books that take as their theme the knowledge, characteristics, and recent examples and trends relating to employment exam compositions. With this type of book, rather than the author's experimenting with his own views or expression, it is usual to follow already accepted opinions and interpretations. It is the rule rather than the exception that sometimes, at least in part, there will be similarity in the essential purport or methods of description.(177)

The Residential City Map Book case(178) involved books of detailed maps of Toyama and other cities in Japan, showing the railroads, streets, rivers, sections, houses and other buildings, and open spaces, as well as the names of government offices, businesses, and individual families, partly with telephone numbers. Copyrightability was not an issue in the case, but as discussed above(179) the decision began by noting that the scope of protection in maps is normally narrow because of the limited room for individual expression. The more functional and utilitarian nature of residential maps was then said to require an even narrower scope of protection:

The choice and selection of the objects to be recorded on residential maps is fixed naturally by their character. The room for admitting creativity in choice and selection is extremely narrow. Their utilitarian and functional nature weighs heavily, and on the other side of that coin, the simple methods of draftsmanship are limited. Therefore, we should say that the copyrightability of residential maps is even more limited than that for maps in general.(180)

The court found many similarities of a type that one would expect for residential city maps but differences in the shapes of the pages (tall and narrow versus short and wide), the number of pages (151 versus 266), the areas covered (central city versus city plus suburbs), scale, the indication of individual and corporate names, and the method of laying out streets, rivers, and buildings. These differences were sufficient to convince the court that the ordinary observer would not perceive plaintiff's maps in defendant's, implying that there would therefore be no infringement even if defendant had partially copied from plaintiff.(181) In a parenthetical remark, however, the court noted that the plaintiff's maps showed building lot numbers only in exceptional cases, whereas defendant's maps showed a large number of them, indicating to the court that the defendant had made individual investigation of these buildings. Consequently, the court may have concluded defendant's maps were independently created.

The Japanese copyright cases thus show similar patterns to the American cases when the scope of protection is viewed in light of the type of work involved. To the extent the factual, utilitarian, or functional nature of a work limits the range of expressive choices available to achieve the same overall goal, it may take verbatim or nearly verbatim copying before infringement will be found, even where copyrightability itself is not denied for want of creativity.(182)

c. Relation Between Standards for Copyrightability and the Scope of Protection

As discussed above,(183) at least some cases in Japan have based a determination of copyrightability on a finding of novelty and/or creativity in the underlying idea expressed by the work. If what is new or creative in the work is an idea, however, the idea/expression distinction would deny protection. The question then arises just what, if anything, is protected by the copyright.

The problem is similar to that arising in the "sweat of the brow" compilation and directory cases in the United States. The United States copyright statute protects compilations to the extent of the material contributed by the author,(184) but the definition of "compilation" seems to look to the selection or arrangement of the materials or data comprising the compilation as the basis for treatment as a work of authorship.(185) As individual facts are not protected, however, this selection and arrangement rationale for copyright protection would leave works like telephone books without copyright protection at all, because neither the selection standard (all the people in a particular geographical area) nor the arrangement (alphabetical order by last name) is original. Seeing social value in providing an incentive for the often costly and time-consuming production of such factual compilations, some courts have deviated from the selection and arrangement rationale in order to supply copyright protection. These courts have found originality in the efforts of the first author in collecting and putting together the materials.(186) This supplies antimisappropriation protection to the fruit of nonintellectual "sweat of the brow" efforts required to create works of this type while still permitting others to create similar or even identical works as long as they do their own legwork.

As discussed above, however,(187) Japanese courts have tended to look to intellectual creative efforts of selection and arrangement in determining the copyrightability of compilations. To the extent this notion denies copyrightability, the incentive to produce otherwise valuable "sweat of the brow" works may be reduced, but obviously there is no problem concerning the scope of protection. To the extent that novelty or creativity of idea is the basis for a determination of copyrightability, however, the question is whether a subsequent author can base a new work on the same organizing principle or underlying idea but otherwise pursuant to her own independent efforts.

Logically, if creativity is a requirement for copyrightability and if creativity of idea suffices to meet this requirement, it would appear that the idea itself would be protected, which would conflict with the principle underlying the idea/expression distinction. A research report by four members of the intellectual property section of the Tokyo District Court states that there is no logical relation between copyrightability and the scope of protection,(188) but what is the standard for determining the scope of protection in, say, a compilation of factual information no individual piece of which is protected? If not the organizational idea, that is to say, the selection or arrangement, there is no product of intellectual effort to protect, and it is precisely in the selection or arrangement that Japanese courts have sought the creativity necessary for a finding of copyrightability.(189) Similarly, a report recommending copyright protection for electronic databases issued by an advisory organ to the Cultural Affairs Agency, which administers the Copyright Law, looked to creativity in collecting, arranging, analyzing, processing, or storing data as a basis for protection, but it went on simply to assume that the copyright in a protected database would be infringed by copying of any part or cluster that itself could be considered a work.(190) This may represent implicit adoption of the "sweat of the brow" approach discussed above in connection with the American compilation cases,(191) which is sensible and perhaps even necessary for databases. It provides, however, no standard for the scope of protection in other types of works.

To date no Japanese courts have faced the problem directly. Many have implicitly solved it by denying the existence of creativity in the underlying idea and thereby denying copyright protection altogether.(192) The Music Notation case, however, based its determination of copyrightability on a finding of creativity in the idea underlying the musical scores in question and thereby at least theoretically raised the scope-of-protection question; it did not, however, attempt to come to grips with the problem.(193) The Court Diary case actually reached the infringement issue, but the finding of infringement was based at least in part on the slavish copying proved by the evidence.(194) The court referred to the similarity of plaintiff's and defendant's schemes for selecting and arranging the materials and their classification methods,(195) but did not directly face the question of how much of the blank diary forms would have been protected had no slavish copying been shown. The case at least suggests, however, that organizing schemes for a useful article like an attorney's diary can be protected.

The relation between copyrightability standards and the scope of protection is much clearer when creative expression rather than creative idea is seen as providing both the basis for and the limits on copyright protection. Several Japanese cases show very finely tuned analysis when creativity of expression is the focus.

For example, in the Marine Supplies Ad case introduced briefly above,(196) plaintiff's work was a single page advertisement for marine drilling rig supplies. Defendant's allegedly infringing advertisement contained almost the identical elements as plaintiff's, including a misspelled word ("lord binders" instead of "load binders"), but with a different overall arrangement.(197) The court first concluded that plaintiff's ad was a protected work as graphic expression manifesting creativity in its composition, implying that its factual content alone (showing the parts and services offered by plaintiff) would not be sufficient to qualify.(198) In determining that defendant's ad did not infringe, notwithstanding the many similarities of detail, the court focused very carefully on the aspects of plaintiff's ad that manifested creativity:

The copyright in [plaintiff's] work is recognized in the comprehensive balance of the compositional arrangement of the individual elements, which causes the viewer to see it as a whole, as a single graphic work. Therefore, when considered as the expressive form of a copyrightable work, the uniquely expressive parts built up by the basic features are limited to those parts directly grasped from an expressive form having features tied to the concrete composition. It is reasonable to conclude that it does not extend to abstract parts such as the idea of taking up individual elements of composition or subject matter or the image created from simply combining them.

From this standpoint, when we extract the essential features of plaintiff's and defendant's ads . . . and compare them, we find that their essential features are rather different when considered as expressive forms. Even though defendant's ad may have taken suggestions from plaintiff's to a certain extent, we should say that the essential features of plaintiff's ad in its expressive form as a copyrightable work are hidden in the shadow of the individual creativity of defendant's ad so that they cannot be directly perceived. It is reasonable to conclude, therefore, that defendant's ad is neither a copy nor an adaptation of plaintiff's and that it infringes neither the moral rights nor the copyrights of the author of plaintiff's ad.(199)

The court recognized that the English titles, part names, chain designs, and drawings of marine tools and parts appearing in the two ads were identical and even that defendant's ad reproduced the spelling mistake appearing in plaintiff's. None of these were part of the expressive form of plaintiff's ad, and consequently none were protected by plaintiff's copyright.(200) In this case the court specifically linked, with detailed analysis, the scope of copyright protection to the creativity basis for treating plaintiff's ad as a protected work.

The American English Glossary case,(201) also carefully linked the basis for a finding of copyrightability to the scope of protection afforded to the work. Plaintiff's work was a Glossary consisting of some 3,000 standard American words, phrases, and idioms, together with sample sentences taken from a wide variety of sources. Defendant's work was a "Current Important English Words Dictionary" consisting of four parts, one part of which was similar to the Glossary in that it contained some 6,500 words and phrases frequently used in the mass media collected under headings in alphabetical order and followed by Japanese translations, other ways of expressing the same thing in English, sample sentences, and other explanatory notes. The court admitted plaintiff's claim to a compilation copyright on the Glossary, finding creativity in plaintiff's explanatory notes and overall arrangement as well as in plaintiff's intellectual efforts in choosing sample sentences from a wide variety of sources.(202) Turning to the liability issue, the court first concluded on the basis of a comparison of the two works that defendant's selection and organization of material did not infringe:

Both the Glossary and defendant's Dictionary have the character of English dictionaries, but the former took as basic materials for choosing standard American English such sources as newspapers and magazines while the latter chose English words used frequently by the mass media. Moreover, the latter collects roughly twice as many headwords as the former and has a rather larger number of parts with different choice of materials. Furthermore, differences can be recognized in the concrete arrangement of the headwords, and even conceding that the selection and arrangement of things like headwords and phrases have parts in common, that alone does not permit the immediate conclusion that the latter relied on the selection and arrangement of materials of the former and copied them, nor is there any other evidence to that effect.(203)

While thus denying infringement of plaintiff's compilation copyright on the basis of common headwords, phrases, Japanese translations, and similar elements, the court did find infringement based on the similarity of the sample sentences found in defendant's Dictionary to those in plaintiff's Glossary: In comparing the sample sentences contained in defendant's Dictionary to those in the Glossary, as examples using the words or phrases of the headwords, it is apparent that they are identical or similar, notwithstanding that one can think of many other different examples. Especially in example 2 of Exhibit 5(204) it is clear that there was no need to choose that particular sentence using the headword. The same is true for many other examples. Therefore, we cannot say that these similarities were the result of chance or of necessity. [The court concluded that defendant had copied or adapted many sample sentences from samples contained in plaintiff's work.]

. . .

The act of choosing part of the sample sentences from the Glossary is not the same as choosing samples from newspapers or magazines. The reason is that newspapers and magazines clearly do not select or compile sentences under a predetermined policy regarding English usage. To choose samples of specific usage from such a huge number is an act of original creative selection that does not rely on any act of compilation by the compilers of the newspapers or magazines. But to put into a later dictionary the same samples of specific usage as those appearing in an earlier dictionary of the same type should be regarded as reliance on the act of selection of the earlier compiler.(205)

Similarly, in the Sunshine Rights case,(206) the court based its finding of copyrightability on the particular concrete expression adopted by plaintiff to convey content consisting largely of public information and general knowledge concerning legal rights and remedies in disputes involving loss of sunshine as a result of urban development on nearby property. With respect to the parts of plaintiff's work allegedly taken by defendant, the court based its determination of infringement on the following reasoning:

When we compare the corresponding portions of plaintiff's and defendant's works allegedly taken, in each case every element of expressive text, such as the order of description, the choice of terminology, and the mode of expression is almost identical or extremely similar in both. This is particularly conspicuous in the similarity in choice of terminology. Even taking into account that both works describe themes of very limited scope and even assuming use of substantially identical references and source materials, it is inconceivable that textual expression so similar can be the result of independent production . . . .(207)

Having previously rejected creativity in content or subject matter in favor of creativity of expression as the basis for copyrightability,(208) the court was careful to limit the scope of protection to that same creative expression.

The Diode Thesis case took a similar approach. Having denied creativity in plaintiff's method of explaining the scientific principles and properties pertaining to the crystal under consideration,(209) the court rejected plaintiff's claim that defendant infringed his moral rights by failing to give plaintiff credit for being first to come up with the basic idea:

Even if plaintiff was the first to conceive of the idea of making the crystal artificially and the first to explain its properties, they are not the object of protection of the copyright or the author's moral rights. Such content is at most the object of protection of statutes like the Patent Law and the Utility Model Law. This is because, ultimately, copyright and moral rights protect expressive form that expresses thought or feeling creatively. Universal truths, the content of their description, as well as whoever was the first to discover them are not objects of their protection.(210)

The court also found sufficient variation in defendant's description of the structure and properties of the crystal as well as the scientific principles under consideration that they did not infringe any supposed copyright in plaintiff's work.(211)

The War Chronicles case, introduced above,(212) also showed sensitivity to the relation between the creativity requirement for copyrightability and the scope of copyright protection.(213) It, as well as the Marine Supplies Ad, American English Glossary, and Sunshine Rights decisions were all entered by the special sections for intellectual property of the Tokyo and Osaka District Courts. They look to creativity of expression in determining copyrightability and determine infringement or noninfringement by asking whether such creative expression was copied. While results in individual fact situations will remain difficult to predict, in either America or Japan, it is reasonable to assume that these decisions state the general approach to be expected from Japanese courts in future copyright cases, at least insofar as traditional copyrightable works are concerned.

d. Proof of Infringement

(1) In general. With the exception of problems introduced by cases, like Court Diary, that find creativity in the idea or content of a work as opposed to its expression, Japanese courts have been consistent in refusing to base infringement on a finding of similarity of ideas understood or perceived from the works, as discussed above.(214) Given that infringement requires similarity of expression, however, the questions remain of how much similarity is sufficient and what defenses are available where sufficient similarity is found.

The War Chronicles case introduced above(215) actually adopted a verbal formulation of the infringement standard similar to that used by most United States courts:

In determining whether the descriptive portions [of defendant's works] pointed out by plaintiff are copies of the corresponding portions of plaintiff's works, it is necessary that defendant had the opportunity to come into contact with and rely on plaintiff's works at the time he wrote his own descriptions and that his descriptive portions were the same as those of plaintiff.(216)

This sounds very much like the requirement of access plus substantial similarity found in United States law. However, few other courts have been so explicit in expressing the standard for infringement, which therefore remains vague in Japan.

(2) Independent production. One defense that is clearly available in both countries is that of independent production. An old and somewhat cryptic but oft cited opinion of the Great Court of Judicature in the Minister of Internal Affairs case(217) states the general rule:

Article 29 of the [Old] Copyright Act establishes liability for infringement of the copyright in a work by imitation or plagiarism. It does not cover a product that fortuitously coincides because it is compiled from similar materials.

A clearer statement to the same effect appears in the One Rainy Night in Tokyo decision, introduced above:(218)

In contrast to patent rights, the content of which is the "exclusive right to implement" the invention (Article 68 of the Patent Law), the content of copyright is the "exclusive right to copy" the work (Article 1 of the Old Copyright Act). The term "copy" here assumes knowledge of the existence and content of the work by the copier, as is the case with an adaptation, which is one type of "copy." Therefore, a condition of copyright (or adaptation right) infringement, different from patent right infringement, is knowledge by the infringer of the existence and content of the work. Consequently, a product that is fortuitously identical or similar in content to an existing work does not infringe the copyright (or adaptation right) provided it was independently produced without knowledge of the existence and content of the prior work, regardless of whether the absence of such knowledge was due to negligence.(219)

The court did not cite direct evidence of independent production outside defendant's testimony but concluded that specific knowledge of the song could not be inferred simply from a general knowledge of music when the song in question was not well known.(220)

A more detailed analysis is presented in the recent Gateball Rulebook case,(221)although it remains unclear whether the court was relying on an absence of substantial similarity sufficient to permit an inference of copying or on affirmative evidence of independent production. The decision also hides the scope-of-protection problem under a standard that purports to look for direct reliance in determining infringement and is worth discussing in some detail.

Plaintiff's husband (for convenience plaintiff's husband is herein referred to as "plaintiff") was the author of several books of some 15-20 pages in length containing the rules he created for the game of gateball and, in varying versions, describing the necessary equipment, the playing field, and the history and development of the sport. The defendant published in 1977 what it hoped would become a unified set of gateball rules, which appears to have been at least indirectly based on plaintiff's works, and in 1981 the defendant got together with three other gateball groups and published a second rulebook aimed at national standardization.(222) Plaintiff brought action for copyright infringement, asserting that the 1977 and 1981 works by defendant infringed the copyright in plaintiff's works.

The court first rejected defendant's argument that writing game rules was simply a mechanical task requiring no creativity. Rather, plaintiff's intellectual effort in expressing the various aspects of the new sport and their relationship to each other was creative and could not be denied copyrightability. The court then went on to outline the standards for infringement:

First, copyright infringement arises from the unauthorized reproduction of an identical or similar work in reliance on an existing copyrighted work. Even the creation by a third party of an identical work is not infringement where there is no knowledge of the existing work or reliance on it, even if lack of knowledge was negligent.(223) Therefore, it is infringement where the result of reliance is an identical or similar work, but even when reliance exists there is no infringement where significant changes result in the creation of a work in which identity or similarity is lacking.

As a result, in determining whether there is copyright infringement, we begin with the question of whether there was reliance on a previously existing work. In cases of reliance, we next inquire into identity or similarity. However, where a third party creates something identical or similar to an existing work, that fact becomes an element of the reliance inference. The inference is stronger in proportion to the degree of close or striking similarity.(224)

Thus, instead of access plus substantial similarity the Gateball Rulebook court sets up a test of reliance plus substantial similarity. Theoretically this would leave most plaintiffs in a quandary, because direct proof of reliance is rarely available in the typical copyright case. That, in fact, is the reason United States copyright law has adopted the access plus substantial similarity test as creating a rebuttable presumption of copying. The Gateball Rulebook approach seems to end up at nearly the same place, however, at least where there is striking similarity between the two works. American law, too, essentially dispenses with the access requirement to the extent of striking similarity.(225)

In the Gateball Rulebook case, however, access was clear, because plaintiff's works had been published. Under American law, even where access or copying is given, there is no infringement where the similarity is only of ideas or other nonprotected elements.(226) When both access and substantial similarity are shown, the court must make the basic policy determination of whether the similarity is of unprotected idea or protected expression. In Landsberg, for example, on facts somewhat similar to those of the Gateball Rulebook case, the court emphasized the narrow scope of protection in fact works and based a determination of noninfringement on the absence of verbatim or nearly verbatim similarity.(227)

The Gateball Rulebook court, too, found many differences in verbatim expression and overall structure that seemingly would have justified a finding of noninfringement for a fact work:

With the exception of the rules portion of defendant's [1977] rulebook, the content and expression are completely different from plaintiff's rulebooks and is described by defendant independently. Moreover, when we compare plaintiff's and defendant's works, while they both deal with the game of gateball, including the game's rules, there are some differences in details, such as the size of the court and the method for determining the batting order. In addition, the former places things like "Method of Play" in explanatory text separate from the rules while the latter includes it among the rules, and aspects that the former treats as rules are not so treated by the latter. Therefore, there are some differences in the essential substantive content, and the two works are obviously different in textual expression, composition, and expressive form.(228)

The court did not directly use this factual determination, however, for finding that there was no substantial similarity of copyrightable elements in the two works. Rather, it served indirectly with the other facts in the case to support an inference of nonreliance:

Based on the facts found above, defendant's [1977] rulebook was created with reference to the rulebook of the prefectural association (or its earlier form as a municipal association). It is difficult to conclude that anything was included as a result of direct reference to plaintiff's works. Of course, the game of gateball itself was created and devised by plaintiff, and the basic rules all have their origin in plaintiff's conception and ideas, as recognized earlier in this opinion. Therefore, we can easily infer at the least that the rules of the prefectural association that form the foundation for defendant's [1977] rulebook were created under the influence of plaintiff's works. Therefore, we can also conclude that defendant's [1977] rulebook was influenced by plaintiff's works. But by 1977 when defendant's rulebook was written and published, the game of gateball had developed and spread throughout the entire country. Many gateball associations emerged with no lateral communication among them, leading to the adoption of different rules. We might say that at that time the game was already out of plaintiff's hands and had taken the first steps toward independence. In the adoption of new rules, these circumstances provided significant possibility for writing new rulebooks by adding creative efforts to the experience of a game implemented somewhat differently from that appearing first in plaintiff's works. Simply saying that defendant's [1977] work was influenced by plaintiff's works is not to say that it was created in reliance on plaintiff's works.

The same is true for defendant's [1981] rulebook. This work was the product of discussions among four groups . . . and we cannot say that at that time anything was put into it in direct reliance on plaintiff's works. Therefore, we must deny the existence of reliance with respect to this rulebook as well.

Therefore, we cannot say that defendant's rulebooks infringed the copyright on plaintiff's works.(229)

The factual determination of nonreliance by the Gateball Rulebook court would be plausible if the earlier prefectural association rulebook were in fact original in the sense of independent creation, but the opinion supplies no basis for such a finding. The prefectural rulebook on which defendant's work was based was written more closely in time to the publishing of plaintiff's works and plaintiff's active promotion of the game. The likelihood that its drafters saw one or more of plaintiff's works seems rather high.(230) If the prefectural rulebook could be considered infringing, the court's reasoning in the Gateball Rulebook case leads to the absurd result that direct reliance on an infringing work is not infringement because reliance on the original is only indirect.

Perhaps the Gateball Rulebook court was seeking to avoid dealing directly with the idea/expression distinction by looking for direct evidence of reliance, but if so this is an abdication of responsibility. Much of the fundamental copyright policy balance between creation incentives and the free flow of ideas is determined under this distinction, and in both Japan and America the statutory language draws the line only vaguely. As discussed above,(231) Japanese courts vary the scope of protection in a work according to its nature much as the American courts do, and the Gateball Rulebook case could have been decided, like Landsberg, within that framework. As it is, the emphasis on direct reliance leaves the standard of proof for copyright infringement unclear. The direct-reliance standard has the potential for giving too little protection to many works and at the same time obscures the policy balance between what is protected in a work and what is freely usable by later authors.

(3) Copying of Mistakes. The pernicious influence of a direct reliance standard for infringement can be seen by examining cases in which direct reliance is nearly irrefutable. This occurs when typographical or other errors contained in plaintiff's work appear identically in defendant's. Often, the probability that identical errors would occur by chance seems so low that an inference of direct reliance is almost compelled. That should not end the analysis, however. Rather, the court should go on to determine whether any substantial similarities between the two works are similarities of expression or only unprotected ideas.(232)

Under the American decisions, the presence in both works of identical mistakes is regarded as very strong evidence of copying.(233) In the case of computer program piracy, such evidence seems rather common, and some courts appear to have accepted the evidence of such copying alone as proof of infringement.(234) Nevertheless, the general rule is that isolated copying of "factual" errors does not eliminate the need to show copying of protected elements.(235)

The Japanese cases show a generally similar approach when identical mistakes or other unusual features are present in both works. Several courts seem to have been sufficiently offended by the evidence of obviously slavish copying that they did not inquire deeply for copying of protected expression, but at least one recent case out of the intellectual property section of the Osaka District Court, which is discussed below,(236) carefully distinguished what was slavishly copied from those elements of the work that fell within the scope of protection.

The Court Diary case, introduced above,(237) is a good example of the danger in looking solely to slavish copying as a basis for infringement. Having found plaintiff's work copyrightable because of the creative thought underlying the idea of making a useful judicial diary for lawyers, the language of the opinion relating to its finding of infringement comes very close to providing protection for the underlying idea:

When we compare items of evidence B-8 ([defendant's] Lawyer's Diary) and A-1-3 ([plaintiff's] Court Diary), on the basis of which the lower court decided the case [for the defendant], there are differences in selection or order of arranging the items collected that form the content described or in the style of compilation. In particular, the Lawyer's Diary explains in an appendix the Hoffman calculation method and includes a selected collection of provisions relating to extinguishment of claims by prescription. The lower court was correct in finding that these were not included in the Court Diary. However, many of the items collected . . . were identical or similar, and it was not rare that the items collected were merely modifications, additions, or subtractions. We can see that defendant's work conspicuously follows a number of mistakes and omissions in plaintiff's work. Furthermore, with respect to the selection or arrangement or the classification method for the items collected in the diaries, when we compare and observe plaintiff's and defendant's schemes as a whole, defendant's work does not fall outside the realm of a plagiarized copy of plaintiff's. In other words, we cannot see the expression of defendant's original [dokuji no souken] thought in defendant's work.(238)

It seems evident that the existence of identical errors and omissions played an important role in the Court's decision to reverse the finding of no infringement by the lower courts. The Court did not explain why the modifications made, coupled with the additional features offered in defendant's work, were insufficient to permit defendant to escape the charge of infringement. For useful articles of this type there is bound to be much similarity of overall content, and if the slavish copying is put to one side, the finding of infringement represents a very high level of protection for useful articles.(239) Moreover, while the Court apparently did not accept the plaintiff's full-blown argument for protection of the diary system as a whole,(240) the focus on copying alone, especially when coupled with the Court's emphasis on similarity of the overall scheme, can lead to copyright protection of ideas and methodology that are normally thought to fall solely within the realm of patent law.

The Student Map case(241) raises similar concerns. Plaintiff's work was entitled "New and Most Concise Atlas of Japan." Defendant's "Map of Japan for Students" was made by taking a photographic outline of the country from a third-party map and transferring the contents of the "Map of Japan" from plaintiff's atlas, with some modifications, for the internal details. Again, identical errors and omissions seemed to play an important role in the determination of infringement and perhaps led to generalizations inappropriate to copyright protection for works of this type.

The court began by finding that plaintiff's intellectual efforts in selecting and arranging the details to be included in his map justified copyright protection.(242) It then turned to defendant's claim that plaintiff's copyright did not extend to the selection of places to be included in the map:

The extent to which place names are recorded in the content of the map is one of the most important aspects. . . . The place names shown on the map form its content, so aside from the case in which they are separated from the map they are covered by the copyright as part of the map.(243)

While copies of the two maps are not included in the opinion, the court describes its comparison of them in some detail. It first takes note of some 34 towns or other geographical phenomena appearing only on defendant's map, as well as 17 stylistic or other changes in representation on defendant's map.(244) Notwithstanding these differences, the court finds infringement based on the following summary of its factual conclusions:

We can conclude the following [six points] concerning plaintiff's and defendant's maps: (1) The majority of cities and other things besides cities like place names, mountains, and rivers shown on the two maps are identical. (2) Among the additions to defendant's map in comparison with plaintiff's, only the following show completely new changes by defendant: (a) The indication of the Hokkaido Governmental Office in Sapporo; (b) the town of Yokamachi in Niigata Prefecture; (c) Yamashiro in Ishikawa Prefecture; (d) Takachi on Sado Island; (e) Mirasan in Shiga Prefecture; and (f) Ishizuchiyama National Park. However, even among these (a) and (f) represent no more than decorative indications, while (b) and (d) are only corrections from the easily made [mistaken inversions of characters] appearing on plaintiff's maps. Therefore, only Mirasan and Yamashiro can be said to be based wholly on defendant's independent views. (3) The sea routes shown on defendant's map are almost the same as on plaintiff's, with the foreign routes omitted and [several other changes] representing no more than abbreviations. (4) The contour of the northern coastline of Hokkaido on defendant's map resembles that of plaintiff's map. (5) Both maps denote the sandy portions of coastlines. (6) In comparison with plaintiff's map, defendant's coastlines and railroad lines are generally crude. Moreover, the parties are in agreement that both plaintiff's and defendant's maps contain [identical] errors and omissions, as pointed out by plaintiff . . . .(245)

But for the evidence of identical errors, barely referred to at the end, this is highly unconvincing reasoning for a finding of infringement. Factual works like maps must necessarily contain a substantial amount of identity in the places represented, so "decorative indications," abbreviations, and different symbol markers may constitute much of the expression that should be considered in determining substantial similarity of protected elements. The contours of coastlines can hardly be considered a protected element of a map, nor can the decision to indicate beaches (sandy portions of coastline). We can only conclude that the strong evidence of actual copying, as shown by the identical errors, is the basis for the decision.

In the Kanji Dictionary case,(246) the court relied solely on identity of errors and omissions, as well as deliberately laid "traps," in finding infringement.(247) Plaintiff's dictionary consisted of some 44,300 entries of kanji with some special features that distinguished it from other character dictionaries that had been published in the past.(248) Defendant dropped around 200 of plaintiff's entries and added a few new ones. The opinion goes on to describe five sets of examples of slavish copying determined by identity or near identity at corresponding points of typographical errors, inversions in character order, or identity of unusual features deliberately included for the purpose of detecting copiers.(249) The court says nothing about the organization of defendant's work, but apparently it was not wholly identical to plaintiff's, because the page numbers cited for the correspondence of unusual features are not the same in the two works nor is there apparent any but the most general relation between them.(250) If in fact the organization of defendant's work was different from plaintiff's, the finding of infringement involves an implicit recognition of the American "sweat of the brow" approach to compilation works, because individual "facts" are not protected, even if they turn out to be erroneous.

In fact, one recent Japanese case expressly so holds. The Marine Supplies Ad case,(251) described above,(252) refused to base a finding of infringement on the use of similar, and in many cases identical, elements of a single-page advertisement, where those individual elements were not copyrightable and were arranged in a different pattern that did not appropriate the expressive features of plaintiff's arrangement. The court was unmoved by the erroneous common term "lord binders" (rather than "load binders") in both ads,(253) not even in combination with identical English titles for the adds, identical lists of products, identical design of the chains holding together the (different) compositions of the two ads, and identical photographs of parts.(254)

Similarly, while the War Chronicles case(255) did not involve copying of errors or traps, the court did refuse to base a finding of infringement on the appearance of some identical photographs in defendant's compilation. Rather, even in the case of only a partial taking, the plaintiff must show the same selection and arrangement, that is, the same composition, and where defendant has not copied the composition, there is no infringement even if he copied the individual photographs allegedly taken from plaintiff's work.(256)

The appearance in both plaintiff's and defendant's works of common errors or traps is often convincing evidence of slavish copying, and the cases show that Japanese courts are no less offended by it than the American courts. One reason it is so offensive is that it tends to show that the second author did not attempt to separate idea from expression for the purpose of making use of the first author's ideas. Neither knowledge nor culture is significantly advanced by this type of activity, and it is therefore tempting to base a finding of infringement solely on the nearly direct evidence of copying that common errors provide. By hypothesis, when plaintiff's work is copyrightable, it must contain protected expression, and slavish copying of randomly placed errors and traps may create a strong presumption that protected expression was taken as well.

Nevertheless, the reasoning of the Marine Supplies Ad and War Chronicles cases seems superior. These courts looked carefully at the protected elements of the works concerned and sought to determine whether protected elements were copied. Infringement may well have been justified in the other cases that looked only to the evidence of common errors, but when that is true plaintiff should be able to direct the court's attention to expressive content that was substantially taken along with the errors and traps. By failing to do so, the Court Diary case, in particular, opens the path toward the protection of ideas. In America, this same approach of basing infringement on the existence of common errors and traps in computer programs is already resulting in the protection of technological ideas and efficiencies under copyright law.(257) Under the specific statutory provisions covering computer programs, Japanese courts should not go this far,(258) and the Marine Supplies Ad and War Chronicles cases are hopeful signs that the general approach of Court Diary will not be followed in the future.

(4) Fair Use. As pointed out in the first section,(259) the Japanese Copyright Law does not contain a general fair use provision analogous to section 107 of the United States Copyright Act. Nevertheless, the courts have created a very limited type of fair use approach that permits defendant to avoid a finding of infringement even when reliance on plaintiff's work is shown. The basic idea is that if defendant's added creativity results in a work in which the plaintiff's work fades into insignificance, the new work does not infringe.

This principle is stated in dictum in the Court Diary case,(260) although by finding infringement it was not applied to the particular facts:

When a work is adapted or devised in reliance upon an existing copyrighted work, the author is liable to the author of the original for damages arising from infringement, unless the new conception is so remarkably creative that an ordinary person would consider it a separate work in comparison with the earlier work.

In its most limited form this could mean that defendant's new creativity so changed its expression that new expression resulted. However, if so limited, the principle is no longer one of fair use, because there then is no substantial similarity of expression and no defenses to infringement are required. As a fair use principle, the Court's emphasis on creativity of conception creates a danger of misapplication. It could mean, for example, that the first person to think of the idea of a musical comedy might escape infringement by adding creative music to the general story line of a protected play.(261)

The Residential City Map Book case(262) applied the principle stated in Court Diary in a more limited context than that of the above hypothetical. The court first outlined the general idea:

An independently created work made without any reliance on an existing work does not infringe, even though in result it is identical to the other's work. Moreover, even when the new work is based on the copyrighted work of another, if as a result of independent added creativity the special characteristics of the prior work are hidden in the shadow of the new creativity so that they are not perceived by the ordinary observer, it is recognized as an independent copyrighted work created through the free use of the copyrighted work of another. There is therefore no infringement.(263)

As discussed earlier, the court reviewed the differences between the two maps in question and found them to be sufficient to prevent the ordinary observer from recognizing plaintiff's maps in defendant's. It is not clear that this case actually involves fair use concepts, however, because the court had already recognized the very narrow scope of protection afforded to maps of this type,(264) and the differences outlined by the court would have permitted it to conclude more simply that there was no taking of protected expression.(265) Moreover, there is also a hint in the opinion that defendant's maps may have been independently produced.(266)

Consequently, while there appears to be a limited form of judicially created fair use defense under Japanese copyright law, it has heretofore existed more in judicial language than in the holdings of the cases. The notion that the expression in the earlier work must be imperceptible by the ordinary observer seems to limit the value of the principle for subsequent authors who wish to make use of prior works. In fact, it seems more like the general audience test for infringement found in American law,(267) which would mean it is not a fair use principle at all. Moreover, the emphasis on ordinary observer perception seems to ignore the idea/expression distinction, in that it can permit a finding of infringement where the ordinary observer would not find the works remarkably different because they express the same idea. Finally, the emphasis on creativity of conception used in describing the principle in the Court Diary case is amenable to an interpretation that would permit the taking of expression when defendant's creativity is remarkable. It is therefore difficult to see how this inchoate concept fits in with general copyright principles. Still, the language of the cases seems to admit the existence of the general principle, so it is always possible that it will find application.


While the total number of Japanese cases interpreting copyright law is only a small fraction of the number in America, they nevertheless show a variety in analytical style that rivals the variety shown in the United States cases. The statutes of the two countries differ in many details, but it is difficult to find inherent contradictions or inconsistencies in the fundamentals. It is also difficult to pick out a single fundamental theme on which the Japanese cases are consistently different in their interpretation of copyright law.

The Japan Copyright Law appears to set a higher threshold for copyrightability over the minimalist originality standard of United States law. There is an express creativity requirement in Japan and the class of protected works is further narrowed by the requirement that the work express thought or sentiment belonging to the literary, scientific, artistic, or musical realms. Some of the cases, particularly older cases, give this distinction some substance by denying copyrightability to expressive works that "owed their origin" to the person claiming the copyright. A few cases even seem to require novelty in either expression or idea as a condition to copyright protection. It is possible that the absence in Japan of a general fair use principle, which allows American judges to temper the harsh results that would follow from rigid application of normal copyrightability and infringement standards, has caused Japanese judges to draw the copyrightability line at a higher level. Nevertheless, more recent cases have much more consistently looked to creativity of expression as the standard and in general seem to recognize a copyright in much the same types of works that would qualify under American copyright law.

Moreover, even the cases in Japan that have denied copyrightability for want of creativity might well have come out the same way in America notwithstanding recognition of the copyright. In many of those same situations, the American court might well deny infringement by severely limiting the scope of protection through application of the idea/expression distinction. The result in either case is that the original author loses on his infringement claim. In addition, Japanese courts recognize the idea/expression distinction notwithstanding that the Japanese Copyright Law does not expressly provide for it, and they vary the scope of protection in different types of works in much the same way that the American courts do. Therefore, many apparent differences in analytical style between Japanese and American judges can be reconciled by focusing on the results of the cases rather than the actual language used to justify those results. This is particularly true in the standards for determining infringement. In America, the almost uniform judicial litany is that copying is proved by access plus substantial similarity and that infringement is determined by substantial similarity of protected elements. In Japan, the verbal formulations of the standards for infringement are much more vague and show greater variety, but one cannot say after analysis of the fact patterns and the results that Japanese courts are consistently more or less protective of copyright than those of the United States.(268)

We regard this as an encouraging finding. The world is increasingly becoming a single international society, and Japan and America, in particular, seem destined to develop increasingly intimate economic and social relationships with each other. Many of these relationships will involve the exchange of information-based products, now primarily computer software but surely biotechnological products in the near future. It is vital that people and businesses in both countries be able to proceed with confidence concerning the protection available for the products of their intellectual efforts, and to the extent that copyright remains the primary tool for the protection of these products, mutual understanding of each other's copyright system is an important ingredient of that confidence. The technical differences between the two copyright systems will continue to require that both sides seek expert legal advice in attending to details, but similarity in the fundamental concepts takes everyone a long way in the right direction.


* Professor of Law, Arizona State University, Tempe, Arizona

** Member, Harada & Hayakawa Law Offices, Tokyo, Japan.

1. United States Constitution, Art. I, Section 8.

2. For example, the federal government now spends vast sums of money on education and even has a Department of Education at the Cabinet level, but most basic regulatory decisions concerning education, such as curriculum, teacher qualifications and hiring, class sizes, school location, and planning and building of new facilities, remain in the hands of state and local education authorities.

3. In rare cases of particular importance, litigants may be granted review of particular appellate decisions by the entire Circuit Court of Appeal, which consists of all the appellate judges from that Circuit. When granted, such decisions are called hearings (or rehearings) en banc. The membership of the three-judge panels varies constantly and by random selection.

4. By tradition, not followed with complete uniformity, the members of the United States Supreme Court are called "Justices," while all other judges are called simply "Judges."

5. Of course, this is only the general rule. In cases of sickness or conflict of interest in a particular matter, for example, a case may be heard by fewer than all of the nine Justices.

6. Article III, Section 2, of the United States Constitution provides as follows:

The judicial Power [of the United States] shall extend to all Cases . . . arising under this Constitution, the Laws of the United States, and Treaties made . . . under their Authority; . . . to all Cases of admiralty and maritime Jurisdiction; . . . [to Controversies] between Citizens of different States . . . .

The United States Supreme Court is the only federal court expressly required by the Constitution, which leaves the establishment of lower federal courts to Congress. The Federal District Courts, therefore, are authorized to hear only those cases that are both constitutionally authorized and for which jurisdiction has been granted by federal statute. The principal statutory provisions are 28 United States Code 1331-1333. Section 1332 provides for so-called "diversity jurisdiction" for disputes between citizens of different states where the amount in controversy exceeds $10,000. Section 1333 provides for exclusive federal jurisdiction of admiralty matters. Section 1331 supplies Federal District Court jurisdiction for matters raising a federal question:

The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.

7. 28 United States Code 1338:

The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trade-marks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.

8. Actions that only incidentally raise federal copyright issues might not be classified as "arising under" the United States Copyright Act, in which case they can be heard by state courts. Such cases are a distinct minority, however.

9. Section 10 of the 1909 Copyright Act provided as follows:

Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title . . . .

10. Many states had statutory schemes for the protection of unpublished works, although the term "common law copyright" remained the descriptive term for such state regulation.

11. 17 U.S.C.A. 302(a):

Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and fifty years after the author's death.

Note that the term "U.S.C.A." here and in subsequent footnote citations refers to "United States Code Annotated." Volume 17 of the U.S.C.A. contains the Copyright Act. The authors are using the abbreviation "USCA" to refer to "United States Copyright Act," but because "17 U.S.C.A. X" refers to precisely the same statutory provision as "USCA X," we believe there is little danger of confusion.

12. 17 U.S.C.A. 301(a):

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright . . . in works of authorahip that are fixed in a tangible medium of expression and come within the subject matter of copyright . . . are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

13. Law No. 39 (1899).

14. Law No. 48 (1970).

15. Agency for Cultural Affairs, Copyright System in Japan 1-5 (1983). The Agency for Cultural Affairs is a branch of the Ministry of Education and administers the Japanese Copyright Law. Except as otherwise noted for post-1983 amendments, all translations of the JCL are taken from this source. All translations herein of judicial materials are by the authors.

16. For example, article 1 of the Old Copyright Law simply gave the author the exclusive right to copy literary, scientific, or artistic "works" (otherwise undefined), without any reference to the expression of "thoughts or sentiments" and without requiring that the expression be effected "in a creative way," both of which phrases appear in the current statute. See infra text accompanying note 19.

17. E.g., M. Handa, Outline of Copyright Law 77 (4th ed. 1987); the Court Diary case, II-1 Chosakuken Hanreishu 100, 104 (May 19, 1936, Osaka Court of Appeals). The Saishin Chosakuken-Kankei Hanreishu is cited herein as Chosakuken Hanreishu. With its most recent volume IV, it includes cases decided through 1984. Whenever possible, the Japanese cases are cited to this source.

18. JCL Art. 1.

19. JCL Art. 2(1)(i).

20. JCL Art. 10(1).

21. 17 U.S.C.A. 102(a).

22. Article 2(1)(xv) defines "reproduction" to be reproduction "in tangible form," so perhaps oral recitation of a work would not infringe, absent public performance (article 22), broadcast (article 23), or public recitation (article 24). See infra text accompanying notes 26-27.

23. JCL Art. 12(1).

24. JCL Arts. 2(1)(x-iii) & 12-2(1). These database provisions were adopted by Law No. 64, May 16, 1986, effective January 1, 1987.

25. 17 U.S.C.A. 103.

26. 17 U.S.C.A. 106.

27. JCL Arts. 21-27.

28. Id. Art. 61(1).

29. Id. Arts. 19-21.

30. Id. Art. 59.

31. 17 U.S.C.A. 107:

Notwithstanding the provisions of section 106 [providing for exclusive rights of copyright], the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include--

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

32. JCL Art. 30:

It shall be permissible for a user to reproduce by himself a work . . . for the purpose of his personal use, family use or other similar uses within a limited circle, except in the case where such reproduction is made by means of automatic reproducing machines . . . placed for the use of the public.

It will be interesting to observe how this provision is interpreted with respect to the copying of computer programs for use with the home computer.

33. Id. Arts. 30-50.

34. 17 U.S.C.A. 108-117.

35. 17 U.S.C.A. 102(a). See supra text accompanying note 21. The constitutional term is "writing," defined by the Supreme Court to include "any physical rendering of the fruits of creative intellectual or aesthetic labor." Goldstein v. California, 412 U.S. 546 (1973); see generally 1 M. Nimmer, Nimmer on Copyright 1.08[B](hereinafter referred to as "Nimmer"). The late Professor Nimmer's four-volume treatise is undoubtedly the most widely cited secondary source on United States copyright law.

36. H. Rep. No. 94-1476, 94th Cong., 2nd Sess. (1976), at 51.

37. E.g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2nd Cir. 1951). In this case, plaintiff asserted copyright protection in plaintiff's "mezzotint" (copper engraving) reproductions of famous oil paintings in the public domain. Defendants admittedly made lithographs from proofs taken directly from plaintiff's copper plates. Defendants sought to deny plaintiff's copyright claim by arguing that plaintiff had produced nothing new, in that plaintiff's works were merely copies in a different medium of public domain paintings, but the court rejected the argument:

The defendants' contention apparently results from the ambiguity of the word "original." It may mean startling, novel or unusual, a marked departure from the past. Obviously this is not what is meant when one speaks of "the original package" . . . or . . . an "original" document; none of those things is highly unusual in creativeness. "Original" in reference to a copyrighted work means that the particular work "owes its origin" to the "author." No large measure of novelty is necessary.

Id. at 102. The court concluded that plaintiff's works met the originality requirement because they were the product of plaintiff's own skill and effort. Moreover, they were copyrightable works either as "reproductions of a work of art" (section 5(h) of the 1909 Copyright Act), or as derivative works in the form of original "translations, or other versions of works in the public domain" (section 7 of the 1909 Copyright Act). Id. at 104. The lower court's finding of infringement was therefore affirmed.

38. 1 Nimmer 2.01[A]. Some early cases sought to establish a novelty requirement for copyrightability, but they run counter to the clearly prevailing trend. Id.

39. Id. 1.08[C][1]. See the discussion of the Alfred Bell case, supra note 39, where the court went on to say, "It is clear, then, that nothing in the Constitution commands that copyrighted matter be strikingly unique or novel." 191 F.2d at 102. See also Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903), which considered the copyrightability of a pictorial advertisement. The dissent argued that a pictorial illustration that had no useful value other than as an advertisement and for which no evidence was offered of "original artistic qualities" did not qualify as a work that Congress was authorized to protect under the Constitution. Id. at 253. Justice Holmes, however, writing for the majority of the Court, concluded that judges should not seek to quantify the degree of artistic quality in works for the purpose of denying copyright protection to "works of little merit or of humble degree." His reasoning has often been quoted:

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. . . . At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. . . . That these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs' rights.

Id. at 251-52.

40. See Gorman, Copyright Protection for the Collection and Representation of Facts, 76 Harv. L. Rev. 1569, 1602 (1963)(analyzing various types of fact works under an "easy-to-copyright/difficult-to-infringe" formula).

41. See supra text accompanying note 19.

42. 1 Chosakuken Hanreishu 3 (Aug. 31, 1965, Tokyo District Court). For convenience of reference, we adopt the names for the Japanese cases used in the Chosakuken Hanreishu.

43. Compare M.M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1140 (6th Cir. 1973) denying copyrightability under American law to a business form designed for use by television servicepersons on the ground that the form in question lacked originality as a mere paraphrase of earlier forms. The absence of original legal research in creating the form bolstered the court's conclusion that "creative, original work" was lacking. While M.M. Business Forms in America and the Bill of Lading Form case in Japan thus both deny copyrightability, they evince the differing attitudes in the two countries concerning the role of "sweat of the brow" effort in the copyrightability determination. See infra notes 137-51 and accompanying text.

44. In the Court Diary case, II-1 Chosakuken Hanreishu 106 (Nov. 20, 1937, Great Court of Judicature), the pre-war predecessor of the Supreme Court had held that the mental effort in selecting or arranging even well known materials, together with blank forms created by the author, into a diary for use by attorneys and court officials invoked creative thought on the basis of which copyright protection should be recognized. See infra text accompanying notes 114-18.

45. 253 F.2d 702 (2nd Cir. 1958), cert. denied, 358 U.S. 816.

46. Id. at 706.

47. In this respect the Bill of Lading Form case is similar to the famous case of Baker v. Seldon, 101 U.S. 99 (1880), which is discussed infra in the text accompanying notes 119-23. Cf. Gorman, supra note 40, at 1601.

48. It should be noted, however, that other American cases have denied copyrightability to business forms on the ground that originality was lacking. E.g., M.M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, (6th Cir. 1973); Donald v. Zack Meyer's T.V. Sales & Service, 426 F.2d 1027 (5th Cir. 1970).

49. Fancy Seaweed Box, II-1 Chosakuken Hanreishu 36 (Apr. 27, 1979, Kobe District Court).

50. Defendant had given permission to Mitsukoshi to use the design as a Mitsukoshi original, pursuant to an agreement that prohibited defendant from granting permission to anyone else without Mitsukoshi's consent. It was primarily to protect his relationship with Mitsukoshi that defendant sent his demand letter. Id. at 40.

51. The court found it obvious that plaintiff's adoption of defendant's design would invite action by defendant because it could easily be imagined that defendant would lose profits and be put to other difficulties as a result. It therefore took this "negligence" into account in arriving at a setoff against plaintiff's damages. After finding actual damages of 367,000, the court reduced the damages defendant would be required to pay to 100,000. Setoff on account of "negligent" activity within one's rights would be unthinkable under United States law, and the case therefore provides an interesting contrast between the cultural view of "rights" in the two countries. Most Americans would think that plaintiff was well within his rights to copy that which was not protected.

The case also provides an interesting contrast in terms of the analysis presented herein, which views Japan as a "hard to copyright" country partially because of judicial inability to temper the monopoly effect with a general fair use defense. As applied to the facts of the Fancy Seaweed Box case, however, it may be that American law is the more rigid, because if the work is protected (as it surely would be under United States law if original), there would be no defense to an act of copying like that of the plaintiff in the Japanese case. Japanese law, as applied here by the court, denies the copyright with one hand but nevertheless manages to find a certain degree of protection by limiting the rights of someone who shows bad judgment in deciding to make and use a legal copy.

52. The Diode Thesis case, III Chosakuken Hanreishu 4, 10 (Sept. 25, 1979, Osaka District Court), discussed infra in note 165 and in the text accompanying notes 167-69, offered as a partial alternate holding that statements like "Things having the four-sided structure of the calcogenides of Mg are only compounds of Te; other compounds have the structure of rock salt," which simply state the properties of materials, do not express thought or sentiment. Moreover, the court found no evidence that they were the product of the plaintiff's creative thought.

53. See Gorman, supra note 40, at 1602.

54. See infra text accompanying notes 137-51.

55. See infra text accompanying notes 97-123. The useful article cases do not generally deny the expression of thought, as the Bill of Lading Form case does, but rather find that the thought involved is an unprotected idea.

56. Moreover, other cases contain language seemingly taking a broader view of what constitutes thought or sentiment. For example, the Pac Man case includes the following dictum:

"Thought or sentiment" is not used in a restricted sense. . . . Except for works in which there is no thought or sentiment at all, it should be considered to refer to human mental activity in general.

IV Chosakuken Hanreishu 367, 381 (Sept. 8, 1984, Tokyo District Court).

57. Japan Union of Democratic Youths v. K.K. Zenbosha, I Chosakuken Hanreishu 83 (Oct. 11, 1972, Tokyo District Court).

58. Id. at 96-97.

59. E.g., M. Kato, Commentaries on Copyright 19 (3rd. ed. 1979):

By [the four categories] we do not mean that a work must fall within one of the realms of literature, science, art, or music divided separately. A copyrightable work is something that falls within a comprehensive conception of intellect or culture, namely, literature-science-art-music.

60. II-1 Chosakuken Hanreishu 80, (Aug. 16, 1958, Tokyo District Court).

61. See infra text accompanying notes 87-88.

62. II-1 Chosakuken Hanreishu at 81.

63. Typeface Design, II-1 Chosakuken Hanreishu 8 (Mar. 9, 1979, Tokyo District Court).

64. JCL Art. 2(2): "As used in this Law, `artistic work' includes a work of artistic craftsmanship."

65. Law No. 125 (1959). Article 2(1) of the Design Law defines a "design" as follows:

As used in this Law, "design" means an article that, in its shape, pattern, or color, or a combination thereof, arouses a feeling of beauty through the sense of sight.

The Design Law is similar to the Patent Law in that rights under it attach only upon registration of the design and have a duration of 15 years. Id. arts. 20(1) & 21. Registrable designs are those that "can be used in industry." Id. art. 3

66. Professor Nimmer reviews this history in the course of an argument that typeface designs should in principle be copyrightable under the current USCA. 1 Nimmer 2.15.

67. There are two schools of thought on the problem of overlap between the Copyright Law and the Design Law. Professor Handa prefers the approach adopted by the Typeface Design case, arguing that there should be no overlap in protection. M. Handa, supra note 17, at 93-95. Other authorities, however, are willing to admit a certain degree of overlap. For example, the T-Shirt case found a creative design imprinted on mass-produced T-shirts to be copyright protected under the following standard:

As a rule, designs and models having a practical purpose are relegated to protection under the Design Law [and other industrial property statutes]. If, however, the article can be equated to a pure work of art like a painting or sculpture, in that when viewed objectively and externally and without regard for the subjective purpose in making it, the practical purpose imposes no substantial restrictions on the expression of beauty and the article can be considered a product solely of the search for beauty, it should be protected as an artistic work.

III Chosakuken Hanreishu 251, 264 (Apr. 20, 1981, Tokyo District Court). A slightly different standard is set forth in the Buddhist Altar case, which nevertheless recognizes some overlap. II-1 Chosakuken Hanreishu 1042, 1048-49 (July 9, 1979, Kobe District Court, Himeji Branch) (recognizing a copyright in mass-produced household Buddhist altars but asserting that such protection is available for mass-produced works only where the purpose is high-level esthetic expression).

In application, the standard of the T-Shirt case seems not too different from that adopted by the United States Supreme Court in Mazer v. Stein, 347 U.S. 201 (1954), which held that the external appearance of statuary figures serving as lamp bases could be protected by copyright because such external appearance was conceptually separable from the function of holding a light bulb and cord. This is now codified in U.S.C.A. 101 ("pictorial, graphic, and sculptural works" include the design of a useful article to the extent that the design incorporates features that can be identified separately from and are capable of existing independently of the utilitarian aspects of the article).

68. IV Chosakuken Hanreishu 61, 1102 Hanrei Jiho 132 (Jan. 26, 1984, Osaka District Court).

69. Each month begins with one of seven days, so only seven colors are needed to produce all possible monthly variations (not counting variations in the number of days). The color for the desired month in the array instructed the viewer to choose the matching color in the adjacent group of seven monthly calendars.

70. Even if the calendar were considered a novel and creative scientific work, plaintiff's new contribution was the idea of organizing it and using colors as markers, and such ideas themselves are not copyrightable.

The court also concluded that the use of the seven colors of the rainbow to classify the months was an idea that almost anyone could come up with, so the calendar lacked originality. This is clearly a different conception of originality than under United States law, but the court may have had a novelty requirement in mind. See infra text accompanying notes 81-96, in which the novelty requirement is discussed.

71. Moreover, the arrangement of colors was determined once colors were chosen for the seven possible variations, so that arrangement did not show artistic expression necessary for an individual work of craftsmanship.

72. IV Chosakuken Hanreishu 71, 559 Hanrei Times 291 (Oct. 29, 1984, Kochi District Court).

73. IV Chosakuken Hanreishu at 77. Article 206 of the Japanese Civil Code reads as follows:

The owner of property has the right to use, profit from, and dispose of it freely, within the limits of law and regulations.

Although the court did not expressly cite article 206 as the basis for the general property right of the owners of the cocks, it is obvious that the court had this provision in mind. In this respect, the court's conclusion that taking a photograph of a tangible piece of property belonging to another infringes the general property right under article 206 may have been repudiated by the Supreme Court. IV Chosakuken Hanreishu 269, 271-73 (Jan. 20, 1984, Supreme Court)(photograph of no-longer-copyright-protected work of art does not infringe the article 206 right).

74. IV Chosakuken Hanreishu at 76.

75. The Long Tail Cock case should be considered also in connection with the novelty and creativity requirements. See infra text accompanying notes 83 & 99.

76. Insofar as protection of method or effort is concerned, the Long Tail Cock case can be usefully considered together with the compilation cases. See infra text accompanying notes 137-51.

77. Of course, the only difference between the cocks at issue in the case and most other works of craftsmanship was that the cocks were alive. According to the opinion, the creation of the cocks involved considerable efforts in both breeding and raising, methods that were handed down to the plaintiff from his father. The court, however, did not consider the analogy to folk art traditions.

78. Gold Coin, I Chosakuken Hanreishu 698 (Dec. 21, 1970, Osaka District Court).

79. See Milworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2nd Cir. 1960)(recognizing a copyright in a print fabric design giving a "three-dimensional look" to a public domain embroidery design, with protection limited to the distinctive feature originating with plaintiff).

80. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2nd Cir. 1951), which is discussed supra in note 37. Moreover, some recent United States decisions have indicated that the test for originality for derivative works may require more substantial variation than merely distinguishable. E.g., Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), criticized in 1 Nimmer 3.03.

81. 1 Nimmer 2.01[A]. An oft quoted expression of this thought is that by Judge Learned Hand:

. . . if by some magic a man who had never known it were to compose anew Keats' Ode On a Grecian Urn, he would be an "author," and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats'.

Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2nd Cir. 1936), aff'd 309 U.S. 390 (1940). In Sheldon, plaintiffs asserted that defendants' movie infringed their copyright in a play. Defendants argued that many aspects of plaintiffs' work were anticipated by works in the public domain, but the court rejected the defense on the ground that defendants had not shown that plaintiffs in fact referred to those works in creating their own work. See also Fred Fisher, Inc. v. Dillingham, 298 F. 145, 147 (S.D.N.Y. 1924), another opinion by Judge Hand:

. . . the law imposes no prohibition upon those who, without copying, independently arrive at the precise combination of words or notes which have been copyrighted.

In Dillingham, one of the defendants was the famous songwriter Jerome Kern. One of Kern's songs written for a musical comedy contained a constantly repeated eight-note sequence called an "ostinato" that was identical to an ostinato in plaintiff's otherwise quite different song. Kern testified that he did not consciously take from plaintiff's' work and also argued that the same ostinato could be found in an obscure European book of piano exercises. Judge Hand concluded that plaintiff independently created the ostinato, so its anticipation in the piano exercise book did not invalidate plaintiff's copyright. Kern's use of the ostinato, however, followed closely after the appearance of plaintiff's work, of which Kern was aware, compelling the conclusion that Kern had in fact copied, even though unconsciously. The case is most often cited for its conclusion that good faith is not a defense to copying and that unconscious plagiarism is therefore actionable.

82. Japan Union of Democratic Youths v. K.K. Zenbosha, I Chosakuken Hanreishu 83 (Oct. 11, 1972, Tokyo District Court):

We can say that "creation" means not being a "copy."

83. See supra text accompanying notes 72-77.

84. Telephone Directory, II-1 Chosakuken Hanreishu 84 (June 20, 1919, Tokyo District Court).

85. Id. at 86.

86. Id.

87. II-1 Chosakuken Hanreishu 80 (Aug. 16, 1958, Tokyo District Court); see supra text accompanying notes 60-62.

88. The Mujin Table case, II-1 Chosakuken Hanreishu 60 (1940, Yokohama District Court), denied protection along similar lines of reasoning. Plaintiff claimed to have made a creative addition to the two traditional methods for assessing periodic payments against the members and published his method in a book. The defendant was itself a mujin company and produced three charts calculating the payments due in accordance with plaintiff's method, with modification of some words and titles but apparently some copying of others. Plaintiff's copyright claim was denied, however, based on evidence that his method had actually been used since the 15th or 16th centuries and had been described in works published before plaintiff's book. Moreover, charts incorporating the method had also been published. Again, the court seems to find that absence of novelty in the idea expressed suffices to deny copyright protection.

89. Chosakuken Hanreishu 169 (July 4, 1914, Great Court of Judicature).

90. This is rather strange reasoning from a western point of view, because the particular work copied, directly and exactly, was fixed in a recording and therefore very definite, notwithstanding that it had not been written down in a traditional musical score. We must remember, however, that this case arose in the same era as White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1 (1909), which held that a work illegible to the naked eye was not a copy. Defendants in White-Smith produced punched paper rolls that would physically cause a so-called "player piano" to play notes according to the location of the hole punches in the paper. Plaintiff asserted infringement of his copyright in two songs by defendant's punched paper rolls that, when used with a player piano, caused the piano to play plaintiff's songs. The United States Supreme Court denied the claim on the ground that the punched paper rolls could not be "read" by the human eye and therefore were not "copies" of plaintiff's copyrighted sheet music. The reasoning was quite different from the Traditional Song/Story case, but the result denying copyright protection was the same. (The holding in White-Smith was overruled by the 1976 Copyright Act. Section 101 now defines copies to be "material objects . . . in which a work is fixed . . . and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." The punched paper roll is a material object in which the musical work is fixed, and the player piano is a machine or device with the aid of which the work can be perceived.)

91. II-1 Chosakuken Hanreishu at 183.

92. 92. 1102 Hanrei Jiho 132, IV Chosakuken Hanreishu 61 (Jan. 26, 1984, Osaka District Court); see supra text accompanying notes 68-71.

93. IV Chosakuken Hanreishu at 68.

94. Id. (emphasis added).

95. While not denying copyrightability on novelty grounds, the cases dealing with maps also contain dicta to the effect that something new must be added to the various elements collected together in a map to qualify for copyright protection. See infra text accompanying notes 145-47.

96. See supra text accompanying notes 84-86.

97. See supra text accompanying notes 84-86.

98. See supra text accompanying notes 60-62 & 87-88.

99. See supra text accompanying notes 77-77; see also infra note 107.

100. See supra note 88.

101. II-1 Chosakuken Hanreishu 68 (Feb. 29, 1960, Kobe District Court, Himeji Branch), reversed II-1 Chosakuken Hanreishu 74 (Mar. 29, 1963, Osaka High Court).

102. II-1 Chosakuken Hanreishu at 78.

103. See supra text following note 25.

104. The creativity requirement under Japanese law for compilations in general is discussed in a special subsection devoted to them. See infra notes 137-51 and accompanying text. See also infra notes 184-86 and accompanying text for a discussion of the American "sweat of the brow" approach to the protection of factual compilations.

105. 1 Nimmer 2.11[B].

106. E.g., Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967). In this case, the plaintiff asserted that defendant had infringed his copyright by copying nearly verbatim a six-sentence promotional contest rule involving instructions concerning the entrant's name and address, how to obtain official rules, inclusion of a boxtop of plain piece of paper with the company's name printed on it, and so forth. The court found that defendant's rule was, indeed, almost exactly the same as that of plaintiff. Moreover, the court agreed that plaintiff's form of expression was not the only one available. Nevertheless, the court found for defendant by denying plaintiff's copyright:

When the uncopyrightable subject matter is very narrow, so that the topic necessarily requires, . . . if not only one form of expression, at best only a limited number, to permit copyrighting would mean that the party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance. . . . We cannot recognizer copyright as a game of chess in which the public can be checkmated.

Id. at 678. The court found the subject matter of the contest rule to be so straightforward and simple that copyright should be denied altogether. Id. at 679.

107. Interesting as the facts of the Long Tail Cock case are, it is probably dangerous to draw general conclusions from it. A claim of copyright in a living organism will probably be viewed with skepticism anywhere, regardless of the particular language of the statutes or copyright traditions. Nevertheless, if in fact the prized characteristic of the birds--their beautiful long tails--was the result of skillful breeding and raising techniques, the result differs from a work by an artist or photographer with skillful techniques and knowledge of materials only in that it is alive. Both, moreover, are intended to please the eyes of viewers who come to see the works. Unfair "verbatim" reproduction of the birds by commercial photograph could be prohibited without affecting breeding and raising methodologies by placing the birds in the "easy to copyright/hard to infringe" category, even though they are not traditional factual works.

108. The JCL requires no formalities for attachment of copyright protection but does permit registration of certain factual information concerning a work, such as the name of the true author of a pseudonymous work and the date of initial publication, which creates presumptions should disputes later arise. JCL Arts. 75-78.

109. Recall that there is no fixation requirement for copyrightability under Japanese law.

110. II-1 Chosakuken Hanreishu 139 (Nov. 6, 1933, Fukuoka District Court), aff'd, II-1 Chosakuken Hanreishu 151 (Nov. 6, 1934, Nagasaki Court of Appeals), aff'd, II-1 Chosakuken Hanreishu 159 (Jan. 24, 1936, Great Court of Judicature).

111. The Fukuoka District Court applied article 22 of the Old Copyright Law to protect defendant's scores as "derivative works." While the Old Copyright Law did not expressly use the term "derivative work" (nijiteki chosakubutsu, literally, "secondary work"), article 22 afforded similar protection in a limited context:

A person who legally reproduces a copyrighted artistic work [including musical works] by means of different techniques from the original shall be regarded as an author and protected under this Law.

On appeal, the Nagasaki Court of Appeals followed similar reasoning, treating defendant's scores as derivative works because they were made by a scoring method different from those previously known publicly.

The Great Court of Judicature agreed with the result but said that the lower courts were "hasty" in treating defendant's scores as derivative works. Rather the Court looked by analogy to article 19 of the Old Copyright Law:

Modifications, additions, subtractions, or other adaptations to an existing work, such as kunten, marginal notes, punctuation marks, critical remarks, commentary, appendices, and drawings, do not give rise to a new copyright; provided, that this rule shall not apply to things that can be regarded as new works.

While the Old Law supplied no standard for what should be regarded as a new work, the Court reasoned that, until defendant's method came along, there was no adequate way to score music for easy reproduction of the original. By adding her creative idea to and modifying the previously incomplete scores, her scores were deemed worthy of protection.

It is not clear just what the Court had in mind in treating defendant's scores in this case as new works. For example, after completing its statutory analysis and its rejection of the lower courts' approach, the Court takes note of the fact that defendant made her scores with permission from the original author. II-1 Chosakuken Hanreishu at 163. This seems to imply that the Court was treating defendant's scores as derivative works under a different name, made with the permission of the copyright holder.

The Music Notation cases can be compared to Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956) and Italian Book Co. v. Rossi, 27 F.2d 1014 (S.D.N.Y. 1928), both of which held that new scoring or arrangement of public domain music would support a copyright. In Wihtol, copyright was asserted in a musical score derived from a tune the author recalled from his childhood in Latvia. Similarly, in Rossi, copyright was asserted in music created by improvising additions to what the author could remember of Sicilian folk songs he had heard but nearly forgotten. Like the Great Court in Music Notation, Wihtol said the new score that plaintiff "put in shape for all to read" was an original work, thereby confusing the distinction between original and derivative works. Rossi, too, failed to use the derivative work label, although the language of the opinion suggests that the author's additions to the public domain music were the basis for copyrightability. In both cases the songs should have been entitled to protection, at most, as derivative works. In that case, protection would extend only to those elements added by the authors to the public domain songs underlying their works. Of course, in practice the distinction makes little difference in cases like Wihtol and Rossi, because the original works are largely inaccessible if not entirely forgotten. The result is that the derivative work authors end up with the equivalent of a copyright in the entire work, because no one can prove that any particular part of it was not original with the copyright holder.

112. JCL Art. 2(1)(xi) defines derivative works:

"Derivative work" means a work created by translating, arranging musically, transforming, dramatizing, cinematizing, or otherwise adapting a pre-existing work.

Article 27 goes on to give the author the exclusive right to make works following this description, without using the term "derivative work."

113. Although the right to make derivative works is exclusive in the copyright holder, the original authors in the Music Notation case had granted the right to make the scores to defendant.

114. II-1 Chosakuken Hanreishu 106 (Nov. 20, 1937, Great Court of Judicature). For example, there were headings for "Court Name," "Docket Number," "Most Recent Hearing Date," "Result," "Next Hearing Date," and "Remarks." Other blank columns permitted hypothetical charting of withdrawal, interruption, or suspension of cases.

115. For example, plaintiff's work contained summaries of important statutory provisions and legal forms, names, addresses, and telephone numbers of all lawyers in Japan, codes for court records, stamp duties, and a table of distances.

116. Plaintiff first sued (and lost) in the Tokyo District Court for infringement by defendant's publication of diaries for 1926 to 1929. Takeuchi v. Ohuchi, II-1 Chosakuken Hanreishu 90 (July 24, 1931, Tokyo District Court). Later, plaintiff lost again on the same subject matter in the Osaka District Court for infringement based on defendant's 1930 publication, which decision was affirmed by the Osaka Court of Appeals. Takeuchi v. Ogawa, II-1 Chosakuken Hanreishu 95 (Dec. 12, 1931, Osaka District Court), aff'd, II-1 Chosakuken Hanreishu 100 (May 19, 1936, Osaka Court of Appeals). The Great Court of Judicature, on appeal in the Osaka case, reversed on the copyrightability issue and remanded. Takeuchi v. Ogawa, II-1 Chosakuken Hanreishu 106 (Nov. 20, 1937, Great Court of Judicature). On remand, the Osaka Court of Appeals concluded that defendant's work did not infringe. Takeuchi v. Ogawa, II-1 Chosakuken Hanreishu 113 (Apr. 13, 1939, Osaka Court of Appeals). A second appeal to the Great Court of Judicature resulted in another reversal and a finding of infringement. Takeuchi v. Ogawa, II-1 Chosakuken Hanreishu 119 (May 18, 1940, Great Court of Judicature).

117. See supra text accompanying notes 101-02.

118. The reversal applied only to the Osaka cases; the Tokyo case was not appealed.

119. 101 U.S. 99 (1880).

120. 1 Nimmer 2.18[B], [C].

121. 101 U.S. at 103.

122. For example, if one office adopts Selden's forms for bookkeeping and another adopts Baker's, employees would find their job mobility reduced to the extent that learning how to implement the system on new forms requires retraining.

123. Digital Communications Assocs. v. Softklone Distributing Corp., 659 F. Supp. 449 (N.D. Ga. 1987); Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986); see generally Karjala, Copyright, Computer Software, and the New Protectionism, 28 Jurimetrics 33, 44-48, 69-72 (1987).

124. II-1 Chosakuken Hanreishu 195 (June 21, 1978, Tokyo District Court).

125. Id. at 204.

126. Id. at 205.

127. III Chosakuken Hanreishu 28 (June 23, 1980, Tokyo District Court).

128. See infra text accompanying notes 152-62 & 167-82.

129. In the Diode Thesis case, III Chosakuken Hanreishu 4 (Sept. 25, 1979, Osaka District Court), the court found most individual elements of a scientific thesis uncopyrightable and, even if hypothetically copyrightable, that there was no infringement in the particular case because the scope of protection in scientific works is very narrow. For example, plaintiff's methods for explaining the structure and properties of certain crystals and other scientific principles did not show creativity of expression eligible for copyright protection. Id. at 9. See also supra note 52. Alternatively, the court also held that there was sufficient variation in defendant's expression of the same information and theories that it would not infringe even if plaintiff's expression were considered protected by copyright. With respect to the individual elements discussed, the court uses language that appears to be denying copyrightability, but the opinion nowhere denies copyright protection to plaintiff's work as a whole. The court really seems to be dealing with the scope of protection, and the decision is not in conflict with the other recent cases recognizing copyrightability in the creative expression of an old idea, even where there is nothing new in the thought expressed. See infra text accompanying notes 192-208.

130. Marine Supplies Ad, 566 Hanrei Times 278 (Mar. 29, 1985, Osaka District Court).

131. Id. at 280.

132. See infra text accompanying notes 196-200.

133. IV Chosakuken Hanreishu 305, 1060 Hanrei Jiho 18 (Dec. 6, 1982, Tokyo District Court).

134. Id. at 21.

135. The Strategy X case, IV Chosakuken Hanreishu 352, 1106 Hanrei Jihou 134 (Jan. 26, 1984, Osaka District Court) and the Digdag case, 561 Hanrei Times 169 (Mar. 8, 1985, Tokyo District Court).

136. The Operating System case, 1987-3, No. 92 Industrial Property Law Research 27 (Jan. 30, 1987, Tokyo District Court). All of the computer program cases decided to date have involved events prior to the effective date of the amendment of the JCL to cover programs explicitly, January 1, 1986. Those amendments included provisions expressly limiting the scope of protection in programs, and it remains to be seen how cases of these types will be decided under the law as amended. For an analysis of the new program-related provisions and the limitations on the scope of program protection, see Karjala, Protection of Computer Programs Under Japanese Copyright Law, 8 Eur. Intell. Prop. Rev. 105 (April 1986); Karjala, The Limitations on Protection as Program Works under Japanese Copyright Law, 8 Mich. Yearbook on Internat'l Legal Studies 25 (1987); Sugiyama & Kosins, The Japanese Solution to the Protection of Computer Programs, 4 Software Protection, No. 4, at 11 (1985).

137. See supra text accompanying notes 84-86 & 114-18.

138. JCL Art. 12(1); see supra text accompanying note 24.

139. IV Chosakuken Hanreishu 109, 525 Hanrei Times 323 (May 14, 1984, Tokyo District Court).

140. IV Chosakuken Hanreishu at 116-17, 525 Hanrei Times at 326.

141. IV Chosakuken Hanreishu at 117, 525 Hanrei Times at 326-27.

142. The court earlier concluded that plaintiff's efforts in making the Introduction involved sufficient creativity to qualify it as a protectible introductory textbook, id. at 116, but this conclusion did not enter into any of the subsequent analysis. Presumably this was because the scope of protection is quite narrow in works of this type. See infra text accompanying notes 167-82. As a compilation work, even plaintiff's choice of words and phrases might have been protected, and this is what the court was at pains to deny.

143. II-1 Chosakuken Hanreishu 560, (Sept. 22, 1978, Toyama District Court). The facts of this case, which involved maps made from actual survey, are discussed in more detail below in connection with the scope of protection. See infra text accompanying notes 178-81.

144. Id. at 566.

145. I Chosakuken Hanreishu 59 (Feb. 2, 1971, Tokyo High Court). The Globe World Map case was a criminal proceeding in which the defendants had made exact copies of a world map for use in making globes. Part of the defense was that the maker had not manifested any creativity in making the maps, but the trial court concluded otherwise (the trial court opinion is appended to that of the Tokyo High Court):

In view of the special characteristics of maps . . . one should seek to determine whether or not individual creativity [sousakusei] can be recognized on the basis of comprehensive observation of the content of the choice and selection of the various elements expressed and the expressive methods for recording them.

In sum, in the case of maps, . . . if one can recognize scientific or artistic creations having individual creativity [sousakusei] that distinguishes them in comparison with other similar products, we can say that thoughtful sentiment has been made concrete in a creative [dousakuteki] manner, based on the author's mental efforts.

I Chosakuken Hanreishu at 72-73. The Tokyo High Court affirmed the convictions, using very similar language on the copyrightability issue. I Chosakuken Hanreishu at 65.

United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978), is very similar to the Globe World Map case both in reasoning and result. The Ninth Circuit in Hamilton affirmed the criminal conviction of a defendant who made exact copies of a copyrighted map. The court rejected defendant's attack on the validity of the copyright, finding originality in the creative compilation and synthesis of public domain materials in making the original map.

146. See id., second paragraph of the quotation from Globe World Map.

147. While Japanese courts often purport to look for novelty and intellectual creativity, they are not necessarily indifferent to the unfairness of permitting a later author to reap the fruit sown by the physical or financial efforts of another. In the Kanji Dictionary case, 566 Hanrei Times 273 (Apr. 17, 1985, Tokyo District Court), for example, plaintiff's work was dictionary of Chinese characters. Plaintiff claimed a compilation copyright in the dictionary, and although defendant did not make an appearance, the court analyzed this claim. The court found five features distinguishing plaintiff's dictionary from earlier works, applying again what looked much like a novelty basis for copyrightability. Id. at 273. But that would imply that a later compiler using these general features for ordering a character dictionary to make it more useful might be denied a copyright. Perhaps for this reason the court went on to point out that plaintiff's project leader directed a staff of some 30 researchers and experts who spent 15 months in such activities as examining word usage in 90 different modern magazines and searching newspapers by computer. On the basis of all of the above, the court found copyrightability obvious. Id. One would hope that a later author making the same effort but using basically the same ordering scheme and, presumably, mostly the same characters would also be protected.

148. See Karjala, Protection of Computer Databases Under Japanese Law, 9 Eur. Intell. Prop. Review 267 (1986).

149. See supra text accompanying note 24.

150. A good example is the Lexis system, which stores in a database all judicial opinions issued by all courts in the United States. None of the opinions is individually protected by copyright, each is entered verbatim without any editing, and all opinions go into the database, with no selection by anybody.

151. See supra text accompanying notes 84-86 & 114-18.

152. See supra text following note 30.

153. See supra text accompanying notes 37-39 and accompamying text.

154. 736 F.2d 485, 488-89 (9th Cir. 1984)(citations in quotation omitted).

155. As an example, the court offered the sentence, "The poor player simply attempts to make as many points as possible each turn." Id. at 488.

156. 618 F.2d 972 (2nd Cir. 1980), cert. denied, 449 U.S. 841.

157. Summary judgment is appropriate only when "there is no genuine issue as to any material fact." Fed. R. Civ. Pro. 56(c). Any dispute about whether plaintiff's essential plot was copied would be factual. 618 F.2d at 978. Moreover, under United States law, only trial courts are authorized to make findings of fact: Appellate courts cannot make new factual determinations on their own. Consequently, the appellate court could uphold the judgment for defendant only if that factual dispute were not material. However, it would necessarily be material unless, even assuming the truth of plaintiff's allegation, the outcome of the case would be unaffected. Therefore, the appellate court assumed, for the purposes of this decision, the truth of plaintiff's allegation.

158. 618 F.2d at 978-80 (citations in original omitted). The Hoehling opinion also begins with a general statement concerning the scope of copyright protection in historical works that is worth noting:

A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains. The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by creating original works. Nevertheless, the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed, embracing no more than the author's original expression of particular facts and theories already in the public domain. As the case before us illustrates, absent wholesale usurpation of another's expression, claims of copyright infringement where works of history are at issue are rarely successful.

Id. at 974.

159. See Toksvig v. Bruce Publishing Co., 181 F.2d 664 (7th Cir. 1950), in which plaintiff did extensive research of Danish language materials for a biography of Hans Christian Anderson. Defendant, who could not read Danish, copied 24 passages of original translations from plaintiff's book in writing her own biography. The translations, of course, were specifically protected by section 6 of the 1909 Copyright Act, which may distinguish the case from those discussed here in the text. Nevertheless, the court reasoned more broadly in refusing to find defendant's copying to be a fair use, on the ground that the copying had enabled defendant to write her biography in much less time than was required of plaintiff. The court said that defendant should have done her own original research, and on this point the philosophy of the decision runs counter to that of Miller, discussed in the text below. Miller expressly rejected the approach of Toksvig in favor of that propounded by Hoehling. 650 F.2d at 1371.

160. Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981).

161. Id. at 1372.

162. Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2nd Cir. 1980); L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2nd Cir. 1976); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-03 (2nd Cir. 1951). The Alfred Bell case is discussed supra in note 37. Durham Industries and L. Batlin both deny copyright to works that are only trivially distinct from earlier works. In Durham the defendant held a license to make plastic wind-up toy figures of Walt Disney characters, such as Mickey Mouse. In a counterclaim to a declaratory judgment action by plaintiff, defendant asserted a copyright in its figures, which plaintiff admittedly used as models in making plaintiff's own figures. The court concluded that the defendants figures were instantly recognizable as those of the well known Disney characters:

[Defendant] has demonstrated, and the toys themselves reflect, no independent creation, no distinguishable variation from preexisting works, nothing recognizably the author's own contribution that sets [defendant's] figures apart from the prototypical [Disney figures].

630 F.2d at 910. Consequently, defendant had added no nontrivial expressive feature to the characters, which were therefore not protected as derivative works.

In L. Batlin, defendant made a plastic model, in reduced size, of a public domain "Uncle Sam Bank," the metal version of which was in the public domain. Defendant got a copyright registration on his figure, and plaintiff brought a declaratory judgment action seeking to void the copyright when defendant's effort to import similar plastic Uncle Sam banks was stopped by the United States Customs Service. The lower court granted the declaratory judgment voiding defendant's copyright, and the court of appeal affirmed:

The test of originality is concededly one with a low threshold in that "[a]ll that is needed . . . is that the `author' contributed something more than a `merely trivial' variation, something recognizably `his own.'"

536 F.2d at 490, quoting Alfred Bell, discussed supra in note 37. The court went on to hold that merely reproducing something in a different medium, regardless of the skill involved, was insufficient to support a copyright. Id. at 491.

163. Warehouse Design, II-1 Chosakuken Hanreishu 654 (Feb. 23, 1979, Osaka District Court).

164. Id. at 663.

165. E.g., In the Diode Thesis case, III Chosakuken Hanreishu 4, 7 (Sept. 25, 1979, Osaka District Court), see also supra notes 52 & 129, plaintiff wrote a doctoral thesis on luminous diodes made from a certain type of mixed crystal. Defendant later wrote a thesis on the same topic, falsely (according to plaintiff) claiming that he was the first to have the idea for using this particular mixed crystal for luminous diodes and allegedly taking some of plaintiff's descriptions of the research. The court rejected plaintiff's copyright claim, beginning its analysis with a description of the idea/expression distinction:

The works protected by copyright are creative expressive forms that concretely and externally express thought or sentiment through things like words, letters, sound, or color. Even if it is original or novel, the content of that expression, namely, the thought or sentiment itself, such as the idea or theory, cannot in principle become a work (except in the case of the story of a novel or the like).

See also the Perpetual Calendar case, introduced supra in the text accompanying notes 68-71:

What plaintiff asserts as copyrightable here . . . is the composition of the perpetual calendar or the idea of using a color-coded marking scheme. The law does not grant copyrightability to such an idea itself.

IV Chosakuken Hanreishu 61, 1102 Hanrei Jiho 132, 135 (Jan. 26, 1984, Osaka District Court).

166. Other decisions denying copyrightability on a "no creativity" theory that might more coherently be analyzed under the idea/expression distinction, coupled with a limited scope of protection for useful articles, are the Bill of Lading Form case, the Knitting Graph case, and the Journalizing Table case. See supra text accompanying notes 42-47, 60-62 & 101-02. The Long Tail Cock case, see supra text accompanying notes 72-77, can be analyzed in this category as well, but it may be sui generis. See supra note 107.

167. III Chosakuken Hanreishu 4 (Sept. 25, 1979, Osaka District Court); see supra notes 52, 128 & 165.

168. Id. at 7-9.

169. A similar approach to technology-related works showing a narrow scope of protection is evidenced in the Warehouse Design case, introduced briefly supra in the text accompanying notes 163-64:

Because [architectural designs] are works of a highly technological and functional character, the room for choice of expressive form cannot be considered very large.

II-1 Chosakuken Hanreishu 654, 663 (Feb. 23, 1979, Osaka District Court).

170. Under United States law, copying is normally proved prima facie by a showing of access plus substantial similarity, with independent production as a defense. The standard in Japan is not often articulated in precisely these terms, but the cases do not show a radically different approach to proving copying. See infra text accompanying notes 214-31.

171. III Chosakuken Hanreishu 28 (June 23, 1980, Tokyo District Court).

172. Id. at 39.

173. Similarly, while ultimately finding infringement on the particular facts before it, the court in the Sunshine Rights case also seemed willing to limit the scope of protection to near verbatim copying or paraphrasing in the case of a book dealing with the theory and practice of a particular area of law. See supra text accompanying notes 124-26 and infra text accompanying notes 206-08.

174. E.g., Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2nd Cir. 1980). See supra notes 152-62 and accompanying text for a discussion of the scope of protection in historical and factual works under United States copyright law.

175. E.g., See v. Durang, 711 F.2d 141 (9th Cir. 1983). In this case, plaintiff wrote a play entitled "Fear of Acting," which involved the problems faced by an understudy actor who suddenly finds that he must go on stage. Defendant's play dealt with the same subject matter of the surprised understudy, and plaintiff asserted copyright infringement. The lower court held for defendant on summary judgment, and the court of appeal affirmed, partially on the ground that ten alleged similarities between the two plays followed from the unprotected idea of the surprised understudy and were therefore protected as scenes a faire:

[T]he court properly applied the [scenes a faire] doctrine to hold unprotectable forms of expression that were either stock scenes or scenes that flowed necessarily from common unprotectable ideas. "Common" in this context means common to the works at issue, not necessarily, as plaintiff suggests, commonly found in other artistic works.

Id. at 143. See also Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2nd Cir. 1980), cert. denied, 449 U.S. 841, which is discussed supra in the text accompanying notes 156-58, where the court concluded that similar German beer hall scenes and similarities in German greetings and songs did not give rise to infringement (citations omitted):

These elements . . . are merely scenes a faire, that is, "incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." Because it is virtually impossible to write about a particular historical era or fictional theme without employing certain "stock" or standard literary devices, we have held that scenes a faire are not copyrightable as a matter of law.

176. II-1 Chosakuken Hanreishu 221 (July 25, 1962, Tokyo District Court).

177. II-1 Chosakuken Hanreishu at 226. A similar approach was taken in the case of common or well known musical themes in the One Rainy Night in Tokyo case. I Chosakuken Hanreishu 396 (Dec. 24, 1974, Tokyo High Court), aff'd II-1 Chosakuken Hanreishu 760 (Sept. 7, 1978, Supreme Court). Here plaintiff owned the copyright to the song "The Boulevard of Broken Dreams" composed by the American Harry Warren and first published in the United States in 1933. In 1963 or 1964, defendant composed a song entitled "One Rainy Night in Tokyo," which became a big hit in Japan, and plaintiff sued for copyright infringement. The court denied the claim, finding independent creation and reasoning as follows:

The melodies used in popular songs like that of defendant are naturally limited by the simplicity that makes them easy for ordinary people to sing. Particularly because their range and length are restricted, in comparison with other musical compositions the likelihood that similarities will arise by accident is not small.

Id. at 410.

Because plaintiff's song was not well known in Japan in 1963, defendant's own extensive career in music was insufficient in itself to show that he was aware of its existence. Under these circumstances, access will be inferred only when the similarity is so strong that it could not have appeared without copying. Id. at 409-10. The case thus seems to say that more than substantial similarity may be required to establish a prima facie case of copying when there is reason to expect that authors working independently are likely to come up with some degree of similarity of expression, at least absent direct evidence of access.

178. II-1 Chosakuken Hanreishu 560, (Sept. 22, 1978, Toyama District Court).

179. See supra text accompanying notes 143-44.

180. 180. II-1 Chosakuken Hanreishu at 567.

181. This relates to a very limited fair use defense sometimes referred to in the Japanese cases that denies infringement even in cases of direct reliance on earlier works where the new work hides the special features of the old work from the eyes of ordinary viewers. See infra text accompanying notes 259-67. This defense derives from the German principle of "freie Benutzung." Cf. German Copyright Act, Art. 24.

182. The recent American English Glossary case, IV Chosakuken Hanreishu 109, 525 Hanrei Times 323 (May 14, 1984, Tokyo District Court), see supra text accompanying notes 139-42, also recognized the general principle that the scope of protection is generally narrower for scientific and academic works, although it concluded that even this principle could not save defendant from a charge of infringement with respect to the selection of sample sentences taken nearly verbatim from plaintiff's Glossary:

Generally speaking, it is often the case with scientific works that later works are made after reference to the results of earlier research, in the form of copyrighted scientific works. In fact, the more conscientious scientific works will have a higher rate of reference to these kinds of contributions. As a result, there will be a considerable amount of similar content in the works. In view of the nature of science, this is naturally permitted as a socially reasonable act and cannot in itself be called an imitation of preceding scientific works. Similarly, with compilation works, the act of choosing materials will naturally lead to certain similarities after consultation with earlier scientific compilations. Where the range of choice is limited, the scientific value of one of the works may be cast in doubt unless identical materials are chosen, and it is inappropriate to say that because of this the act of selecting the preceding work has been imitated. On the other hand, where the range of choice is broad, there are many possibilities for original selection even after consulting earlier works. To the extent that different choices of materials are appropriate and there is no danger of damage the scientific value of the work, simply to use the choices of a predecessor, either directly or with partial changes, is to take a free ride on the efforts invested by the predecessor in choosing the materials. In this case, even with a scientific work, one cannot escape the charge of imitating the predecessor's act of selection.

IV Chosakuken Hanreishu at 120-21.

183. See supra text accompanying notes 108-18 & 145-47.

184. 17 U.S.C.A. 103, see supra text following note 25.

185. Id. 101; see supra text following note 25.

186. The seminal case is Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937). In this case, plaintiff Pacific Telephone compiled a telephone directory arranged in the usual way, alphabetically by names of the persons subscribing to telephone service. The court found plaintiff's work copyrightable, notwithstanding that the alphabetical arrangement was not original with plaintiff.

The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author. He produces by his labor a meritorious composition, in which he may obtain a copyright . . . .

Id. at 486 (quoting Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83, 88 (2nd Cir. 1922)). Defendant Leon extracted factual information from plaintiff's directory to make a directory with a completely different arrangement, namely, ordered by telephone exchange and telephone number. Thus, defendant's directory would be very difficult to use in finding a given person's telephone number, but would readily yield the name of the person with a given telephone number. In view of the fact that the arrangement of defendant's directory was completely different from that of plaintiff's, and the rule that factual information is not protected, the only explanation for the court's finding of copyright infringement is that defendant did not expend his own physical labor in tracking down all of the addresses and telephone numbers. Thus, physical effort of compiling ("sweat of the brow") becomes a factor in both copyrightability and infringement.

See also, e.g., Hutchinson Tel. Co. v. Fronteer Directory Co., 770 F.2d 128, 131 (8th Cir. 1985)(efforts in soliciting, gathering, filing, sorting, and maintaining information for a telephone directory suffices to meet the "sweat of the brow" test of Leon); Schroeder v. William Morrow & Co., 566 F.2d 3, 6 (7th Cir. 1977)(plaintiff's independent effort in collecting names and addresses of garden supply stores, rather than copying from other sources, justifies a copyright in her work, and defendant's appropriation of the fruits of her efforts without independent expenditure of similar effort is infringement); Southwestern Bell Tel. Co. v. Nationwide Independent Directory Service, Inc., 371 F. Supp. 900, 905 (W.D. Ark. 1974)(finding a copyright in a telephone directory and its infringement, relying directly on Leon and requoting the passage from Jeweler's Circular quoted above).

The leading proponent for this approach among the commentators is Professor Denicola, who argues for the notion of "authorship in the collection" as both a descriptive and a normative theory for the law of factual compilations. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981). For a thoughtful judicial discussion of the "sweat of the brow" approach to the protection of compilations, see National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F. Supp. 89, 91-95 (N.D. Ill. 1982)(finding infringement by a company that compiled mailing lists from the copyrighted credit reports of another company, on the ground that to do otherwise would remove the economic incentive for collecting information). An approach of this type may be essential for the protection of computerized databases. Denicola, supra at 531; see also supra text accompanying notes 148-51.

187. See supra text accompanying notes 137-51.

188. Studies of Copyright-Related Cases Brought before the Tokyo District Court (I), 713 Hanrei Jiho 11 (1973).

189. See supra text accompanying notes 137-51.

190. Cultural Affairs Agency, Report of the 7th Subcommittee (On Databases and the New Media) of the Copyright Commission 24-26, 32-33 (September 1985)(in Japanese). See generally Karjala, supra note 148, at 271-72.

191. See supra notes 184-86 and accompanying text.

192. This was true in the Knitting Graph, Long Tail Cock, Telephone Directory, Journalizing Table, and Mujin Table cases, discussed, respectively, supra in the text accompanying notes 60-62, 72-77, 84-86, & 101-02 and in note 88.

193. See supra notes 108-11 and accompanying text. The problem did not arise in the Music Notation case because it was the defendant's creativity that served as a shield against plaintiff's effort to deny defendant's copyright. The theoretical issue would arise when defendant later claimed infringement against a third party who scored the same music using defendant's method but without reference to defendant's written scores.

194. II-1 Chosakuken Hanreishu 119, 125-26 (May 18, 1940, Great Court of Judicature); see supra text accompanying notes 114-18.

195. Id. at 126.

196. 566 Hanrei Times 278 (Mar. 29, 1985, Osaka District Court); see supra text accompanying notes 130-32.

197. The defendant engaged the same advertising firm to create its ad, which is one reason for the similarity of detail.

198. See supra text accompanying notes 130-32.

199. 566 Hanrei Times at 282. The court specified four differences supporting its conclusion of no infringement: (1) The chain loop in plaintiff's ad was upright and created a border around the page, with the 18 marine parts and tools arranged outside the border, while the chain loop in defendant's ad was narrower and on a lower-left-to-upper-right diagonal, with the parts and tools on the inside; (2) A wire rope design at the top and bottom borders of defendant's ad was absent from plaintiff's; (3) The drill rig in plaintiff's ad was shown inside the chain in face-front silhouette with waves and ocean water in dark color filling the bottom half, while defendant's drill rig was outside the chain in the upper left, viewed at an angle from above; (4) The inset inside plaintiff's chain showed a photograph of a marine valve, while defendant's ad showed inset photographs of two different pieces of equipment outside the chain in the lower right. Id.

200. On this point the Marine Supplies Ad case is quite similar to Tompkins Graphics, Inc. v. Zipatone, Inc., 222 U.S.P.Q. 49, 51 (E.D. Pa. 1983). In Tompkins, plaintiff's copyrighted works formed a "Library of Shapes," and defendant allegedly made exactly dimensional copies of variations of squares, rectangles, circles, and ellipses. The court concluded that these basic shapes were in the public domain, so the fact that some of defendant's shapes were exactly dimensional was "of little consequence." If the overall arrangements differed, as the court found, there would be no infringement.

201. IV Chosakuken Hanreishu 109, 525 Hanrei Times 323 (May 14, 1984, Tokyo District Court); see supra text accompanying notes 139-42.

202. See supra text accompanying notes 139-40.

203. IV Chosakuken Hanreishu at 118, 525 Hanrei Times at 327.

204. Example 2 of Exhibit 5 showed the English headword "add up to." The sample sentence in plaintiff's Glossary was,

How can such a wealth of high-priced Hollywood talent add up to such a poor movie?

while in defendant's Dictionary it came out,

How can such a wealth of high-priced TV talent adds [sic] up to such a poor show?

205. IV Chosakuken Hanreishu at 119-20, 525 Hanrei Times at 327-28.

206. See supra notes 124-26 and accompanying text.

207. II-1 Chosakuken Hanreishu 195, 204 (June 21, 1978, Tokyo District Court). The following is an example of the type of similarity shown (italics indicate additions in defendant's text and square brackets indicate text in plaintiff's work omitted in defendant's):

The legislature that adopted the Civil Code in 1896 never imagined circumstances in which sunlight in residential areas would be taken one-sidedly through the erection of tall buildings. Scholarly doctrine and Court decisions as well were not [necessarily] able to provide an effective resolution [sufficiently] adaptive to these new circumstances. However, the demands of residents to protect sunshine not only earned broad sympathy among the general citizenry but were partially recognized even by opposing enterprises, and a record of voluntary dispute resolution began to accumulate. It is there that we can clearly perceive the bud of sunshine rights as living law of civil society.

Id. at 208-09.

208. See supra text accompanying notes 124-26.

209. See supra text accompanying notes 167-69 and notes 52 & 165.

210. III Chosakuken Hanreishu 4, 13 (Sept. 25, 1979, Osaka District Court).

211. For example, plaintiff's work included the statement,

MgTe has a Wurtzite ["Wurtzite" written in roman letters] structure, and the lattice constant ["lattice constant" written in Japanese, koshi teisu] is a: 4.53Ao, c: 7.36Ao. Also, the MgTe mutual distances are 2.76Ao, 2.77Ao.

Defendant's equivalent was,

MgTe possesses an urutsu [presumably the name "Wurtz" phoneticized in Japanese] ore-form structure; the lattice constant ["lattice constant" written in English] is a: 4.53A [sic], c: 7.36Ao, and the atomic distances are 2.76A, 2.77A.

Id. at 19. The appendix to the opinion contains about 40 such examples of infringement claimed by plaintiff that are rejected by the court on the dual grounds that there is no room for creativity in such factual statements and, in any event, defendant's form of expression was sufficiently different that it did not infringe.

212. III Chosakuken Hanreishu 28 (June 23, 1980, Tokyo District Court); see supra text accompanying notes 171-74.

213. In addition to plaintiff's original narrative, his works included numerous records, articles, and photographs related to his historical wartime subject. The court recognized compilation copyrights in the works and accepted the evidence that defendant consulted plaintiff's works in creating his own. The court nevertheless rejected plaintiff's claim that defendant's use of some of the photographs and records from plaintiff's works was infringement. Defendant took only a small number of photographs from plaintiff's works and added many new ones, in completely different locations and arrangements. With different overall composition, copying a small number of individual elements did not infringe. Id. at 39-40.

214. See supra notes 163-66 and accompanying text.

215. See supra text accompanying notes 171-74 and note 213.

216. III Chosakuken Hanreishu 28, 38 (June 23, 1980, Tokyo District Court).

217. II-1 Chosakuken Hanreishu 425, 428 (May 5, 1905, Great Court of Judicature).

218. See supra note 177.

219. I Chosakuken Hanreishu 396, 407 (Dec. 24, 1974, Tokyo High Court), aff'd II-1 Chosakuken Hanreishu 760 (Sept. 7, 1978, Supreme Court). The court cited the Minister of Internal Affairs case in support of this point. The appeal to the Supreme Court in One Rainy Night argued that intentional or negligent failure to learn about the existence of a prior work should be considered infringement, but the Supreme Court upheld the Tokyo High Court on this point as well.

A dictum in the Residential City Map Book case, II-1 Chosakuken Hanreishu 560, 566 (Sept. 22, 1978, Toyama District Court) also recognizes independent production as noninfringing:

In determining, in general, whether or not there is copyright infringement, when the new work is created independently and without reliance on the previously existing work of another, there is no copyright infringement even when the result is identical to the other's work.

220. I Chosakuken Hanreishu at 409-10. Similarly, in addition to finding lack of novelty, the court in the Mujin Table case, discussed supra in note 88, seemed to be relying partially on independent production in finding no infringement:

It is proper to find that both plaintiff and defendant independently developed their respective mujin installment charts . . . by considering various calculation methods in existence from old times and applying everyday calculation practice.

II-1 Chosakuken Hanreishu 60, 66 (1940 (precise date unknown), Yokohama District Court).

221. Gateball Rulebook, IV Chosakuken Hanreishu 5, 1111 Hanrei Jiho 134 (Feb. 10, 1984, Tokyo District Court, Hachioji Branch).

222. The plaintiff was essentially the inventor of the game of gateball, which he actively promoted all over Japan in the years following World War II. As the game became popular throughout the country, however, regional variations in the rules began to develop. The defendant was an unincorporated federation of regional gateball associations, and its 1977 rulebook was based largely on a rulebook developed, with various amendments, between 1970 and 1976 by a prefectural gateball association of which defendant's president was then the moving force. National unity remained elusive, however, and this led to the publication of the second rulebook by defendant.

223. The court cites here the Supreme Court opinion in One Rainy Night in Tokyo. See supra note 219 and accompanying text.

224. IV Chosakuken Hanreishu at 12, 1111 Hanrei Jiho at 137.

225. 3 Nimmer 13.03; see also Selle v. Gibb, 741 F.2d 896, 903-04 (7th Cir. 1984). In Selle, the defendants were the popular singing group known as the "Bee Gees." Plaintiff asserted that the Bee Gees' hit song "How Deep Is Your Love" infringed his copyright in a song entitled "Let It End." Plaintiff's song had never been published or recorded, although he had performed it several times in the Chicago area. Nevertheless, he asserted that the similarities between his work and that of the Bee Gees were so striking that the latter must have been copied from his. A jury returned a verdict for plaintiff, but the trial judge granted judgment for the defendants notwithstanding the verdict. Plaintiff appealed and the court of appeals affirmed, describing the test for infringement as follows:

Proof of copying is crucial to any claim of copyright infringement because no matter how similar the two works may be (even to the point of identity), if the defendant did not copy the accused work, there is no infringement. However, because direct evidence of copying is rarely available, the plaintiff can rely upon circumstantial evidence to prove this essential element, and the most important component of this sort of circumstantial evidence is proof of access. . . .

If, however, the plaintiff does not have direct evidence of access, then an inference of access may still be established circumstantially by proof of similarity which is so striking that the possibilities of independent creation, coincidence and prior common source are, as a practical matter, precluded. If the plaintiff presents evidence of striking similarity sufficient to raise an inference of access, then copying is presumably proved simultaneously . . . .

Id. at 901 (citations omitted). Plaintiff introduced expert testimony aimed at proving that defendants' work could not have been independently created, but the expert's opinion did not cover the possibility that the two works might have had a common source, and even the expert's testimony concerning independent creation was flawed because he did not analyze the relative complexity or uniqueness of the two works. The court felt that such testimony was a necessary aspect of plaintiff's case, because popular songs tend to be short and to build on or repeat a basic theme. Consequently, plaintiff had not met his burden of proving "striking similarity" between the two compositions. Id. at 905.

226. E.g., Frybarger v. International Business Machines Corp., 812 F.2d 525, 529 (9th Cir. 1987); Walker v. Time Life Films, Inc., 228 U.S.P.Q. 505, 508 (2nd Cir. 1986); Cooling Systems & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 491-93 (9th Cir. 1985); 3 Nimmer 13.03[A].

Frybarger involved charges that a videogame developed for defendant infringed the copyright on plaintiff's videogame. The court phrased the test as follows:

Those features of [plaintiff's] works that are ideas are not protected, therefore, against even directly copied identical ideas in [defendant's] works. Thus, to the extent that the similarities between [plaintiff's] and [defendant's] works are confined to ideas and general concepts, these similarities are noninfringing.

812 F.2d at 529. The court concluded that such similarities as a screen filled with rows of dots, a single protagonist with legs and a face who moves horizontally and vertically between the rows of dots and meets multiple adversaries that he can immobilize by manipulating lines connecting some of the dots, and points awarded on the basis of the protagonist's ability to elude and trap his adversaries were a basic idea that, as a practical matter, was indispensable or at least standard in its treatment. Consequently, the court affirmed the lower court's grant of summary judgment. Id. at 529-30.

In Walker, plaintiff was the author of a book entitled "Fort Apache," the nickname of a precinct of New York City known for its high incidence of violent crime. The book was purported based on true events and depicted squalor, physical devastation, and numerous crimes ranging from prostitution to murder. Defendants produced a film set in the same milieu entitled "Fort Apache: The Bronx," which depicts the close relationship between two police officers assigned to the precinct by following them through a number of personal and professional episodes. Plaintiff sued for copyright infringement, but the trial court granted defendants' motion for summary judgment on the ground that the only similarities between the works were trivial, abstract, or related to nonprotected material. The court of appeal affirmed pursuant to the following standard:

[A] district court may determine noninfringement as a matter of law on a motion for summary judgment either when the similarity concerns only noncopyrightable elements of plaintiff [sic] work, or when no reasonable trier of fact could find the works substantially similar.

228 U.S.P.Q. at 508. In a detailed comparison of the two works, the court concludes that, while they told the same story at the most general level and share an identical setting, they differed radically in pace and dramatic structure. Other specific similarities alleged by plaintiff were found to be either based on historical events, which are beyond the scope of copyright protection, or scenes a faire common to works of this type. Id. at 509-10.

The plaintiff in Cooling Systems published a catelog of automobile radiators and alleged infringement by defendant's catelog. The court of appeal affirmed the trial court's finding of no substantial similarity by first noting that a factual work of this type contains "a great many unprotectible facts and very little protectible expression of arrangement of those facts." 777 F.2d at 491. Moreover, there is only a limited number of ways of arranging a radiator catelog, especially in an arrangement that is useful. Id. at 492. Finally, while plaintiff was able to point to certain common errors in the two works, such as listings of automobile models that were never manufactured, as evidence of copying, that alone does not suffice because if only "facts" were copied there is no infringement even if such "facts" prove to be erroneous (citing 3 Nimmer 13.03[C]). The court concludes as follows:

What is important is . . . whether the very small amount of protectible expression in [plaintiff's] catelog is substantially similar to the equivalent portions of [defendant's] catelog.

Id. at 493. Under this standard, the lower court's dismissal was not clearly erroneous.

227. See supra text accompanying note 154-55.

228. IV Chosakuken Hanreishu at 13-14, 1111 Hanrei Jiho at 138.

229. IV Chosakuken Hanreishu at 14, 1111 Hanrei Jiho at 138-39.

230. The court explicitly recognized that the prefectural rulebook was influenced by plaintiff's works. See supra text accompanying note 229.

231. See supra text accompanying notes 167-82.

232. The Gateball Rulebook court did include the issue of similarity as a second prong of its test, see supra text accompanying note 224, that it did not have to reach in view of its finding on nonreliance. Had it reached this issue, it seems likely that the court would have followed the fact work cases and found no infringement because of the absence of nearly verbatim copying.

233. 3 Nimmer 13.03[C]; Central Tel Co. v. Johnson Pub. Co., 526 F. Supp. 838, 844 (D. Colo. 1981)(the appearance in defendant's work of three fictitious listings from plaintiff's telephone directory held to constitute an alternative ground for proof of copying); Southwestern Bell Tel. Co. v. Nationwide Independent Directory Service, Inc., 371 F. Supp. 900, 906 (W.D. Ark. 1974)(repetition of spelling errors from plaintiff's directory in defendant's constituted prima facie evidence of copying).

234. E.g., M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 445 (4th Cir. 1986). Similarly, the court in SAS Institute, Inc. v. S & H Computer Systems, Inc., 605 F. Supp. 816, 830-31 (M.D. Tenn. 1985), while finding pervasive structural similarity in the two programs, seemed heavily impressed by the obviously slavish copying of 44 lines out of some 186,000 lines of code and by the duplicity with which the defendants obtained the copy of the source code from which they worked. This direct copying approach to proving infringement in computer programs has the support of some of the jcommentators, e.g., Conley & Bryan, A Unifying Theory for the Litigation of Computer Software Copyright Cases, 6 Computer/L.J. 55 (1985), but has drawn the criticism of others, e.g., Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119, 1126 n.29 (1986); Hinckley, NEC v. Intel: Will Hardware Be Drawn into the Black Hole of Copyright?, 3 Computer & High-Tech. L.J. 23, 52 n.122 (1987). See generally Karjala, supra note 123, at 84.

235. E.g., in Greenbie v. Noble, 151 F. Supp. 45, 70 (S.D.N.Y. 1957), which involved an alleged infringement of a biographical work concerning an historical figure, the court concluded that plaintiff had failed to carry the burden of proving substantial copying of the copyrightable matter in plaintiff's work. With respect to factual information, the court phrased the standard as follows:

When a book is designed to convey information, a reader is entitled to avail himself of the facts contained therein and may use such information, whether correct or incorrect, in his own literary work, provided that his expression and treatment is distinctly his own and not merely the result of copying from the book.

Id. at 67 (emphasis added). This language was quoted with approval in the Hoehling case, which is discussed supra in the text accompanying notes 156-58; see also Cooling Systems & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 492 (9th Cir. 1985), which is discussed supra in note 226:

It is true that "courts have regarded the existence of common errors in two similar works as the strongest evidence of piracy" [quoting 3 Nimmer 13.03[C]], but proof of common errors does not obviate the need for proving substantial similarity.

In Morrison v. Solomons, 494 F. Supp. 218 (S.D.N.Y. 1980), the court found no infringement in the case of an introductory textbook on organic chemistry, notwithstanding a common structure and a number of substantially identical chapter headings and subheadings, on the ground that any book on this subject would cover much the same subjects and in roughly the same order. As to common errors found in the two works, the court reasoned as follows:

[T]he cases do not hold existence of common errors to justify a conclusion of copyright violation except where it has been shown to occur on a widespread basis such as to constitute "faithful copying." . . . The law of this Circuit casts considerable doubt upon the probative value of copied items as evidence of copyright violation [citing Hoehling and quoting the language from Greenbie quoted above].

Id. at 224. Here, there was evidence that the common errors also appeared in other comparable texts, and the court accepted defendant's testimony that he derived the errors that were common to plaintiff's work from sources other than plaintiff's work.

236. See infra text accompanying notes 251-56.

237. See supra text accompanying notes 115-18.

238. II-1 Chosakuken Hanreishu 119, 125-26 (May 18, 1940, Great Court of Judicature).

239. Of the eighteen features listed by the Court as comprising plaintiff's diary, eleven seem to be associated with the blank form portion designed for use by attorneys in keeping track of their cases. These included columns for names, dates, times, results, and similar items in pending cases; a temporary diary column for the next year; tables of suspended or concluded cases; and a column for keeping statistical results at the end of the year. The remaining seven features were more like an ordinary compilation and included a selected collection of terms, stamps, and fees; a table showing court jurisdiction; a table of postage, telephone, and exchange fees; and a list of all of the lawyers in Japan, together with their addresses and telephone numbers. Of these eighteen features, defendant's diary eliminated four altogether (three in the blank form portion and one in the general compilation) and added four new features to the general compilation (such as the explanation of the Hoffman calculation method as mentioned in the part of the opinion quoted above). In addition, some of the forms showed a little variation in their headings or style. For example, plaintiff's "Calendar of Holidays and Business Hours of the Courts" became "Calendar of Holidays and Sundays" with an apparently separate "Business Hours of the Courts" printed on red paper.

240. The plaintiff made the following argument, as summarized by the Court:

When the purpose, form of thought, and system of compilation of the latter are the same or strikingly imitatively similar in the former and in addition many portions show plagiarized content, infringement is established. Considering the works involved in this case, the content of [defendant's] diary is almost completely plagiarized from [plaintiff's]. The evidence for this is clear at a glance at the two works. In particular, as a result of respondent's plagiarism of the content of appellant's work, omissions and errors appearing throughout appellant's work are followed identically in respondent's.

II-1 Chosakuken Hanreishu at 125 (emphasis added).

241. Student Map, II-1 Chosakuken Hanreishu 575 (Oct. 18, 1951, Osaka District Court).

242. Id. at 585-86. The court seemed impressed with the experience and talent of the plaintiff in mapmaking and the time and energy involved in producing the map in question.

243. Id. at 587. At the same time the court rejected defendant's argument that defendant's change in scale was sufficient to distinguish the maps.

244. Among the 34 additions, for example, the height of one mountain and the location of three additional towns were shown on defendant's map for the northernmost island of Hokkaido. Among the 17 changes were different colors indicating certain borders and sea routes and different representational markers for sand dune regions.

245. II-1 Chosakuken Hanreishu at 587-88. The identical mistakes involved the use of incorrect characters in some nine names and, in one case, omitting the name of a town. Id. at 579. In addition to these errors, plaintiff asserted that 99% of the place names were identical in both maps and that the other differences were insubstantial. For example, plaintiff used an open "0" to denote city locations, while defendant used a "0" with a dot in the middle, and defendant placed names on the right-hand side of railway lines instead of on the left. Id. Neither these arguments of the plaintiff nor the reasoning of the court deal with the problem that differences in factual works will often be insubstantial. The essence of a map is the accurate location of the features shown, and these will necessarily be substantially similar for maps aiming at the same goals.

246. 566 Hanrei Times 273 (Apr. 17, 1985, Tokyo District Court); see supra note 147.

247. The defendant did not make an appearance in the case, so one can expect that the factual determinations as well as the legal argument were strongly biased toward plaintiff. Nevertheless, the case comes out of the special Intellectual Property Section of the Tokyo District Court, so its reasoning cannot be wholly ignored.

248. See supra note 147.

249. For example, the names of some of plaintiff's editors were included as example words under the characters for their respective names, and these were taken over wholly or partially by defendant. 566 Hanrei Times at 273-74.

250. For example, the deliberately inserted names of plaintiff's editors appeared on pages 28, 189, 220, and 220 of plaintiff's dictionary, while the alleged correspondences appeared at pages 23, 154, 178, and 178 in defendant's. Similarly, eight special 4-character "idiomatic" phrases appearing at pages 21, 39, 86, 88, 119, 149, 292, and 388 of plaintiff's works ended up on pages 18, 49, 71, 73, 98, 121, 236, and 315 of defendant's.

251. 566 Hanrei Times 278 (Mar. 29, 1985, Osaka District Court).

252. See supra text accompanying notes 196-200.

253. The actual author of both ads was the same person. See supra note 197. Therefore, the common error is less compelling on the issue of slavish copying.

254. 566 Hanrei Times at 282.

255. III Chosakuken Hanreishu 28 (June 23, 1980, Tokyo District Court); see supra text accompanying notes 171-74 & note 213.

256. Id. at 39-40.

257. See supra note 234 and accompanying text; see generally, Karjala, supra note 123.

258. JCL Art. 10(3) provides that copyright protection in a program work does not extend to algorithms used in making the work, and defines algorithm as a method for combining computer instructions in a program. Consequently, program organization or structure is unlikely to be protected. See supra note 136 and the sources cited therein. Therefore, even where common errors or traps in the detailed coding are shown, there is still an issue of whether there was a taking of protected expression. It remains to be seen whether a Japanese court will find infringement when all that is shown is copying of only a few isolated lines of code.

259. See supra text accompanying notes 32-34.

260. II-1 Chosakuken Hanreishu 119, 125 (May 18, 1940, Great Court of Judicature); see supra notes 114-18 & 237-40 and accompanying text.

261. The language used by the Court could also mean that no infringement would result where the parts taken form only a small fraction of the new work, so that the ordinary observer would be unlikely to notice it. It is improbable, however, that the Court intended to create a de minimis quantitative test or that the principle will be applied in this way in Japan. Certainly the general American view is that new creativity in either idea or expression does not justify taking the protected expression of another. E.g., Schroeder v. William Morrow & Co., 566 F.2d 3, 5-6 (7th Cir. 1977)(denying the American fair use defense without reference to the value of defendant's additions, notwithstanding that material taken from plaintiff's work comprised only about one percent of the total amount of defendant's); Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2nd Cir. 1936), cert. denied, 449 U.S. 841 ("[N]o plagiarist can excuse the wrong by showing how much of his work he did not pirate"). The facts of Sheldon and Schroeder are described supra in notes 81 & 186, respectively.

262. II-1 Chosakuken Hanreishu 560 (Sept. 22, 1978, Toyama District Court); see supra text accompanying notes 143-44 & 178-81.

263. Id. at 566.

264. See supra text accompanying notes 144 & 180.

265. The Marine Supplies Ad case, 566 Hanrei Times 278, 282 (Mar. 29, 1985, Osaka District Court), discussed in detail supra text accompanying notes 130-32 & 192-200, also commented that plaintiff's expression was hidden in the shadow of defendant's creativity, but the analysis makes clear that the court found the similarities to lie outside the scope of protected expression.

266. See supra text following note 181.

267. Arnstein v. Porter, 154 F.2d 464 (2nd Cir. 1946), cert. denied, 330 U.S. 851. In this case, defendant was the well known composer Cole Porter, and plaintiff asserted that Porter's song "Begin the Beguine" infringed plaintiff's copyright in two works, "The Lord Is My Shepherd" and "A Mother's Prayer." In order to infringe a copyright in a musical work, the court concluded, it is not enough simply to show some copying; rather, the issue is whether the portion of the work that appealed to general audiences was appropriated:

Assuming that adequate proof is made of copying, that is not enough; for there can be "permisible copying," copying which is not illicit. Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. . . . The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.

Id. at 472-73. The court of appeal reversed a summary judgment in favor of defendant on the ground that plaintiff ought to have the opportunity to show, as a matter of fact, that defendant had appropriated those essential portions of plaintiff's works that appealed to the ordinary lay listener.

268. Recent United States decisions involving computer software have deviated from traditional copyright theory in protecting technological ideas and methodologies. See Karjala, supra note 123. It is too early to predict whether Japanese courts will follow this protective trend for software. The express statutory provisions relating to programs are a strong basis for limiting protection of programs. See supra notes 136 & 258 and the sources cited therein. On the other hand, the Operating System case, supra note 136, seems to indicate a highly protective attitude by the Intellectual Property Division of the Tokyo District Court. See Karjala, The First Case on Protection of Operating Systems and Reverse Engineering of Programs in Japan, 10 Eur. Intell. Prop. Rev. 172 (June 1988).