Date of Judgment: July 20, 1990
Issuing Authority: Supreme Court
Level of the Issuing
Authority: Final Instance
Type of Procedure: Judicial (Civil)
Subject Matter: Trademarks
Main text of the
judgment (decision):
1. The part of
the judgment of the original instance court concerning the jokoku appellant
losing the case shall be quashed.
2. The claim
of the jokoku appellee on this part shall be dismissed.
3. The total
cost of the litigation shall be borne by the jokoku appellee.
Reasons:
On item 3 of
the grounds of jokoku appeal by representatives for appeal, Kenji Yoshitake,
Iwao Kamiya, and assistant Teruo Nishimura, and item 6 of the grounds of jokoku
appeal by the representatives for appeal, Ryuichi Murabayashi, Toshiaki
Imanaka, Hiroshi Yoshimura,Yoshitaka Kamata, Kazue Urata, Tatsukichi Taniguchi,
Tsukasa Matsumoto, and
Kazufumi
Murakami:
1. The facts
lawfully ascertained by the original instance court are as follows:
1) The
appellee in the second instance who withdrew later (the plaintiff in the first
instance; hereinafter, the 'koso appellee') is engaged in the business of the
production and wholesale of textile products. He had the trademark right
(application for registration on June 26, 1958, June 12, 1959, registered,
November 29, 1979, the term of registration extended; the designated products
are 'clothes, handkerchiefs, buttons and pins for accessories. Hereinafter,
'the Trademark') assigned from P around December 1969. The jokoku appellee was
assigned the rights on the Trademark from the koso appellee on April 17, 1984,
and this transfer was registered on July 30 of the same year. The jokoku
appellee, by the registration of transfer of the rights, had the entire claim
of the koso appellee vis a vis the jokoku appellee assigned on September 4,
1984, while the present case was pending at the original instance court.
2) The jokoku
appellant was marketing mufflers (hereinafter, 'the Product of the defendant')
which are designated products in relation to the Trademark, and had mark B as
indicated in List 2 attached to the judgment of the first instance court and
mark C indicated in the same list attached to them.
3) The
Trademark comprises the combination of letters and a figure; the letters
'POPEYE' in the upper part, the same word in Japanese at the bottom, and
between them was a figure with a sailor's cap and uniform looking sideways with
a sailor's pipe in the mouth, the left hand with the tattoo of an anchor on his
chest and the right had flexing its muscles, standing upright with both legs
apart.
Mark B of the
Product of the defendant has the letters 'POPEYE' in the corner of the muffler,
and Mark C comprises a tag attached to the muffler with a combination of letters
and a figure; on the tag, a figure with a cap and sailor's uniform, looking
slightly sideways with the mouth closed with a sailor's pipe, flexing the
muscles of his right arm and looking proud was depicted, and in the lower part,
there were letters of 'POPEYE' written diagnostically.
4) The
cartoon 'Popeye' was part of the cartoon series, 'the Thimble Theater' which
was created by Elsy Kreisler Seager and which appeared in a newspaper, the 'New
York Journal' on January 17, 1929, and once published, became very popular and
the title of the series was changed to 'Popeye's Thimble Theater'. The author
himself became emotionally attached to this character as if he really existed.
When the cartoon was made into a film in 1932 by Max Fleischer, this single-eyed
'Popeye the sailor man' who always had a sailor's pipe in the mouth, and who,
upon eating spinach, wields super human power and beats his opponent became
popular among people all over the world including Japan as a figure with a
unique character. Even after the death of Seager in 1938, the cartoon was
succeeded by other cartoon creators. The creator in 1976, Bud Sagendorf, is the
third generation creator of this cartoon. In the meantime, through films and
televisions, the character of Popeye has taken root across the world including
Japan.
5) A US
juridical person, Q Inc., is the holder of the copyright of the cartoon 'the
Thimble Theater'. On April 6, 1981, it licensed the exclusive right to use the
copyright to the parent company R Corporation, and S Syndicate Division, which
is part of R Corporation licensed the reproduction of the 'character in the
Popeye cartoon' on sporting goods including mufflers to a joint stock company
'T'. The jokoku appellant purchased the Product of the defendant produced by the
company 'T' under license and sold them to retailers between the summer of 1981
and December 1982.
2. At the
first instance, the koso appellee sought an injunction of the sale of the
Product of the defendant and compensation vis a vis the jokoku appellant based
upon the rights under the Trademark. The jokoku appelee who had the right to
the assigned Trademark participated in the second instance as a party and
sought an injunction of the sale of the Product of the defendant and
compensation vis a vis the jokoku appellant based upon the rights on the
Trademark (the koso appellee withdrew the claim after the assignment). The
original instance court, based upon the above facts, ruled as follows and
altered the judgment of the first instance court which granted an injunction on
the sale of the products of the defendant and ordered payment of part of the
claimed compensation, and acknowledged the part claiming the payment of
1,085,1000 yen and the penalty for the delay in payment, but dismissed the
remaining part of the claim.
1) It is
evident that mark C is used on the tag and is used solely as a trademark. It is
also evident that mark B is used with the function of a trademark, since it is
used as a 'one point mark', and has the function of indicating the place of
origin and assurance of quality.
2) Marks B
and C coincide with the Trademark in that it is reminiscent of the name
'Popeye', and also is reminiscent of the image of the figure 'Popeye' and thus,
as regards the underlying concept, they coincide with the Trademark. Therefore,
marks B and C are similar to the Trademark.
3) Art.29 of
the Trademark Law should be understood to provide that in cases where the right
to the trademark is in conflict with the copyright which has emerged before the
date of application for the registration of the trademark, the holder of the
trademark may not only be unable to use the design as a trademark to this
extent, but if the reproduction and use of the copyrighted work as a trademark
is in conflict with the use of his own right to the trademark, he is not
entitled to an injunction. Mark C comprises the figure which visually expressed
the person of 'Popeye' and the name which is inseparable from the figure and
which describes it, and therefore, is a reproduction of the character 'Popeye'
which appears in the original copyrighted work, 'the Thimble Theater'.
Therefore, mark C as a whole does not constitute an infringement of the
Trademark.
On the other
hand, mark B comprises the letters 'POPEYE' only. Titles or the name of the
characters which appear in a copyrighted work are not a copyrighted work
independent of the original work, even if they immediately remind the people of
the figures of the characters. Therefore, concerning Mark B, it is not possible
to exclude a claim for compensation based upon the right to the Trademark by
virtue of Article 29 of the Trademark Law.
4) Insofar as
the adjudication which annuls the registration of the Trademark has not been
finalised, the Trademark cannot be regarded as being against good morals and
public order. The contention of the jokoku appellant that the jokoku appellee
has had the right to the Trademark assigned for the purpose of 'free riding' on
the power of the 'character of the Popeye cartoon' to attract customers not
only cannot be substantiated, but if the concept of 'free riding' as asserted
by the jokoku appellant means 'to skilfully use other person's achievement
without paying', such an act is not necessarily unlawful. Besides, it was after
1960 that the licensor of the Popeye cartoon, Hurst Corporation, began to
market 'characters of the Popeye cartoon' in Japan as a business, and on April
21, 1939, at the time of the application for registration of the trademark
which comprises the figure of 'Popeye' and some letters (registration number
32620) and is a combined trademark with the Trademark, there was no lawful
interest to be protected by registering the 'character in the Popeye cartoon'
as a trademark, and therefore, the exercise of the rights by the jokoku
appellee based upon the Trademark cannot be regarded as an abuse of rights, and
there is no other circumstances in this case which comprise an abuse of rights.
5) Therefore,
the claim for compensation by the jokoku appellee vis a vis the jokoku
appellant based upon the infringement of the rights on the Trademark does not
have grounds in relation to Mark C by virtue of Art.29 of the Trademark Law,
but concerning Mark B, the claim is with grounds for 1.085,100 yen of loss
incurred by the koso appellee by the jokoku appellant selling the product of
the defendant between the summer of 1981 and the end of 1982. The claim for injunction
concerning Mark B is without grounds, since the jokoku appellant failed to
prove that there was a probability of the products of the defendant being sold
in the future.
3. However,
the part of the above ruling which denied that the exercise of the rights based
upon the Trademark against Mark B was an abuse of rights cannot be upheld as
justifiable. The reasons are as follows:
The jokoku
appellee has submitted the present claim on the ground that Mark B is used with
the function of a trademark, and is similar to the Trademark, and furthermore,
that it merely expresses the name of the principal character of the cartoon
'Popeye' and therefore, is not a copyrighted work separate from the cartoon
'Popeye', and cannot be regarded as the reproduction of the copyrighted work,
and argued that therefore, the claim for the compensation based upon the
Trademark in relation to Mark B was an exercise of the rights on the Trademark.
However, in
the light of the above-mentioned facts, at the time of the application for
registration of the Trademark, the principal character 'Popeye' of this series
of cartoon had been known and been popular worldwide as a fictional figure with
a consistent character, and the image of 'Popeye' had taken root throughout the
world including Japan. Considering the fact that the principal figure of the
cartoon 'Popeye' is a fictional figure and that the word 'Popeye', or 'Popeye
(Japanese)' does not mean anything else than this principal figure, the name
'Popeye' has been appreciated by the general public as inseparable from the
image of the figure in the cartoon. Therefore, it is the understanding of the
general public, at the time of the application for registration of the
Trademark, as well as at present, that the word 'Popeye', which is the
solecomponent of Mark B, is immediately reminiscent of the image of the
principal figure in the cartoon 'Popeye'. Furthermore, the Trademark is also
nothing but a mark which recalls the image and name of the principal figure of
the cartoon 'Popeye'. Therefore, the Trademark is using the publicity of this
figure without paying for it, and if one takes into account that the
maintenance of the objectively fair order of competition is one of the purposes
of the Trademark Law, the claim by the jokoku appellee of the infringement of
the right to the Trademark against a person who has been licensed by the holder
of the copyright and sold products with Mark B is an act which harms the
objectively fair order of competition, and is nothing but an abuse of power.
The judgment
of the original instance court which differed from the above and rejected the
claim of the abuse of power by the jokoku appellant has erred in the
interpretation and application of law, and it is evident that this error
affected the conclusion of the judgment. The arguments of the jokoku appellant
are with grounds, and without ruling on the rest of the grounds of appeal, the
part of the judgment of the original instance court which ruled against the
jokoku appellant cannot but be quashed. As explained above, since it is evident
that the claim of the jokoku appellee concerning Mark B, part of the claim by
the jokoku appellee which has been acknowledged by the judgment of the original
instance court shall be dismissed.
Thus, by
virtue of arts.408, 396, 96, 89 of the Code of Civil Procedure, the justices
unanimously rule as the main text of the judgment.
(Translated
by Sir Ernest Satow Chair of Japanese Law, University of London)