Pirated edition means an illegal, illicit movie or book, comic, music, or other copyrighted material that is manufactured or distributed in a form that violates the copyright without the consent of the copyright holder.

“Comic Village [Manga Mura]” or a movie, animation, music, etc., that is illegally uploaded and through such illegal site many people can download the works is a situation that has been a problem from before, as a violation of the rights of copyright holders.

As a direct measure against an illegal pirate site for this kind of infringement of a copyright, it is possible to take civil procedures for a cease and desist order or a claim for damages, and have the police, etc., be involved to assess a criminal penalty under criminal law procedures. However, in actual fact, these sites are established and operated overseas, or the infringer cannot be designated, or in order to designate the operator much work and cost is involved, or other problems, and there is a limit to the ability to use civil or criminal procedures.

Also, on the other hand, the person who illegally downloads contents that infringe a copyright from this kind of illegal site can also be arrested and subject to criminal penalties. Against this kind of illegal download the revised Copyright Act, enacted as of January 1, 2021, can be used in both civil and criminal cases.

In more detail, for example even if the use is “personal use”, in the case of a download of contents knowing that the copyrighted contents were illegally uploaded will be seen as a violation of copyright and can be subject to damages. In the case where an illegal download continuously or repeatedly is undertaken while knowing that the contents infringe copyrighted materials, is an infringement of copyright and can be penalized up to “two years of imprisonment or 2 million yen penalty or both”.

However, in actual fact, to chase down and designate each illegal download takes energy and time and cost and the damages to be gained are low and the criminal liability also needs to prove “continuously and/or repeatedly” violating downloads, and it is difficult to find a viable measure for action.

Under these conditions, a copyright holder has to repeatedly pop the gopher that sticks its head out in each illegal site and it is a high hurdle for copyright holders to handle.

Based on this kind of background, on December 21, 2021, the Tokyo District Court announced an epoch-making decision. This case involves a claim for damages by Ken Akamatsu, a comic artist, against a PR agency in Tokyo and its subsidiary for the act of paying advertising fees to the pirate site “Manga Mura [Town]” as an “assistance” to infringement of copyright, and the court allowed all the claims of Mr. Akamatsu and ordered payment of damages in the amount of JPY11,000,000, the full amount demanded.

A characteristic of many of this kind of pirate download sites is a dependence on advertising revenue for operation. Therefore, if the advertising revenue from PR agencies can be cut off as a source of revenue, the pirate download site will be lacking one important source of energy.

In this litigation, the PR agency asserted that it simply paid advertising revenue to the illegal download site and assured an advertising space and posted the advertisement, and did not do any acts of illegal download or upload or otherwise was involved in the site, but the decision found that “until Manga Mura is shut down there will be continued violations of copyright and this type of illegal situation can be said to be easily assisted by payment of advertising fees by defendants and it can be evaluated that this is “assistance””. In order to find damages it is necessary for the perpetrator (in this case, the PR agency being sued) to be “acting with malice or negligently” and in regard to this point also, negligence can be found from the fact that “the posting of an advertisement should be decided with due care after an investigation of whether Manga Mura has obtained use rights to the copyrighted materials being posted, but that care was neglected”.

By this type of decision, if persons who post advertisements on illegal download sites are non-existent, it will be a big step toward eradicating illegal download sites.

In the case where a product violating trademark rights is sold on an EC site, whether the EC site is responsible will be a similar situation.

In regard to this kind of case, when a similar product to “Chupa Chups” was put out in the Rakuten Market, the trademark holder sued Rakuten directly (IP High Court Decision of February 14, 2012). In this case, the responsibility of Rakuten was denied and the decision to obtain damages or a cease and desist order was based on the operator of the EC site who said “we are undertaking management and control of a service to allow or not allow a store based on an application for a store under our operating system and we receive from the store owner the basic store fee and system operating fee and if we know or should have known that the store owner is infringing a trademark right and there is sufficient evidence of that then we will delete the person from the website after a reasonable time”.

Therefore, in this kind of case, when the trademark holder notifies the EC site of the infringing trademark product as long as the site promptly investigates and undertakes measures the operator itself will not be legally responsible.

With this background, at the present time, sites like Rakuten and Amazon have prepared a form to receive information about intellectual property right infringement and when there is a notification will demand an explanation from the provider of the product and if the explanation is insufficient the product will be deleted and the account of the provider will be suspended or deleted. Recently, based on the above decisions, site managers are probably looking to lower their risk as a site operator and there are cases where the product is suspended or deleted and/or the account is suspended or deleted without any confirmation of the provider side and troubles are increasing.

Keeping the balance between protection of legitimate profits of the holder of an intellectual property right and stability of transactions and appropriate free competition is in actual fact rather difficult.

In any event, in the case where there is an infringement of rights and the copyright holder or trademark holder wants to protect its rights as a rights holder, it is incumbent to act quickly and the product provider (uploader) and purchaser (downloader) can be separately handled or the EC site or advertiser, or platform operator, etc., can be effectively undertaken or a combination of these seems to be an important factor.