Reader R.L. sent us the following email:
I have a problem regarding misleading information on a home page, confusing labels and the use of my intellectual property rights on some products.
I am German and have worked for over 25 years at the same food company in Tokyo, until the factory was sold to a different company due to insolvency. The new company did not recognize my contract. They did not even contact me or speak with me at all.
This company is using my recipes. Even though they claim they have changed “something,” the main formulas are still mine. Even the factory manager admitted that they have changed the recipes only slightly.
This company/factory was warned by the former firm’s president, by an attorney-at-law and myself not to manufacture products using my recipes or similar formulas, but to use completely new ones. But this is not the case! I have various evidence that this company/ factory is using my know-how and technology and — in its main products — my recipes.
I am convinced claims can be filed, based on my intellectual property rights, because this new company/factory is using my know-how, technology and recipes. The main products sell very well around Japan, with the company producing several tons per day.
All of the original recipes are my personal ideas and creations, also in my handwriting.
The delinquency by this company has some similarities to the treatment of Shuji Nakamura, developer of the blue LED, during his employment with Nichia Corp. It also recalls the unfortunate end result of the fiasco over the 2020 Tokyo Olympic logo.
R.L. may be able to seek redress from the new company under the Patent Act or the Copyright Act.
As I understand that the former company’s president also warned the new firm about its behavior, my answer is based on the assumption that the new company has inherited no rights or obligations in relation to the production method, know-how, recipes, etc., of the food products from the previous firm.
Rights under the Patent Act
In order for the rights under the Patent Act to be exercised, the invention in question needs to be registered. If the reader is the registered patentee of the production method, he could seek an injunction preventing the production itself or claim damages against the new company.
However, even if the previous company is the registered patentee, not the reader, he still may have rights under the Patent Act. Specifically, if an employee who created an invention in the course of his/her work duty has reached some form of understanding that such patents are owned by the employer, the employee still has a right to receive reasonable compensation.
Provided the invention in question satisfies the criteria to be considered an “employee invention” under the Patent Act, the reader may be able to seek payment from the company that was his employer at the time the invention was first envisioned. In the LED case referred to by the reader, the main issue in dispute was the amount of money payable.
Rights under the Copyright Act
The Copyright Act protects works rather than the ideas underlying works. For example, Olympic emblems are protected under the Copyright Act, since they are representations of things. Production methods and know-how, on the other hand, are ideas and not representations, and are therefore protected under the aforementioned Patent Act.
A handwritten recipe itself may constitute a representation that is protectable under the Copyright Act, if the manner of representation is recognized to be creative. But even in such a case, the production method described in that recipe would not be protected under the Copyright Act.
As mentioned earlier, the reader may seek an injunction preventing production or claim damages against the new company only if the reader is the registered patentee of the production method.
Rights of the former company
Finally, I would briefly like to mention the rights of the previous company to claim against the new firm. If you can gain the cooperation of your former employer, the following possibilities may be worth considering.
If the previous company is the registered patentee, it may file a claim based on its patent right. In addition, if the production method constitutes a trade secret as defined under the Unfair Competition Prevention Act, and if the requirements for wrongful acquisition or wrongful use of that secret are satisfied, the previous company may seek an injunction preventing production and/or claim damages against the new company.
Furthermore, if the previous company and the new company have entered into any agreement that the latter has breached, the former may claim damages for breach of contract against the new firm.
Yuko Yamashita is an attorney with the Foreign nationals and International Service Section at Tokyo Public Law Office, which handles a wide range of cases involving foreigners in the Tokyo area (www.t-pblo.jp/fiss; 03-6809-6200). FISS lawyers address readers’ queries once a month. Your questions and other comments: email@example.com