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Legal Update

Defending Ultraman in Thailand

11 August 2008
Mayer Brown JSM Legal Update


In February 2008 the Thai Supreme Court resolved a prolonged legal dispute involving the copyright of one of Asia's best loved superheroes, Ultraman (Case 7457/2550). The Supreme Court ruled in favor of plaintiff Tsuburaya Productions of Japan (the "plaintiff"), ending its ten-year battle against defendants Tsuburaya Chaiyo Co., Ltd. and Sampote Saengduenchai ("Mr. Sampote"). 

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1.    The plaintiff, a Japanese company, created the Ultraman figure and began broadcasting it in Japan in 1966. Since then, the superhero has inspired a number of films, books, children's toys, etc.
2.    In December 1997, the plaintiff filed a complaint with the Central Intellectual Property and International Trade Court, alleging that the defendants had jointly infringed its copyright by producing and distributing Ultraman works without its permission. The plaintiff claimed that as the copyright owner, its rights should be recognized and protected in Thailand pursuant to the Berne Convention, to which Thailand and Japan are both signatories.
       Article 5(1) of the Berne Convention provides that, "Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention".
3.    The defendants denied the allegations and filed counter claims against the complaint arguing that Mr. Sampote was the co-inventor of Ultraman and had been granted the exclusive right to exploit Ultraman works outside Japan by a Licence Granting Agreement executed on 4 March 1976 (the "Agreement") which was purportedly signed by Mr. Noboru Tsuburaya, a director of plaintiff. 
4.    On 4 April 2000, the Central Intellectual Property and International Trade Court handed down a judgment dismissing plaintiff's complaint and ruled that the Agreement was valid. It also ruled to confirm the right of the defendants to all Ultraman works outside Japan.
5.    The plaintiff appealed the judgment to the Supreme Court.
On 5 February 2008 the Supreme Court ruled as follows:
1.    Mr. Sampote was not a co-inventor of Ultraman. He had given some ideas to its creator, Mr. Eiji Tsuburaya, founder and director of the plaintiff,  but he had contributed neither money nor effort to the actual creation.
2.    The Supreme Court found the validity of the Agreement questionable considering:
2.1 Although the Agreement was supposedly executed in March 1976, defendants only pursued their rights under the Agreement in May 1996, one year after the death of Mr. Noburo Tsuburaya, and  20 years after the execution date. The Supreme Court found that this was an unreasonable length of time to wait for licensee of copyrighted works to capitalise on its rights to gain quick returns from the investment;

2.2     The Agreement granted the defendants various rights in any country outside Japan, however, the defendants did not exercise their rights in a manner confirming that they were the copyright owner or exclusive licensee under the Agreement;
2.3     The plaintiff had applied to register the Ultraman trademark in Thailand on 20 August 1997 (before filing the complaint) and had made similar applications in many other countries including Japan, Australia and the United States of America. In contrast, the defendants had never applied for trademark registration in any country; 
2.4     Mr. Sampote had changed the Thai translation of the term "Licence Granting Agreement" three times, each time with a different meaning;
2.5     Terms and wording in the Agreement were very vague. It would not be reasonable for the plaintiff to have agreed to such terms as it would have amounted to assigning future Ultraman works to the defendants for an indefinite period and without remuneration;
2.6     There were no minutes of a board of directors meeting or written consent from the other shareholders giving permission to Mr. Noboru Tsuburaya, who only held 15.5% shares in Tsuburaya Productions, to enter into and sign the Agreement.
These suspicious elements surrounding the Agreement prompted a verification of Mr. Noboru Tsuburaya's signature. The Agreement was examined by the Scientific Detection Division of the Royal Thai Police which eventually declared the signature a forgery, thus invalidating the Agreement.  
The Supreme Court ruled that the plaintiff is the sole copyright owner of all Ultraman works. The Court ordered the defendants to stop profiteering from Ultraman works within 30 days from the date of the reading of the Supreme Court judgment and to pay the plaintiff THB 10.7 million plus interest of 7.5 percent per annum from the date of the filing of the complaint (16 December 1997) until payment is made in full. The Supreme Court also ordered the defendants to reimburse the court fees paid by the plaintiff, plus attorney's fees of THB 80,000.
This case serves as a reminder of the need for the owners to take active steps to protect their intellectual property rights. Such steps may include:
(a)     Registering trademarks or patents with the Department of Intellectual Property, Ministry of Commerce to confirm and fully protect ownership rights;
(b)     Notifying the Department of Intellectual Property, Ministry of Commerce of copyright ownership. Whilst this does not provide full protection, it does provide strong evidence of such ownership should a dispute arise.
(c)     Exercising rights to copyright and use of the same within a reasonable time so as to reduce the possibility of dispute.
For further information, please contact:
Apichart Phankeasorn ( )
Anurag Ramanat ( )
Sutthikorn Thepweerakul ( )

Learn more about our Bangkok office and Intellectual Property practice.

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