Introduction
Intellectual property (IP) is one of the most valuable assets in modern business, yet protecting and leveraging it demands a high degree of specialized expertise. For startups, IP constitutes the very value of the enterprise; for technology companies, it is the wellspring of competitive advantage; and for companies pursuing overseas expansion, a strategy for securing rights across borders can determine success or failure.
Beyond the traditional IP areas of trademarks, patents, copyright, designs, and trade secrets, our firm advises on the issues unique to the digital age—the ownership of AI-generated works, the handling of training data in machine learning, and the management of open-source software licenses—grounded in both Japanese and U.S. legal systems.
In recent years, the rapid spread of generative AI has driven a sharp increase in new needs, such as establishing guidelines for corporate use of tools like ChatGPT, managing confidential information contained in prompts, and assessing copyright risk in AI outputs. Our firm works with clients on these cutting-edge issues to craft solutions that are practical and do not impede business momentum. An international perspective is indispensable here as well—the appropriate use of Article 30-4 of the Japanese Copyright Act (use for information analysis), comparison with the U.S. fair use doctrine, and the extraterritorial reach of the EU AI Act.
Areas of Practice
The matters our firm handles in the IP field are as follows.
1. Trademarks - Developing domestic trademark filing strategy (class selection, distinctiveness assessment, prior-mark searches) - Responding to trademark infringement (cease-and-desist letters, negotiation, litigation, customs seizures) - Brand portfolio management and support in implementing trademark watch services - Drafting and reviewing license and franchise agreements
2. Patents - Participating in invention-mining meetings and developing filing strategy - Patent infringement negotiations, invalidation trials, and correction trials - FRAND-terms negotiations concerning standard-essential patents (SEPs) - Designing invention-ownership clauses in joint research and development agreements
3. Copyright - Licensing agreements for software and content - Licensing of AI training datasets and rights clearance for outputs - Open-source license (GPL, Apache, MIT, etc.) compliance - Responding to copyright infringement claims and handling DMCA notices - Rights coordination for derivative and compilation works
4. Trade Secrets and Know-How - Building trade-secret management systems under the Unfair Competition Prevention Act - Responding to information taken by departing employees; litigation over breach of non-compete obligations - Drafting, negotiating, and establishing operational rules for NDAs (non-disclosure agreements)
5. Designs and Publicity Rights - Design registration strategy for product design - Agreements for the use of the likeness of influencers and public figures
How We Approach Typical Matters
The following illustrate the kinds of matters we handle and how we would approach them. They are not descriptions of past engagements or results.
Scenario 1: Copyright Risk Assessment for AI-Generated Content
When a media company considers a company-wide rollout of a generative AI tool for its editors, the questions that arise are the ownership of generated articles and images, the risk of similarity to third-party works, and exposure to infringement risk contained in the training data.
In such a matter we provide integrated support: (1) formulating internal usage guidelines; (2) offering a framework for assessing copyright eligibility based on the degree of human involvement; (3) designing an escalation flow for cases where third-party infringement comes to light; and (4) negotiating indemnity provisions in the vendor's terms of use. Our advice is informed by the scope and limits of Article 30-4 of the Japanese Copyright Act and by developments in U.S. fair use case law.
Scenario 2: Responding to Technical Information Taken by a Former Employee
Where a departed engineer is suspected of having joined a competitor and taken technical information relating to a proprietary manufacturing process, the need to preserve evidence and to decide quickly whether to seek injunctive relief arises.
In this situation we proceed, as circumstances require, by (1) directing an internal digital forensics investigation; (2) pursuing court procedures to preserve evidence; (3) issuing a cease-and-desist letter to the new employer; and (4) filing for a provisional injunction under the Unfair Competition Prevention Act. In parallel, we support the preventive side: reviewing trade-secret management rules, improving access-privilege controls, and revising departure undertakings.
How to Engage Us
- Initial Consultation (first 30 minutes free / available online): We listen to your business, your current challenges, and the goals you are aiming for. A confidentiality agreement can be concluded before the consultation.
- Estimate and Proposal: Based on the consultation, we present the scope of work, an anticipated timeline, and a fee estimate. We accommodate time-charge, per-matter, and retainer arrangements alike.
- Commencement and Progress Sharing: Once work begins, we provide regular progress reports and issue analysis, escalating matters requiring a decision at an early stage.
- Completion and Aftercare: Even after a matter concludes, we can provide continued support on related issues and matters requiring ongoing management (such as trademark renewals).
Contact
For consultations in the IP field, please reach out via our contact form. Through an initial hearing, we will consider the optimal approach together with you.