Tokyo District Court issued a first judicial ruling for the book scanning service

December 17,2013

1. Factual background

In recent years, many people have become accustomed to reading or browsing electronic books and web pages on their mobile terminal such as a smartphone and a tablet PC in Japan. With the rapid spread of such mobile terminals, book scanning gradually becomes popular among users of mobile terminals. The act of book scanning involves a sequence of operations which users convert paper media such as physical books or magazines into digital media such as images or electronic books by using an image scanner in order to read or browse them on their mobile terminal. In Japan, the book scanning is usually called “Jisui”, a net slang in Japanese, which originally refers to cooking their own meal at home.

As prescribed in Article 30, Paragraph 1 of the Copyright Act in Japan, it shall be permissible for the user of a work that is the subject of a copyright (hereinafter referred to as a “work”) to reproduce the work for his/her personal use or family use or other equivalent uses within a limited scope (hereinafter referred to as “private use”). Thus, in accordance with the above article, book scanning such that a person scans his/her own books by an image scanner and creates digital copies for their personal use is legally allowed because it is regarded as “reproducing the work for private use”.

However, it was controversial whether book scanning carried out by people other than a book owner and his/her family on behalf of a book owner should be legally allowable or not. Since around 2011, major publishers and authors, such as novelists and cartoonists, have disagreed with an agency’s act such that an agency (hereinafter referred to as a “book scanning agency”) provides a service for book scanning (hereinafter referred to as a “book scanning service”) which comprises a step of creating a copy of paper media. They sent letters of warning to most major book scanning agencies which provide a book scanning service without approval of copyright holders. For those agencies who were continuing to scan books against the warning, they further filed some separate suits in Tokyo District Court for an injunction.

2. Tokyo District Court Ruling on the Book Scanning Service

Tokyo District Court issued a first judicial ruling for the book scanning service on September 30th, 2013. According to the ruling, the plaintiff’s demand for an injunction on the book scanning service against the defendants (two book scanning agencies and their representatives) was accepted. The court further issued a second ruling for the book scanning service in another case which is independent from the above case on October 30th, 2013. We here introduce the first ruling only as the second case is substantially the same as the first one. (Refer to Heisei 24 (wa) No.33525 “Case of Demand for Injunction and Damage Compensation”)

2.1 Points in Dispute

In this case, the main issue is whether the right to seek an injunction, which is prescribed in Article 112, Paragraph 1 of the Copyright Act in Japan, against two book scanning agencies and their representatives is allowable or not. Especially the following points were disputed in order to judge the main issue.

1) whether the defendants (two book scanning agencies and their representatives) present a risk of infringing the copyrights which are owned by plaintiffs (seven writers such as novelists and cartoonists).

(2) whether book scanning carried out by the defendants is legally regarded as the act of reproducing for private use.

2.2 Judgments of the Court
(1) Regarding the first point

Article 2, Paragraph 1, Item 15 of the Copyright Act in Japan defines “reproduction” as “the reproduction in a tangible form by means of printing, photography, photocopy, sound or visual recording or other methods”.

There can be a case of needing a sequence of acts comprising a plurality of steps for achieving the tangible reproduction. In such a case, a question of who primarily carried out the reproduction is raised when more than one person participated in creating a tangible result.

Regarding this question, it is reasonable to consider it from the viewpoint of who carried out the important act for achieving the reproduction. It is also reasonable that the important act and the persons who carried it out should be determined in the light of elements such as the target and way of the reproduction, the content and degree of participation in the reproduction in each individual case. (Refer to the Supreme Court Judgment on January 20, Heisei 23 (2011), Minshu Vol. 65, No. 1: 399)

In the above sequence of processes, the target of the reproduction is books which are owned by individuals and the way of the reproduction is reading characters and images, which were printed in their books, by using image scanners operated by the defendants to convert them into electronic files. Considering the content and degree of participation in the reproduction of the users and the defendants until completing the tangible reproduction by converting into the electronic files, individuals who send their books, which are the target of the reproduction, to the defendants are users, on the other hand, those who participate in the operation of converting the received books into electronic files are entirely the defendants whereas the users do not participate in any part of such operational process as above.

As stated above, the operation of converting books into electronic files should be regarded as the important act of the reproduction because the distinctive feature of the reproduction in this case is the conversion of books into electronic files. The important act is thus regarded as being carried out by not the users but the defendants. The court therefore judged that the defendants are recognized as those who primarily carried out the reproduction.

In light of the fact that the defendants are continuing the act of converting books into electronic files without obtaining an approval of copyright holders even after the plaintiffs’ warning, the court further judged that the defendants present the risk of infringing on the copyrights which are owned by the plaintiffs even if the defendants notice on their web pages that the book scanning service is not available for books for which the plaintiffs have the copyrights.

(2) Regarding the second point

As seen in the point (1) above, applying Article 30, Paragraph 1 of the Copyright Act is reasonable because the defendants’ arguments lack the premise that they are obviously not the users of the reproduction which they carried out.

Therefore, there is no legal ground for the defendants’ arguments.

3. Future Trends on the Book Scanning Service

In response to the above judicial ruling that the book scanning service is an infringement on the copyright, the number of the book scanning agencies which provide a book scanning service without approval of copyright holders has greatly decreased.

In the future, it will be imperative to make rules on obtaining permissions from copyright holders and returning part of the profits from book scanning service to copyright holders in order to provide the book scanning service legally.

Many copyright holders such as writers and publishers already established a liaison committee on March 2013 in order to prepare for a public discussion on such rules as above. Discussions at the liaison committee are expected to move forward rapidly in accordance with the certain standard judgments with regard to the book scanning service, which were obtained from the court. We would like to keep a close watch on future discussions at the committee.

Yoshimitsu KUDOH

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