JAPAN Law and Practice Contributed by: Miki Goto, Ryo Murakami and Akihito Ishii, Anderson Mori & Tomotsune
of the rights do not exactly overlap, there may be cases where a single act may trigger trade secret infringement and infringement on other intellectual property rights at the same time. For instance, copying a customer list to obtain it unlawfully may constitute both an infringement of the copyright and trade secrets. In such instance the plaintiff may assert claims based on trade secrets and claims based on copyrights in combination. 1.13 Other Legal Theories As described in 1.4 Elements of Trade Secret Protection , owners may also rely on general tort, contractual obligations or unjust enrichment to seek remedies against misappropriation of trade secrets. As described in 2.2 Employee Relationships , employees generally owe a contractual obliga - tion to their employer to keep their business secrets confidential. 1.14 Criminal Liability Criminal penalties are imposed on infringers of trade secrets only where there is wilful infringe - ment, and where additional elements such as purpose of wrongful gain or causing harm to the owner, a violation of the duty of information man- agement, or an act of fraud exists. Domestic misappropriation subject to criminal penalties is punishable by imprisonment of up to ten years and/or a fine of up to JPY20 million. Misappropriation with international aspects, such as unlawful acquisition of trade secrets for use outside Japan or unlawful disclosure of trade secrets to a person outside Japan, are punishable by imprisonment of up to ten years and/or a fine of up to JPY30 million.
Further, when such misappropriation was done by an employee in relation to the business of its employer, the employer who is a corporation shall be subject to a fine of up to JPY50 mil - lion for domestic misappropriation and JPY100 million for international misappropriation (if the employer is an individual, the employer shall be subject to the same fines as the actor). 1.15 Extraterritoriality With respect to damages and injunction claims based on trade secret misappropriation, there are several approaches to the applicability of the UCPA on extraterritorial acts. Several court deci - sions have adopted the approach to determine the applicability of the UCPA to extraterritorial acts pursuant to the general conflict of laws rule regarding torts. According to such rule, the laws of Japan shall apply if the result of the wrongful act occurred in Japan, or, if the occurrence of the result in Japan was ordinarily unforeseeable, if the wrongful act was committed in Japan. Under this approach, the UCPA may apply to extrater - ritorial acts of misappropriation if the result of the misappropriation occurred in Japan. With respect to the criminal aspects of trade secret misappropriation, the UCPA specifi - cally sets forth criminal sanctions against cer - tain extraterritorial acts of misappropriation of trade secrets held by an owner doing business in Japan.
2. Misappropriation of Trade Secrets
2.1 The Definition of Misappropriation Misappropriation of trade secrets is a part of the broader concept of “unfair competition” defined in the UCPA. Unfair competition involving trade secrets include the following categories.
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