What is a 'Japanese Work-Made-for-Hire'? Explaining Disputed Court Cases and Precedents

As explained in another article on our site, under the Japanese Copyright Law, when certain requirements are met, the copyright is attributed to the corporation that employs the creator, and that corporation is deemed the author. This is referred to as a “work made for hire” (or “corporate work”).

A work made for hire is established when the following requirements are met (Article 15, Paragraph 1 of the Japanese Copyright Law):

・The creation of the work is based on the initiative of a corporation or similar entity.
・The work is created by someone engaged in the business of the corporation or similar entity.
・The work is published under the name of the corporation or similar entity.
・There are no special provisions in contracts, work rules, or elsewhere.

Whether these requirements are met or not can often lead to a court not recognizing a work as a work made for hire. Let’s look at how each requirement is judged in actual court cases.

https://monolith.law/corporate/requirements-works-for-hire[ja]

When it was not recognized as “based on the intention of a corporation or similar entity”

There was a case where a corporation that provides management guidance and support to medical and welfare institutions claimed to have the copyright of a book published by a retired employee during their employment, and sought to stop its publication, sale, and distribution.

The book in question in this case was a manual for practical use, published by Urban Produce, a publishing company. The defendant, who was employed at the time, was asked to write it. The defendant wrote the entire book while asking several other employees to write chapters.

The court acknowledged that the work in question was a compilation of manuscripts written by the defendant during his employment with the plaintiff. However, the court examined whether the work could be said to have been created in the course of the defendant’s duties “based on the plaintiff’s intention”. The court considered the following points:

• The request to write the book in question was made directly to the defendant by Urban Produce
• Until the plaintiff became aware of the publication of the defendant’s book, no one within the plaintiff’s organization had been in contact with Urban Produce regarding the book
• No contract was made between the plaintiff and Urban Produce regarding the writing of the book
• No documents such as a work request form or a work acceptance report indicating that the plaintiff had received a request from Urban Produce to write the book were created within the plaintiff’s organization
• When the defendant resigned from the plaintiff, no decision was made within the plaintiff’s organization regarding the future handling of the writing of the book, and no writing work has been carried out since then
• The book was ultimately published under the defendant’s name, and the manuscript fee for the book was paid to the defendant individually by Urban Produce

Based on these points,

Given the above, it cannot be recognized that the writing of the book in question was requested by Urban Produce to the plaintiff. On the contrary, it is reasonable to recognize that the writing of the book was requested by Urban Produce to the defendant individually, and that each employee in charge of writing did so based on a personal request from the defendant. Therefore, it cannot be said that the work in question, which is a copyrighted work created in the process of writing the book, was created in the course of duties based on the plaintiff’s intention.

Tokyo District Court, September 30, 2010 (Heisei 22) Judgment

It was ruled that the requirement of “based on the intention of a corporation or similar entity” for a work made in the course of duties was not met, and it was not necessarily recognized as a work made in the course of duties. Therefore, it was not recognized as the plaintiff’s work made in the course of duties, and the claim was dismissed.

Just because the author is an employee of a corporation, it does not necessarily mean that the copyright of their work belongs to the corporation. When examining “based on the intention of a corporation or similar entity”, various circumstances are comprehensively considered, as in this case.

When Not Recognized as “Those Engaged in the Business of Corporations, etc.”

There have been cases where the judgment on “those engaged in the business of corporations, etc.” differed between the original trial and the appeal trial.

The appellant (plaintiff in the first instance), a freelance photographer who runs a photography studio as an individual, claimed damages for infringement of copyright (right of reproduction, right of transfer) and moral rights of the author (right of disclosure, right of attribution, right of integrity) on the photograph (the photograph in question) of a motorcycle running on a race track, which the appellant took and provided, and which the appellee (defendant in the first instance) provided its electronic data to Company B through Company A, and Company B posted it on its own website and posters without the appellant’s consent. The original trial dismissed the claim on the grounds that it was a work made in the course of duties, recognizing the existence of command and control by the defendant, and the appellant appealed.

In the appeal trial, the court, while citing the precedent that “whether or not one falls under ‘those engaged in the business of corporations, etc.’ should be judged by considering the actual situation of providing labor under the supervision and control of a corporation, etc., and whether or not the money paid by the corporation, etc. to that person can be evaluated as a consideration for the provision of labor, taking into account the specific circumstances such as the manner of business, the presence or absence of supervision and control, the amount of consideration and the method of payment” (Supreme Court of Japan, April 11, 2003),

Looking at this case from the above viewpoint, as mentioned above, the appellant is not an employee of the appellee, but a freelance photographer who runs a photography studio as an individual. In the photograph sales business at each race meeting, the appellant took photographs under his general direction, but as a professional photographer, he carried out the shooting… The appellant was essentially a professional photographer acting on the basis of a contract with the appellee, and it cannot be recognized that he was providing labor under the supervision and control of the appellee.

Intellectual Property High Court, December 24, 2009

The court denied the appellee’s claim that the work was a work made in the course of duties as “those engaged in the business of corporations, etc.”, and overturned the original judgment.

It is difficult to get a court to recognize that a person acting as a professional photographer was providing labor under the supervision and control of a corporation, so it can be said that a contract should have been exchanged in advance to clarify the ownership of the copyright.

When It Was Not Recognized as “Created in the Course of Duties”

The defendant, who was the director of a patent law firm, co-authored and published a book under the name of “XX Intellectual Property Research Institute” using a manuscript written by the plaintiff while working at the law firm. The plaintiff’s name was not displayed in the book, which led the plaintiff to claim that the defendant’s actions infringed upon his author’s moral rights (right to have his name displayed, right to maintain the integrity of his work, and right to disclose his work), and sought damages.

The court acknowledged that there was an employment relationship between the plaintiff and the defendant, as the plaintiff obtained his patent attorney qualification while working at the defendant’s patent law firm, received an annual salary from the defendant under a contract, and was engaged in the work of the patent law firm. However, when considering the circumstances leading to the writing of the manuscript, the court noted that:

• The authors were selected from those who voluntarily applied from among the staff of the patent law firm.
• The defendant instructed that the manuscript should be written outside of working hours at the patent law firm, and the manuscript in question was written outside of working hours in accordance with this instruction.
• There were no specific instructions from the defendant regarding the content of the manuscript.
• Several authors’ meetings were held, but they did not determine the specific content of the manuscript.

Based on these points, the court stated:

“The publication of the book in question is not included in the original business content of the patent law firm, and the writing of the manuscript for the book is not directly included in the tasks that the plaintiff usually handles at the patent law firm. Considering the circumstances under which the manuscript was written, the defendant’s involvement at that time, the format of the book, and the manner of its publication, it is impossible to recognize that the manuscript falls under the ‘works created in the course of duties’ as stipulated in Article 15, Paragraph 1 of the Copyright Law.”

Tokyo District Court, November 12, 2004 (Heisei 16) Judgment

The court did not recognize it as a work created in the course of duties and therefore not as a work made for hire, and acknowledged the infringement of the author’s moral right (right to have his name displayed) by the defendant against the plaintiff, who is the copyright holder. Just because the author is an employee of a corporation, it does not necessarily mean that the copyright of the work belongs to the corporation. When considering whether something is “created in the course of duties”, various circumstances are comprehensively considered.

When it was not recognized as “something to be published under the name of a corporation”

There was a case where the plaintiff, who was an employee of the defendant company, was dispatched to a training session sponsored by the defendant’s industrial association during his employment and served as a lecturer. The plaintiff created the material “Instrumentation Technician Maintenance Training for the Fiscal Year 2000 (Heisei 12)” and filed a lawsuit for copyright infringement.

The plaintiff claimed that after his resignation, the defendant company had the employee who succeeded the plaintiff as the lecturer of the above-mentioned training create the “Fiscal Year 2001 (Heisei 13) Material” and “Fiscal Year 2002 (Heisei 14) Material” by copying the Fiscal Year 2000 Material. The plaintiff argued that the defendant company infringed on the plaintiff’s copyright (reproduction right, dictation right) and moral rights of the author (right to claim authorship, right to maintain the integrity of the work) by distributing copies of each material to the participants in the training session. The plaintiff demanded payment of damages.

There was no dispute between the parties that the plaintiff created the Fiscal Year 2000 Material. However, the defendants argued that the plaintiff created it in the course of his duties as a person engaged in the business of the defendant company based on the intention of the defendant company, and that the author of the work as a work made in the course of duties is the defendant company. Therefore, the court examined the circumstances and content of the creation of the Fiscal Year 2000 Material.

The court acknowledged that the creation of the Fiscal Year 2000 Material was based on the intention of the defendant company and was created by the plaintiff in the course of his duties. The court then examined whether it was published under the name of the defendant company or should have been published, and decided whether the defendant company could be the author as a work made in the course of duties. However,

The format of the training material for the maintenance training is as described above. According to this, only the plaintiff’s name is displayed as the lecturer’s name in the Fiscal Year 2000 Material, and there is no display of the author’s name, or it should be interpreted as the author’s name of the defendant’s industrial association displayed on the cover of the training material collection. It cannot be recognized that it was published under the name of the defendant company. (Omitted) Therefore, it can be recognized that the Fiscal Year 2000 Material was created by the plaintiff, who is a person engaged in the business of the defendant company, based on the intention of the defendant company. However, it was not published under the name of the defendant company and it cannot be said that it should have been published. Therefore, it cannot be said that it is a work made in the course of the defendant company’s duties, and it cannot be recognized that the defendant company is the author.

Tokyo District Court, February 27, 2006 (Heisei 18) Judgment

The court ruled that it cannot be said that it is a work made in the course of the defendant company’s duties, and it cannot be recognized that the defendant company is the author, as it was not published under the name of the defendant company and it cannot be said that it should have been published.

Even if the creation of a work is “based on the intention of a corporation” and “created in the course of a person’s duties for a corporation”, the copyright of the work does not necessarily belong to the corporation. A work made in the course of duties is recognized only when all the factors mentioned at the beginning are met.

Summary

When a corporation or similar entity uses a work that was created under its financial burden, it is often considered necessary to centralize and clarify the rights to the work to ensure its smooth use. This is why the provision of ‘Japanese work-for-hire’ was adopted. However, it is essential to clarify the rights in advance.

Whether you can claim ‘Japanese work-for-hire’ or whether you are being claimed for ‘Japanese work-for-hire’ and have no choice but to accept it, is a difficult issue to judge. Please consult with an experienced attorney.