I. Introduction

On January 14, 2021, the Osaka High Court (the “Court”), in the Goldfish-filled Telephone Booth Case (Case No. 2019 [Ne] 1735), reversed the decision by the court at the first instance (the Nara District Court Decision of July 11, 2019, Case No. 2018 [Wa] 466) (the “Original Decision”), and found that the plaintiff’s work titled “Message” was recognized as having copyrightability. The work, in the main, comprised a phone receiver of a public telephone fixed in the state of being taken off the hook and floating in water, with bubbles generated from the receiver. The defendant’s work, bearing similarities with the plaintiff’s work in all of the parts that contained creative expressions, and as the defendant’s work was made with dependence on the plaintiff’s work, therefore, the defendant’s work was a reproduction or adaptation of the plaintiff’s work. The summary of the judgment by the Court is explained in section II below, with comments set out in section III below.

II. Summary of the Judgment

1.Requirements for Copyright Protection

In order to obtain protection as a copyrighted work under the Copyright Act, a work (i) is required not to be “thought or sentiment” itself, but to be an “expression” of thoughts or sentiments, and (ii) needs to be expressed “in a creative way” (Article 2, Paragraph 1, Item 1 of the Copyright Act). “Creativity” does not require a high level of originality. However, it requires the personality of an author to be expressed in some way. Commonplace expressions do not exhibit an author’s personality and lack “creativity”. In a case where there is only one way to express an idea, or where expressions of an idea are restricted to a substantial degree, expressions given by anyone based on such an idea necessarily result in the same or similar expressions, and therefore, such expressions lack “creativity”.

2.Copyrightability of the Plaintiff’s Work titled “Message”

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【Plaintiff’s Work cited from List of Plaintiff’s Work attached to Written Judgment】

Considering the differences in appearance between the plaintiff’s work and an actual telephone booth, each individual component of the plaintiff’s work listed below did not contain any creative expressions: (1) the telephone booth is almost completely filled with water; (2) there are no long hinges on the surface of the entrance of the telephone booth, and all four faces of the telephone booth are formed by acrylic glass; and (3) red goldfishes numbering in the range of approximately 50 to 150 swim around in the water. In relation to (1), there is a narrow range of choices available to others for a method of expressing an idea of a telephone booth as an aquarium. In relation to (2), it is hard to attract the attention of viewers, and in regard to (3), the combination of the color and quantity of goldfishes is commonplace.

Having said that, the personality of the author is expressed in the different parts (4): a phone receiver of a public telephone is fixed in the state of being taken off the hook and floating in the water, and bubbles are generated from the receiver. The reason is that the different part (4) can be viewed as an extraordinary scene that would never occur in reality, from which a state of communicating with someone can be imagined. This has a high level of impact on viewers.

It is noted that the color of the roof and the public telephone of the telephone booth of the plaintiff’s work is yellowish green, which the plaintiff places importance on, since the plaintiff’s work is themed on environmental issues. However, this part is common with actual public telephone booths. Therefore, such part in itself lacks creative expression.

From the above, it is recognized that the personality of the author is expressed in the plaintiff’s work by combining part (4) with parts (1) and (3). It thus should be said that the plaintiff’s work corresponds to an artistic work as an art which exhibits creative expression.

3. Requirements for Reproduction or Adaptation of a Work

A reproduction of a work means the physical replication of a work based on an existing work which makes it sufficiently possible to recognize its content and form (Article 2, Paragraph 1, Item 15 of the Copyright Act). Adaptation of a work is an act of creating a new work based on an existing work by maintaining the identicality with the existing work in terms of the fundamental characteristics of expressions, but modifying, increasing or decreasing, or changing specific expressions in order to express a new thought or sentiment in a creative manner to such an extent that any person who comes across the adaptation can directly perceive the fundamental characteristics of the expressions of the existing work (see the Supreme Court Decisions rendered on September 7, 1978, and on June 28, 2001).

4. Identicality or Similarity

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【Defendant’s Work cited from List of Defendant’s Work attached to Written Judgment】

The defendant’s work bears similarities with the plaintiff’s work in all of the following parts that contain creative expressions in the plaintiff’s work: (1) a telephone booth-like aquarium is filled with water, and red goldfishes numbering in the range of approximately 50 to 150 swim around in the water; and (2) a phone receiver of a public telephone is fixed in the state of being taken off the hook and floating in the water, and bubbles are generated from the receiver. It also differs from the plaintiff’s work in the parts listed below that do not contain creative expressions: (1) the type of public telephone concerned, (2) the color of the public telephone, (3) the color of the roof of the telephone booth, (4) the number and shape of shelves arranged under the public telephone, and (5) the amount of water filled in the telephone booth.

Therefore, it can be said that the defendant’s work is a physical replica of the plaintiff’s work which makes it sufficiently possible to recognize its content and form. Further, even if creativity is acknowledged in the aforementioned differences, or, in the choice of the type and color of the public telephone, the color of the roof of the telephone booth, and the defendant’s work can be regarded as a work different from the plaintiff’s work, it can be said that the defendant’s work maintained the identicality with the plaintiff’s work in terms of the fundamental characteristics of expression, and any person who comes across the defendant’s work can directly perceive the fundamental characteristics of the expression of the plaintiff’s work.

III. Comments

1. Regarding the summary of Judgment 1, the Court found, with regard to requirements to be protected as a work, that creative expressions need to exhibit the personality of the author as in many court cases (the Tokyo High Court Decision of February 19, 1987 [the electability prediction table case] etc.) and majority theories (Hiroshi Saito “Copyright Act [the third edition]”, p.77 etc.), while indicating the idea-expression distinction which is generally an accepted doctrine, based on the definition of a work (Article 2, Paragraph 1, Item 1 of the Copyright Act). On that basis, the Court found, as in many court cases (the Intellectual Property High Court of July 17, 2008 [Livedoor-litigation observation record case] etc.), that commonplace expression does not exhibit an author’s personality, and lacks “creativity”, and indicated the generally accepted merger doctrine. No divergent opinions were found with respect to the summary of Judgment 1, except that there was the influential theory in recent years that regards creativity as a range of choices of expression (Nobuhiro Nakayama “Copyright Act [the third edition]”, p.70).

2. Regarding the summary of Judgment 2, the Court affirmed, based on the summary of Judgment 1, the copyrightability, and especially, the creativity of the plaintiff’s work by placing importance only on the following difference in appearance between the plaintiff’s work and the actual telephone booth: (4) a phone receiver of a public telephone is fixed in the state of being taken off the hook and floating in the water, and bubbles are generated from the receiver.

In this respect, it contrasts with the Original Decision. More specifically, the court of first instance, when determining the copyrightability of the plaintiff’s work, based on its finding of requirements for copyright protection which is the same as that found by the Court of the appeal case, denied the creative expressions of (4) mentioned above in the plaintiff’s work based on the merger doctrine, while on the other hand, the court of first instance recognized creativity in concrete expressions, such as the color and form of the telephone booth, and the type, color, and position of the public phone in the booth of the plaintiff’s work, including the point that the color of the roof of the telephone booth and public telephone of the plaintiff’s work were respectively yellowish green.

After the Original Decision, critical considerations were made (Oki Suwano “Critical Essay on Court Decision”, the INVENTION April 2020 issue, p.44 etc.), and the points of creative expressions in ready-made modern art works like the plaintiff’s work which are made from manufactured objects were considered in detail (Kodai Kimura “What is Originality in Modern Arts? ‘Ready-made’ works in the view of the Copyright Act (2)”, Bijutsutecho website [https://bijutsutecho.com/ magazine/series/s22/ 20291]). From the foregoing theoretical considerations, it may be thought that the summary of Judgment 2 was acceptable, although there may still be divergent opinions in that creativity is not necessarily based on a creative intention of the author.

3. Regarding the summary of Judgment 3, the Court indicated requirements for reproduction and adaptation of a work based on the definition of reproduction (Article 2, Paragraph 1, Item 15 of the Copyright Act), the Supreme Court Decision of September 7, 1978 (the One Rainy Night in Tokyo Case) concerning the meaning of reproduction including that of an intangible work or adaptation under the previous Copyright Act, and the Supreme Court Decision of June 28, 2001 (the Esashi-Oiwake Case) concerning the meaning of adaptation under the current Copyright Act. No divergent opinions were found in court cases and theories.

4. Regarding the summary of Judgment 4, the Court determined, based on the summary of Judgment 3 concerning requirements for reproduction or adaptation of a work, that since the defendant’s work had similarities with the plaintiff’s work in all of the parts that contained creative expressions ((1), (3) and (4) stated in the summary of Judgment 2), requirements for reproduction of a work other than dependence were satisfied, and even if creativity was recognized in the choice of the different type and color of the public telephone and different color of the roof of the telephone booth, and the defendant’s work can be said to be a different work from the plaintiff’s work, requirements for adaptation other than dependence were still satisfied.

As seen from the above, the method of considering whether or not the defendant’s work bears similarities with the plaintiff’s work in the parts that exhibit creative expressions (the two-step test) is generally accepted in court cases and theories. Further, there is the method of considering whether or not the defendant’s work as a whole can be regarded as an adaptation of the plaintiff’s work by taking into account creative expressions presented in the defendant’s work that are different from those in the plaintiff’s work (the overall comparison theory) in addition to creative expressions that are the same as those in the plaintiff’s work, and the foregoing method can be seen in many court cases (the Intellectual Property High Court Decision of August 8, 2012 [the Tsuri-ge town case] etc.), while opinions are divided (Affirmative theory: Nobuhiro Nakayama “the Copyright Act [the third edition]”, p.721 etc.; Negative theory: Yoshiyuki Tamura “Criticism on Court Decision” Intellectual Property Law and Policy Journal Vol. 41, p.97- etc.).

The summary of Judgment 4 is in contrast to the Original Decision as follows: the Court acknowledged creative expressions contained in the plaintiff’s work in different points from that in the Original Decision. As a result, the Court further acknowledged, based on the two-step test, that the defendant’s work bore similarities with the plaintiff’s work in the points that contain creative expressions, while the Original Decision denied the same.

Further, the summary of Judgment 4 is characteristic in that the defendant’s work as a whole was acknowledged as an adaptation of the plaintiff’s work even if hypothetical creative expressions in the defendant’s work, which were different from the creative expressions in the plaintiff’s work, were taken into account, and in terms of the overall comparison theory under which adaptation is often denied.

With respect to the summary of Judgment 4, some studies suggest that Judgment 4 was influenced by the fact that the defendant’s dependence on the plaintiff’s work and untrue statements of a representative of the defendant were acknowledged by the Court of the appeal case (Kodai Kimura “Goldfish wavering between ‘Idea’ and ‘Expression’ / Considerations regarding the Osaka High Court Decision on the Goldfish-filled Telephone Booth Case” Yahoo! News (https://news.yahoo.co.jp/articles/ daa625b2d2b9e275f325d8e287512168bebf76af).