Japanese Supreme Court Ruling: Automatic Trimming of Images Could Give Rise to Infringement of Moral Rights in Japan

In a recent ruling on July 21, 2020, the Japanese Supreme Court held that users of Twitter infringed a photographer’s moral rights under Japanese Copyright Law when they retweeted an automatically trimmed version of his picture that had been originally posted on Twitter by another user without authorization (the Judgment of the Japanese Supreme Court, 3^rd Petty Bench, July 21, 2020 (Case No. 2018 (Ju) 1412)). Global social media platforms doing business in Japan may face the same issue if an automatic trimming function is built into their services.

Author’s Moral Rights

Under Japanese Copyright Law, moral rights, which aim to protect an author’s moral interest, are recognized in addition to copyright, which aims to protect an author’s economic interest. Unlike copyright, only the author owns moral rights, and moral rights are not transferable. Moral rights are comprised of (i) the right to make a work public, (ii) the right of attribution (i.e., the right to require that the author’s name be shown), and (iii) the right to integrity (i.e., the right not to have a work modified against the author’s will). Among these three, the right of attribution was at issue in the Japanese Supreme Court case.

Facts of the Case

A Japanese professional photographer, who is not a Twitter user, displayed some of his pictures on his website with an indication “all rights reserved” at the top left corner and his full name with a copyright symbol (©) at the bottom left corner of each picture as shown in the sample below. In 2014, a Twitter user copied one of the pictures, a photo of lilies of the valley, without obtaining any authorization from the photographer, uploaded it as a profile picture, and tweeted it. Some other Twitter users then retweeted the tweet. Due to Twitter’s automatic trimming function, the upper and lower parts of the picture were hidden from the version that appeared on the retweets, causing the photographer’s name to disappear¹. Although it was possible to view the full picture with a simple click, the unhappy photographer sought a judicial decision from the Tokyo District Court. The case was then heard by the Intellectual Property High Court and ended up in the Japanese Supreme Court².

Supreme Court Ruling

The Japanese Supreme Court held that the Twitter users infringed on the photographer’s right of attribution by retweeting the automatically trimmed version of his picture because:

1. the users caused the photographer’s name to become invisible through the use of Twitter’s system, regardless of whether they were actually aware of the automatic trimming function;
2. the users did not separately state the name of the photographer in other parts of their retweets; and
3. the photographer’s name would not be presented on the retweets unless the viewers click on the picture, but no evidence suggested that it was customary for the viewers to do so.

Implications

The decision rendered by the Japanese Supreme Court is controversial; concerns have been expressed that it could have a chilling effect on users in Japan who enjoy sharing information on Twitter. The impact of this ruling, however, is not confined to Twitter. Potentially, any social media platforms who provide services in Japan could face the same issue if their services allow for automatic trimming. Automatic trimming is a widely used feature of these systems in order to “resize” photographs to fit their respective formats. We anticipate that there will be an in-depth discussion of the implications of this Japanese Supreme Court judgment, including the necessity for any statutory amendments, in the near future. At this time, here are some preliminary observations:

1. Applicable Scope 

Geographically, the Japanese Supreme Court’s ruling may apply where the user’s act of posting an image on social media was done within the territory of Japan. Under Japanese conflict of laws rules, the dominant school of thought is that lex loci protectionis, the law of the country in which the infringing act was committed and the author sought protection, governs the question of infringement.

Substantively, the Supreme Court’s ruling may apply to an unauthorized sharing (i.e., inline linking) on social media of a trimmed version of an image that was originally posted on the same medium by a non-author or on a different medium by the author or a non-author. The supplemental opinion of one of the Supreme Court judges indicates that a retweet of an automatically trimmed version of a picture, the original version of which has been tweeted by the author, would not constitute an infringement of the right of attribution because the author agreed to the Twitter Terms of Service and thus agreed to the tweeted work being retweeted (in a trimmed format) by other users on Twitter. Although the Japanese Supreme Court was silent on other social media platforms, the reasoning suggests that other online platforms with similar terms of use and trimming functions may produce similar results.

2. Likelihood of Follow-On Lawsuits

Japan is far from a litigious society. In addition, the level of recoverable damages for moral rights infringement―namely, non-economic damages, such as mental suffering―is comparatively low in Japan, ranging from several hundred to several thousand dollars depending on the circumstances of the case. Punitive damages are not recognized by Japanese law. Hence, we do not anticipate a sudden surge in follow-on lawsuits seeking recovery of damages incurred by infringement of an author’s right of attribution through automatic trimming. Having said that, if, for instance, a photo went “viral” and there were a large number of potential defendants, the photographer might have a strong economic reason to pursue claims. Moreover, in view of the recent social attention to copyright infringement on the Internet triggered by widespread online piracy of Japanese cartoons (manga), there is a higher likelihood of legal action in cases where copyright is infringed in addition to moral rights (e.g., unauthorized copying and posting of an image on social media followed by sharing of an automatically trimmed version by the same user).

3. Implications for Social Media Platforms

This Supreme Court decision has caused anxiety among social media users in Japan as they realize that they are now exposed to unanticipated lawsuits. They may become less willing to share images on social media or may leave certain platforms unless the platforms offer some protection. In addition to such business implications, there is a potential legal implication for social media platforms. Whether a platform incorporating an automatic trimming function could be regarded as a joint or contributory infringer, separate from their users, is an open question as it was not raised in the Japanese Supreme Court case. Therefore, we cannot rule out the possibility of infringement actions against social media platforms, as opposed to their users, on the theory that the automatic trimming feature of the platforms contributed to the moral rights infringement.

4. Possible Measures

Considering the above, social media services who offer their platforms in Japan may want to consider some feasible options to prevent themselves and/or their Japanese users from being exposed to litigation risks. Suspending or disabling automatic trimming functions for images that are displayed through inline linking in Japan may be the safest option from a legal point of view, but it may not be realistic from a business or functional point of view in light of the nature of social media services. In that case, a combination of several measures, such as notice-and-takedown and pop-up warning for users in Japan (e.g., warning of possible moral rights infringement before sharing images, warning to insert the hidden author’s name in other parts of an image posting, or warning of the necessity to click on the trimmed images shared by other users to see them in full), would provide a certain level of protection to the platforms and their users. Indeed, according to the photographer’s counsel in the Japanese Supreme Court case, Twitter deleted the disputed photo after being notified of the infringement and thereby did not face a direct infringement action.

¹ The specifications for Twitter’s trimming function in 2014 may not be identical to those used today.

² The photographer did not file an infringement action against Twitter, Inc.; he sought from Twitter, Inc. disclosure of identifying information of its users who made the retweets in order to bring an infringement claim against the users.

This memorandum is a summary for general information and discussion only and may be considered an advertisement for certain purposes. It is not a full analysis of the matters presented, may not be relied upon as legal advice, and does not purport to represent the views of our clients or the Firm. David R. Eberhart, an O'Melveny partner licensed to practice law in California, Yoji Maeda, an O'Melveny partner licensed to practice law in Japan and New York, and Hiroko Nihei, an O'Melveny counsel licensed to practice law in Japan, contributed to the content of this newsletter. The views expressed in this newsletter are the views of the authors except as otherwise noted.