I know Professor Festinger is probably hoping that someone will do an interpretive IP dance, and while I won’t be doing that here, this gets close!
My contribution here relates to copyright and trademark issues in the creation of a hybrid kata based on two different styles of karate. For those not in the know, a kata is a pre-arranged sequence of events that is meant to train the karateka (student/practitioner) how to focus and perfect their technique through combat with imagined foes. To the uninitiated, it might look a bit like someone doing a violent (not so interpretive) dance by themselves.
I have been a practitioner of karate since I was about 5 years old and hold a second-degree black belt in Wado-Ryu karate. Recently, my daughter became interested in karate, much to my great enjoyment, but unfortunately, there is no Wado-Ryu karate dojo in Vancouver. As much as I would like to start up a dojo of my own someday, being a law student with children isn’t especially conducive to starting up new ventures of this type. Having canvassed the various dojos in Vancouver, we opted to go to the local Kyokushin karate club.
While Wado-Ryu and Kyokushin are both styles of karate, with many similarities, they also have some notable differences, particularly in their katas.
In watching my daughter’s classes, I noticed that many of the beginner katas of Kyokushin are very similar, but not identical, to the equivalent katas (often with the same names) from Wado-Ryu. This is not surprising given the evolution of the various styles of karate, and the common origins of a number of the styles from older Chinese martial arts like jujitsu.
For more advanced katas, particularly at the black belt level, the similarities between the katas diminish substantially. This made me wonder what a hybrid kata would look like that had elements of both styles, and what the intellectual property implications would be for such a creation.
One kata that I always enjoyed performing from Wado-Ryu is called Seishan. The traditional execution of this kata in Wado-Ryu karate is shown in the link below.
Wado Ryu Seishan Kata
I thought it would be fun to spice up this kata by replacing the first sequence of slow focused blocks and punches with a more intricate series of blocks derived from movements in Kyokushin katas and basic techniques, with the remainder of the kata largely being the same as the Wado-Ryu version with some minor variations.
I have performed this version, which I have dubbed Hybrid-Shan below.
Hybrid-Shan Kata
I will now consider the intellectual property implications of this creation. First, I will examine if there are any potential copyright infringements in this new creation. Second, I will look at possible defenses to any potential infringements. Third, I will address whether copyright will subsist in this new creation. Finally, I will examine a potential trademark issue associated with the video of Hybrid-Shan.
1. Are there potential copyright infringements in the new creation?
While we haven’t discussed Japanese IP law, a brief comparative analysis suggests that many of the provisions are very similar to those in Canada, which is not surprising given that Japan and Canada are both signatories to the Berne Convention, the Geneva Universal Copyright Convention (UCC), the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), and the World Intellectual Property Organization (WIPO) Copyright Treaty.
The various copyright provisions in Japan can be found at the link below:
While it isn’t clear from the Copyright Law of Japan (CLJ), it is likely that individual movements in karate (blocks, kicks, punches, etc.) are not copyrightable, as we have seen in class with dance moves and sports techniques, but the arrangement of them into a sequence will be captured by copyright under Article 10(1)(iii) as a work of choreography or pantomime.
While the provenance of the katas in both styles of karate is not definitive, it appears that the Wado-Ryu kata Seishan was created by Hironori Ōhtsuka, the founder of Wado-Ryu karate, who died in 1982.
In the absence of other evidence, it can also be assumed that the Kyokushin katas were created by the style’s founder Masutatsu Ōyama, who died in 1994.
Article 51(1) of the CLJ provides that copyright will subsist “for a period of 70 years after the death of the author” of a work, which means that the copyright of the two source katas should last until the middle of the 21st century.
Article 21 of the CLJ provides that the “author of a work has the exclusive right to reproduce the work.” While there is no clear indication regarding whether reproduction is in whole or in part, and there is no discussion of a “substantial taking” analogous to Canadian Copyright law, I will assume for this analysis that using a portion of a work through incorporation into another work will constitute reproduction.
Moral rights also appear to play a substantial role in Japanese copyright law, and Article 20(1) of the CLJ describes the right to integrity an author of a work possesses in their work, where “the author of a work has the right to preserve the integrity of [the] work … and … not … be made to suffer any alteration, cut, or other modification … contrary to the author’s intention.”
As with Canadian copyright law, moral rights are not transferrable, and upon the death of the author, the rights expire. Given that the presumed owners of the copyright in the two source katas have passed away, moral rights will not be available here.
Based on the liberal use of sequences of movements from katas from both Wado-Ryu and Kyokushin in the creation of the new kata Hybrid-Shan, this new kata constitutes a prima facie infringement of the copyright of both source katas.
2. What defences are available to these infringements?
While no strict equivalent of fair dealing exists in Japanese copyright law, there are a variety of specific exceptions that give a similar result to the fair dealing exception to copyright infringement in Canada that was designed to balance the rights of owners and users, as first described in Théberge v. Galerie d’Art du Petit Champlain Inc. 2002 SCC 34. The apposite provision of the CLJ can be found in Article 35(1) where “a person … taking classes at [an] … educational institution … may reproduce a work that has been made public to the extent that is found to be necessary if the purpose of doing so is use in the course of those classes … [so long as] the action would [not] unreasonably prejudice the interests of the copyright owner in light of the nature or purpose of the work, the number of copies that would be made, or the circumstances of its reproduction.”
There is no financial motive for the creation of the Hybrid-Shan kata, and this exercise has been undertaken pursuant to a university course to illustrate concepts in intellectual property. One copy of the video recorded of this work has been uploaded to the a private YouTube channel and linked to the course website. While this video can theoretically be viewed by the entire world, it will likely have a very limited viewership, contained primarily to students and instructors of the intellectual property course that the video was created for.
Based on the criteria and the circumstances of the creation of the Hybrid-Shan kata and the video recording of it for the purposes of a course at an educational institution, it is likely that the infringement will be defensible through the application of Article 35(1) of the CLJ.
3. Does copyright subsist in the Hybrid-Shan kata?
The Copyright Act (R.S.C., 1985, c. C-42) of Canada can be found at the following link.
The requirements for subsistence of copyright are listed in section 5(1) of the Copyright Act, where copyright shall subsist in Canada … “in every original literary, dramatic, musical and artistic work if …”
(a) “ … the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country[.]”
As I am a citizen of Canada, and Canada is a signatory to the intellectual property treaties listed above, copyright will subsist in my work if it is deemed to be “original.”
As set out by Chief Justice McLachlin (as she then was) in CCH Canadian Ltd. v. Law Society of Upper Canada 2004 SCC 13, the determination of originality is not based on a measure of creativity, regardless of how spectacularly creative my work might be, but rather it is an assessment of whether there was a measure of skill and judgement involved in the creation of this work.
As we have seen with Alfonso Ribeiro, it is not possible to copyright an individual dance move like “the Carlton,” but it is possible to copyright choreography, which is more in keeping with the nature of a kata, which is a series of movements organized in a particular way.
Carlton Dance Copyright Denied
The Hybrid-Shan kata, when viewed as a work of choreography, uses common karate techniques that have been combined into a unique sequence. The selection and execution of these moves, and the slight variations of them, are the product of years of training and practice, and considering the low bar required for originality, would almost certainly qualify as “original.”
As we saw in Winkler v Hendley 2021 FC 498, copyright will not subsist in a fact or idea, but rather in the expression of that fact of idea. The Hybrid-Shan kata is a clear expression of an idea for a new kata that has been put into a tangible form on video.
While the Copyright Act does not discuss fixation, it is understood in Canadian law that for copyright to subsist in a work it must be fixed in some way, as highlighted by Gould Estate v. Stoddard Publishing Co. (1996), 30 OR (3d) 520, where “oral utterances” did not have copyright protection, but a written transcript or video of these words would. This continues to remain a challenge for various works, particularly those of Indigenous peoples, where oral traditions are not especially amenable to such fixation requirements. In the case of the Hybrid-Shan kata, the video recording will clearly meet the fixation requirement.
Given the fact that the residence requirement has been met, along with the work likely being “original” and fixed in a relatively permanent form, it is likely that copyright will subsist in the Hybrid-Shan kata.
4. Are there any trademark issues in the Hybrid-Shan kata video?
In the video, the trademarked logo of Kyokushin Canada can be seen on the left sleeve of my gi (uniform). This gi was purchased from Kyokushin Canada with the logo already on the gi. Any time a trademark is used, it is worth asking whether there is inappropriate usage either through the common law tort of passing off, or through the Trademarks Act (R.S.C., 1985, c. T-13) in sections 7(b) and (c), or the various offences listed in section 51.01.
The principal concern associated with these various provisions of the Trademarks Act and the common law tort of passing off is confusion in the marketplace. Here I am simply performing a kata while wearing a gi, which bears the trademarked logo of Kyokushin Canada. I am not trying to create or promote my own style of karate while using the goodwill established in the Kyokushin Canada name and logo. There is no confusion here, and no actual or potential damages to Kyokushin Canada. As such, there is no concern here that I may be passing off either at common law or per the Trademarks Act, nor am I infringing on Kyokushin Canada’s registered trademark per the statutory offences listed in section 51.01.
Thank you for a fun course, and thank you to my daughter for filming the kata!
Communications Law