IP High Court Decision, Heisei 22 (Ne) No. 10076, Rakuten case

(1) In this litigation, a trademark holder brought a trademark infringement litigation against Rakuten K.K., the operator of the online shopping mall named “Rakuten Ichiba”, claiming that Rakuten's operation of the online mall constituted an infringement of the plaintiff's trademark rights.  Rakuten Ichiba is an Internet shopping mall where retailers can establish virtual stores.  Some of such virtual stores sold products that infringe the trademark rights of the trademark owner.

(2) Rakuten argued that (i) the seller of the infringing goods was each of the retailers who established a virtual store in Rakuten Ichiba, not Rakuten, and (ii) the role of Rakuten was merely to provide retailers with opportunity to make deals with customers.  In response, the trademark owner argued that, considering the involvement of Rakuten in the sale of the goods, Rakuten should be deemed to have sold the goods at least together with the retailer.  

(3) The Intellectual Property High Court ("IP High Court") ruled in favor of Rakuten stating as follows: "An operator of web pages who, not only puts in place certain environment that enables retailers to establish web pages but also provides the operating systems, controls or manages establishment, maintenance and deletion of each virtual store, and obtains a benefit by requiring a store opening fee and a usage fee from the retailers, should be liable for infringement of trademark rights when it became aware of or there were reasonable grounds to find that the operator could become aware of the trademark infringement by the retailers; unless the operator deleted the web page constituting the infringement within a reasonable period after it became or could become aware of the infringement." In this case, the IP High Court concluded that, since Rakuten deleted the web pages within a reasonable period -- eight days from the time Rakuten became aware of the trademark infringement -- Rakuten was not liable for trademark infringement. Although this is a trademark infringement case, the Supreme Court's discussion concerning the online store's liability for user's IP infringement would similarly apply to copyright infringement and intermediary liability.