Episode 27

Currently, amendments to the Design Act to protect images in the virtual world (metaverse) are under consideration.
The issue at stake here is the division of roles between Copyright Act and Design Act.
Copyright Act protects the creative expression of ideas or emotions (Article 2, Paragraph 1, Item 1 of the Copyright Act). Currently, many countries, including Japan, are members of the Berne Convention. The Convention stipulates a principle of no formality (Article 5(2) of the Berne Convention).
Design Act is an industrial property law that requires registration with the Patent Office to establish rights.
In Europe, the European Union (EU) has a specialized agency for design registration, the European Union Intellectual Property Office (EUIPO), located in Alicante, Valencia, Spain.
The EUIPO's "Directive on the Protection of European Community Designs" stipulates that "'design' means the external appearance of all or part of a product resulting from the product itself and/or its ornamental features, in particular its lines, contour, colour, shape, texture and/or material" (Article 1(a)).
The term "'product'" also stipulates that "'product' means any industrial or handicraft product and includes, in particular, parts, packaging, exterior packaging, graphic symbols and typographical typefaces, etc., intended to be incorporated into a complex product, but excluding computer programs" (Article 1(b)).
In Japan, "handicraft products" are protected by Copyright Act (Article 2, Paragraph 2 of the Copyright Act), but not by Design Act (Article 3, Heading of the Design Act).
Furthermore, because typographical typefaces cannot be considered the shape of an article (Article 2, Paragraph 1 of the Design Act), it is considered difficult to protect them under Design Act in Japan.
The Berne Convention stipulates that "The scope of application of the laws relating to works of applied art and industrial designs, and the conditions for protection of such works and designs, shall be determined by the laws of the countries of the Union. Works protected in the country of origin exclusively as designs may claim in other countries of the Union only the special protection accorded to industrial designs in those countries. However, if no such special protection is granted in the other countries, such works shall be protected as artistic works" (Article 2(7)).
In other words, the conditions for protection of works of applied art and industrial designs are determined by the laws of the countries of the Union, but if protection is not granted as designs, they must be protected as artistic works. This means that applied art can be protected as either a work of art or an industrial design, and failing to be protected as either constitutes a violation of the Berne Convention.
Japan's Design Act stipulates, as a requirement for design registration, that "any person who creates a design capable of industrial application... may obtain a design registration for that design" (Article 3, Paragraph 1, head of the Act). In other words, applied art that cannot be used industrially must be protected under Copyright Act.
With regard to the copyrightability of typographical typefaces, the Supreme Court has ruled that "to qualify as a work under Article 2, Paragraph 1, Item 1 of the Copyright Act, a typeface must possess originality that distinguishes it from conventional typographical typefaces, and aesthetic qualities that make it an object of artistic appreciation in itself" (Supreme Court, First Petty Bench, Judgment of September 7, 2000, Case No. 332 of 1998, Minshu Vol. 54, No. 7, p. 2481).
For this reason, requiring copyright protection of typographical typefaces, which are not protected under the Design Act, to require "aesthetic quality that can be regarded as equivalent to pure art" could be a violation of the Berne Convention.
With regard to the protection of images in virtual space, it is appropriate to protect "designs that can be used industrially" under Design Act, and all other designs under Copyright Act.
For example, images used in computer simulation experiments, rather than evaluation experiments that previously required the creation of physical prototypes, would likely constitute an "industrially applicable design."
On the other hand, images in the metaverse space are likely to be protected by copyright law.

Episode 26

The Design Act stipulates that, as a requirement for design registration, "Anyone who creates a design capable of industrial application... may obtain a design registration for that design." (Article 3, Paragraph 1, Heading). This means that a design must be capable of industrial mass production.
The need for such design protection arose due to the Industrial Revolution, which led to the mass production of industrial products. This article explains this issue in four major European countries (the United Kingdom, France, Germany, and Italy).
The Industrial Revolution began in the United Kingdom from the mid-18th century to the 19th century. Mass production led to an abundance of cheap products, and factory workers were forced to work in poor conditions. The Arts and Crafts movement was born out of this social climate. However, this movement was merely a nostalgia for the pre-Industrial Revolution era of cottage-based craftsmanship, and did not contribute to British industrial production from a design perspective.
Subsequently, from the late 19th century to the early 20th century, British industry declined as newly industrializing nations like Germany and the United States caught up with Britain during the Second Industrial Revolution. As explained in Episode 11, functional beauty was born in Germany at the Bauhaus, a school of design founded in 1919 after World War I.
Perhaps the most representative industrial designers of modern Britain are Jonathan Ive and Marc Newson (born in Australia and living in the UK). Their designs are characterized by a foundation of Bauhaus-style functional beauty, combined with aesthetic forms and color schemes.
In France, the Industrial Revolution was delayed compared to Britain due to the chaos caused by the French Revolution at the end of the 18th century. Art Nouveau, which originated in the British Arts and Crafts movement and used curves and decoration, emerged in France, favoring designs that rejected mass production. After World War I, the country transitioned to Art Deco, which sought to harmonize mass production with design. Art Deco means decorative arts.
Le Corbusier, a leading French architect and designer (born in Switzerland but later acquired French citizenship), pointed out that the works exhibited at the 1925 Paris World's Fair (Art Deco Exposition) were overly decorative and unsuitable for industrial production.
Italy was originally divided into small countries, and it was not until the end of the 19th century that the entire country was unified. As a result, industrialization was delayed, and it was only after World War II that industry developed, mainly in the north. Today, Italy's population is smaller than France's, but its industrial production exceeds that of France.
Italy was also home to world-renowned industrial designer Giorgetto Giugiaro, who designed the first-generation Golf, Volkswagen's signature compact car. Volkswagen, a German automobile manufacturer, was looking for a Bauhaus-style functional design, and Giugiaro responded to that demand by designing the first-generation Golf, which is hailed as a masterpiece in automotive history.
Modern industrial design is based on Bauhaus-style functional beauty, with aesthetic elements added from the cultural perspective of each designer's background. However, this is premised on the design being suitable for industrial production.

Episode 25

In Episode 24, we discussed the appeal (Intellectual Property High Court, Reiwa 3 (Ne) No. 10037, Judgment May 27, 2025) of the lawsuit against Sawai Pharmaceutical and Fuso Pharmaceutical for damages for infringement of Toray's use patent for an oral antipruritic agent (Patent No. 3531170, extended registration term expires in November 2022, hereinafter referred to as the "Patent"). In this lawsuit, the defendants were ordered to pay a total of 21,763,810,000 yen in damages and late payment interest, the highest amount ever paid in an intellectual property lawsuit. The judgment had not yet been made public at the time (July 1), but it was made public on July 22, so we will explain the contents of the judgment.
In the ruling on the infringement theory, the court directly cited a reference to interpret the term "active ingredient" in the patent claims. The same term can have different meanings depending on the context when used in a sentence. The Patent Act stipulates that the meaning of terms set forth in the claims shall be interpreted taking into account the descriptions in the specification and drawings (Article 70 of the Patent Act). However, it is a violation of the law to simply quote descriptions in general literature and use them to interpret a claim.
In the ruling on damages, the court found that Torii Pharmaceutical, the exclusive non-exclusive licensee of the patent in question, had an independent right to claim damages against Sawai Pharmaceutical and Fuso Pharmaceutical, and that Toray had received an assignment of this claim from Torii Pharmaceutical.
All of the plaintiff's formulations manufactured by Toray were sold through Torii Pharmaceutical. During the term of the patent in question, Torii Pharmaceutical was granted an exclusive non-exclusive license as a partner of the plaintiff, at least with regard to the plaintiff's formulation (for dialysis use), while Toray, the patent holder, was in a relationship with Torii Pharmaceutical, manufacturing and supplying the plaintiff's formulation as the manufacturing manager.
The exclusive non-exclusive licensee's right to claim damages for lost profits based on the active infringement of a claim, and the patent holder's right to claim damages, are both claims for damages arising from the alleged infringer's act of patent infringement, and therefore, to the extent that they overlap, they are in a relationship of untrue joint and several claims. (Tokyo District Court Case No. 22491 of 2015 (Wa) Judgment of July 27, 2017)
If the patent holder, Toray, exercises its right to claim damages for patent infringement against the alleged infringers (Sawai Pharmaceutical and Fuso Pharmaceutical), the debtor (Sawai Pharmaceutical and Fuso Pharmaceutical) will be deemed to have paid its debt to the creditor (Toray), and that debt will be extinguished (Article 473 of the Civil Code).
An exclusive non-exclusive license is a form of non-exclusive license, which is "a patent holder granting a non-exclusive license to another person under the patent right" (Article 78 of the Patent Act). For this reason, when a patent holder exercises its right to seek damages against an alleged infringer based on its patent right, the claim based on that patent right is extinguished, and an exclusive non-exclusive licensee cannot exercise its rights to the extent of the overlap.
However, the Intellectual Property High Court ruling held that "even in this case, if, in light of the specific facts, Torii Pharmaceutical's interest in the sale of the plaintiff's formulation is found to be a legally protected interest from the perspective of tort law in relation to the infringer, Torii Pharmaceutical should be recognized as having an inherent right to claim damages for the unlawful infringement of that interest."
The Intellectual Property High Court ruling in this case allowed an exclusive non-exclusive licensee to exercise its rights to the extent of the overlap, even though the patent holder (Toray) exercised its right to seek damages against the alleged infringers (Sawai Pharmaceutical and Fuso Pharmaceutical) based on its patent right, and the claim based on that patent right was extinguished. This ruling is illegal and deviates from the framework of the law of obligations, and cannot be considered a judgment in a country governed by the rule of law.
If such a trial were to take place, foreign companies would conclude that there is little predictability in IP litigation decisions in Japan and that doing business in such a country is a high risk. This goes against the government's policy of advocating Japan as an "intellectual property-based nation."