JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
of case law makes it difficult to predict how courts will assess evidence or legal issues, such as causation in AI-related infringement cases. In principle, the user of generative AI tool is liable for infringement. However, the AI-Copyright Guidelines indicate that liability may extend to developers or service providers of generative AI systems in certain cases. For example, where an AI tool frequently gen- erates infringing outputs, or where a service provider is aware of a high likelihood that outputs will resemble existing copyrighted works but fails to take appropri- ate preventive measures, the likelihood increases that the developer or service provider will also be regarded as an infringer. 8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations In Japan, multiple forms of intellectual property pro- tection may apply to the same subject matter, and the choice depends on its nature and the right holder’s strategy. • Patents are preferred for technically significant inventions requiring strong, enforceable protection, particularly where reverse engineering is possible and infringement is relatively easy to detect. • By contrast, trade secret protection is suitable for confidential know-how that is difficult to reverse engineer, enabling protection without disclosure. • Where value lies mainly in aesthetic appearance, design rights are more appropriate. • Trade marks are used where a feature functions as a source identifier and renewable, long-term protection is desired. In practice, these protections are often combined to maximise effectiveness. 8.2 Cumulative and Overlapping Protection In Japan, cumulative protection of the same subject matter under multiple intellectual property regimes is, in principle, permitted, provided that the requirements for protection under each regime are independently satisfied. However, there are limits arising from the
purpose and requirements of each statutory regime. For example: • technical information disclosed through a patent application becomes publicly known and therefore will not be protected as a trade secret; • functional product configurations are generally less likely to receive trade mark-type protection; and • industrial designs are generally less likely to be protected under copyright law, given that they may be protected as designs under the Design Act. Where multiple rights are asserted, courts will gener- ally assess the protectability of the subject matter, the existence of infringement, applicable defences, and the scope of remedies separately for each cause of action. 8.3 Patents and Trade Secrets In Japan, confidential know-how or technical informa- tion may be protected as a trade secret at any stage of the patent process if it is kept secret, useful and not publicly known. Before filing, an invention can be maintained as a trade secret unless voluntarily disclosed. During prosecution, undisclosed information may continue to be protected. However, once a patent application is published (generally 18 months after filing), any infor- mation disclosed in the specification can no longer qualify as a trade secret. To balance protection, it is common to separate patentable elements from proprietary know-how, disclosing only what is necessary in the patent while retaining other technical information as trade secrets to preserve confidentiality. 8.4 Trade Marks, Trade Dress and Industrial Designs In Japan, trade marks, trade dress and industrial designs are protected under different legal frame- works and for different policy purposes. The Trade- mark Act protects signs that function as indicators of source or origin, while the Design Act protects the aesthetic aspects of articles, buildings and certain images. Trade dress is primarily protected under the UCPA, particularly where product packaging or other
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