Legal Victories for Tsuburaya Productions
Court Rules against Thailand’s Chaiyo Productions in Ultraman Case
Author: Keith Aiken and Bob Johnson
Source: Yahoo! Japan, The Nation, Yale Global, Asahi, Asiaweek, Ushiki International Patent Office, Bangkok Post, Teleport City, 4DK, various
Special thanks to Oki Miyano, James Ballard, and John Cassidy
On June 14, Sampote Thianthong of Pro-Link, the official licensing agent for Ultraman in Thailand, announced that Thai department stores and retailers can no longer display or sell Ultraman products licensed by Chaiyo Productions Co., Ltd. The news comes in the wake of an International Property Court ruling in favor of Ultraman’s creators and owner, Tsuburaya Productions Co., Ltd. of Japan (TPC), and marks the latest in a string of defeats for the Thai company Chaiyo and its chairman Sompote Saengduenchai, who has long claimed exclusive worldwide rights outside of Japan to all Ultraman characters and trademarks.
Unbeknownst to many Ultraman fans around the world, for more than a decade Tsuburaya Productions and Chaiyo Productions have been waging a legal battle over the rights to several of TPC’s programs and characters. The case has been heard in courtrooms in Japan, China, and Thailand, with the results determining how Ultraman and related Tsuburaya properties will be licensed, marketed, and distributed outside of Japan.
BEFORE THE STORM
The dispute had it beginnings with the birth of Tsuburaya Productions in 1963. Following years directing the special effects for films like THE WAR AT SEA FROM HAWAII TO MALAY (Hawai-Mare Okikaisen, 1942) and GODZILLA (Gojira, 1954), Eiji Tsuburaya established his own company to supply visual effects to Toho and other Japanese studios. Tsuburaya also realized the growing potential of the television market, and began talks with the networks about creating new science fiction programs.
After a few false starts such as the unproduced program WOO (Wuu), Tsuburaya Pro broke into television in 1966 with the hit series ULTRA Q (Urutora Kyu) and ULTRAMAN (Urutoraman) on the Tokyo Broadcasting System, and the popular kids’ show PLEASANT BEAST BOOSKA (Kaiju Busuka) on the Nippon Television Network. The third Ultra series, ULTRA SEVEN (Urutora Sebun) followed in 1967, and the remainder of the decade saw the likes of MIGHTY JACK (Maitei Jyakku, 1968), OPERATION: MYSTERY (Kaiki Daisakusen, 1968), and FIGHT! MIGHTY JACK (Tatakae! Maitei Jyakku, 1968).
Eiji Tsuburaya died on January 25, 1970, and his eldest son Hajime took charge of Tsuburaya Productions. The company continued the Ultraman franchise with RETURN OF ULTRAMAN (Kaettekita Urutoraman, 1971), ULTRAMAN ACE (Urutoraman Esu, 1972), and ULTRAMAN TARO (Urutoraman Taro, 1973), and also produced unrelated series such as MIRROR MAN (Miraaman, 1971), EMERGENCY 10:40 10:10 (Kinkyu Shirei 10-4 10-10, 1972), and JAMBORG ACE (Janbogu Esu, 1973).
On February 9, 1973 Hajime Tsuburaya passed away at the age of 41, and the reins of TPC went to Eiji’s second son, Noboru. Later that same year, Noboru Tsuburaya made a licensing deal with filmmaker/businessman Sompote Saengduenchai, who a decade before had received a Thai government scholarship to study cinematography in Japan and had visited with Eiji Tsuburaya at Toho Studios. Upon his return to Thailand, Saengduenchai founded Chaiyo Productions, naming the company after a popular word for celebration and victory. One of Chiayo’s earliest productions was the 1971 film TAH TIEN (“Flattened Dock”, a reference to a Thai folktale about the Chao Phraya river), which featured Jang the Thai Giant (known as Yuk Wud Jaeng or Yakwatchaeng in Thailand) and Yuk Wud Pho, two living statues based on the designs of traditional Thai demons.
The 1973 agreement between Tsuburaya Pro and Chaiyo gave the latter company television broadcast rights in Thailand for the first six Ultra series plus JAMBORG ACE, and led to the co-production of two feature films in 1974 that partnered TPC creations with Chaiyo’s own characters. First up was JAMBORG ACE AND GIANT (Janbogu Esu to Jaianto)— known in Thailand as GIANT AND JUMBO A (Yuk Wud Jaeng pob Jambo A)— in which Jang and Jamborg Ace team up to prevent Jungkol, the Empress of Mars, from stealing a magical diamond called the Pet Suriyakart. In the second film, SIX ULTRA BROTHERS VS THE MONSTER ARMY (Urutora Roku Kyodai tai Kaiju Gundan)— Thai title: HANUMAN VS SEVEN ULTRAMAN (Hanuman pob Jed Yod Ma-nud)— Ultraman, Zoffy, Ultra Seven, Ultraman Jack, Ultraman Ace, and Ultraman Taro assist Hanuman, the White Monkey God of Hindu mythology, in defeating a menagerie of Ultramonsters.
SIGNS OF TROUBLE
Not long after making SIX ULTRA BROTHERS VS THE MONSTER ARMY, Chaiyo Productions approached Toei Co., Ltd. about teaming Hanuman with the Japanese company’s Masked Rider (Kamen Raidaa) characters. Toei turned them down, but Chaiyo went ahead and made the movie HANUMAN AND THE FIVE RIDERS (Hanuman pob Har Aimoddaeng). Much of the footage in the Thai film was lifted without permission from Toei’s own Masked Rider film FIVE RIDERS VS KING DARK (Go-nin Raidaa tai Kingu Daaku, 1974).
Following his official team-up with the Ultramen and his not-so-legit meeting with the Masked Riders, Hanuman would return to the big screen without Japanese co-stars in THE NOBLE WAR (Suk Kumpakan, 1984). Chaiyo Productions would also create a string of strange, low-budget movies such as COMPUTER SUPERMAN (Yod Manut Computer, 1977), CROCODILE (Chorake, 1979), and the utterly bizarre PRINCE ROT AND PRINCESS MERI (Phra Rot-Meri, 1981) and MAGIC LIZARD (King-ka Kayasit, 1985). Some of these films were promoted and sold internationally by Spectacular Trading Company, Ltd. (aka Spectacular International Films), an Italian production and distribution company run by low-budget exploitation filmmaker Dick Randall (THE REAL BRUCE LEE, EMANUELE 3).
In 1985, Spectacular and Chaiyo co-produced SPACE WARRIORS 2000, an utterly nonsensical movie primarily comprised of footage lifted from SIX ULTRA BROTHERS VS THE MONSTER ARMY and Tsuburaya Pro titles such as the compilation film ULTRAMAN ZOFFY (Urutoraman Zofui, 1984). The Ultraman material had been poorly dubbed into English and combined with newly shot scenes of a supposedly American family played by terrible British actors (while born in America, Randall had lived in London until his death in 1996). All of this was done without the knowledge of Tsuburaya Productions, who had not authorized the use of Ultraman or materials from their films and shows for SPACE WARRIORS 2000. Sompote Saengduenchai was credited as the film’s co-director under the somewhat anglicized name “Sompote Sands”.
US rights to SPACE WARRIORS 2000 were acquired by Cinema Shares International, a small US distributor that had earlier released Toho movies like GODZILLA VS MEGALON and GODZILLA VS THE COSMIC MONSTER to theaters. Cinema Shares syndicated the film to American television, and TPC discovered that the Ultraman footage had been used without their approval. Not long after Tsuburaya learned of SPACE WARRIORS 2000, the movie was pulled from circulation and has not been seen since.
Unfortunately, Chaiyo’s actions with HANUMAN AND THE FIVE RIDERS and SPACE WARRIORS 2000 were only a taste of things to come.
Noboru Tsuburaya passed away on June 11, 1995. Shortly after Tsuburaya’s death, Sompote Saengduenchai approached Noboru’s son Kazuo Tsuburaya, who had just been named CEO of Tsuburaya Productions. Saengduenchai presented him with a contract, allegedly issued and signed by Noboru Tsuburaya in 1976, granting Chaiyo the exclusive international copyright to the two Tsuburaya/Chaiyo films, the JAMBORG ACE television series, and all Ultraman shows and characters from ULTRA Q through ULTRAMAN TARO.
According to Saengduenchai, in 1973 Noboru Tsuburaya told him that TPC was having financial problems and he was going to sell the company. “I couldn’t let the company down and suggested we make a movie together. I lent Noboru 2.02 million baht (approximately $45,000 US) to produce GIANT AND JUMBO A,” Saengduenchai explained. He also claimed to have loaned Tsuburaya another Bt 44 million ($900,000) the following year for HANUMAN AND THE SEVEN ULTRAMEN, and that Noboru had written the 1976 contract when he was unable to repay the money. “He had borrowed 200 million yen and could not pay it back then, so he granted my company the rights.”
Tsuburaya Productions was extremely skeptical of the Chaiyo contract, considering that Noboru Tsuburaya had never mentioned it to anyone at the company in the two decades since the document was allegedly written. They were also troubled that Sompote Saengduenchai waited 20 years to come forth with his claim when during that time both ULTRAMAN and ULTRA SEVEN were shown on US television, other series were sold to countries in Latin America and Asia, and TPC was routinely advertising the shows in Variety and other international media and industry publications. If those shows were truly owned by Chaiyo Productions, why didn’t they ever contact Tsuburaya Pro to complain about these contract violations? It didn’t go unnoticed that Saengduenchai said absolutely nothing to TPC until Noboru Tsuburaya, the one person who could have disputed Chaiyo’s claims, was no longer around to defend his company’s rights.
In addition, the contract itself contains a number of glaring errors including incorrect names for both the company and several series, multiple misspellings, and other typos:
1. The very first line of text lists the company as “Tsuburaya prod. and Enterprise”, a name it has never done business under. The fact that “productions” was abbreviated and rendered with a lower case “p” was a mistake that no one at Tsuburaya Productions would have allowed in a legal document. Even the abbreviation is wrong; the company sometimes goes by the shortened “Tsuburaya Pro” or “TPC”, not “Tsuburaya prod.”
2. ULTRA Q is incorrectly named “ULTRAMAN 1: ULTRA Q”.
3. ULTRAMAN is called “ULTRAMAN 2”.
4. ULTRA SEVEN is called “ULTRAMAN SEVEN”.
5. ULTRA SEVEN had 49 episodes. The contract claims there are 50.
6. RETURN OF ULTRAMAN is incorrectly called “RETURN ULTRAMAN”
7. ULTRAMAN ACE had 52 episodes, but the contract states there were 51.
8. ULTRAMAN TARO had 53 episodes. The contract states there were 54.
9. Noboru Tsuburaya’s name is misspelled “Noboru Truburaya”.
For obvious reasons, TPC considered the contract a forgery. “The names of some shows are misspelled or just plain wrong,” said Tsuburaya’s managing director Masaaki Umemoto. “Not only that; Noboru’s signature isn’t his official one.” Tsuburaya Productions dismissed the contract, and in 1998 the case went before the Thai Intellectual Property and International Trade (IPIT) court. During the trial, TPC detailed the many errors in Sompote Saengduenchai’s document, and presented handwriting experts who testified that Noboru Tsuburaya’s signature had been faked.
In 2000, the IPIT court determined that copyrights to the Ultraman character and the seven disputed TV shows solely belonged to TPC. In all other matters, the court ruled in Chaiyo’s favor, in large part because the contract had Noboru Tsuburaya’s hanko seal, a Japanese signature stamp. In Japan, important documents such as legal papers, bank loans, or business contracts must have a government registered hanko seal. While there are cases of signature stamps being forged or used without the owner’s knowledge, in the absence of any evidence to that effect the hanko seal carries great authority.
Tsuburaya Productions appealed the IPIT decision, both in Thailand and in the Tokyo District Court in Japan. TPC refused to publicly comment on pending litigation, but Sompote Saengduenchai and his son Perasit (the managing director of Chaiyo Productions) took part in a number of interviews to discuss their plans for multiple Ultraman projects from what they called “Tsuburaya Chaiyo Co. Ltd.” Sompote Saengduenchai also tried to take credit as one of the creators of the original Ultraman. In a 2001 interview he claimed that Eiji Tsuburaya instructed character designer Tohl Narita to draw hero designs based on photos Saengduenchai showed them in 1963. “I showed Sensei Eiji a picture book of Buddha statues in the Sukhothaj era and suggested to him that we might be able to develop a new hero from the statues. I suggested to Eiji that, since Godzilla is an animal the new hero character should be human.”
In September 2001, Perasit Saengduenchai told the Bangkok newspaper The Nation that Tsuburaya Chaiyo owned the copyright for Ultraman and would now develop and financially benefit from the character. He also revealed the company had created their own character, Ultraman Millennium, who would star in a live-action television series that would air in Thailand, Hong Kong, China, Singapore, and Taiwan in 2002. “The Ultraman Millenium copyright is owned by Chaiyo Productions,” he said. “It is a new version of the Ultraman character, which is fully Thai-produced.” Later that year he told Asiaweek, “For the past 30 years, Ultraman has joined with a Japanese man. The alien warrior, which must merge with a human to survive on Earth, has gone native in Thailand. Now he has been joined with a Thai man.”
Asiaweek also reported that the new television show and a feature film would follow a 26 episode Ultraman animated TV series that Tsuburaya Chaiyo had already produced. According to a November 2001 article, the cartoon show was in post-production and was scheduled to premiere in February 2002. Despite the announcement that the cartoon show was nearly finished, it did not air and was apparently never made. The much-hyped ULTRAMAN MILLENNIUM series and movie also never went into production.
While Tsuburaya Chaiyo’s Ultraman did not make it to television or theater screens, he did appear in the 2001 “Ultraman Millennium Live Show” in Bangkok. Produced in conjunction with Matching Entertainment Co., Ltd., this live stage show featured Ultraman Millennium alongside heroes and villains from Tsuburaya Productions’ early Ultra series. The event was a commercial success, and was followed by more shows such as the “Ultraman Live Show 4D”. Oddly, Chaiyo’s commercial for the “4D” show included blatant copies of characters and locations from George Lucas’ STAR WARS films, including the alien gangster Greedo and a kid in Jedi robes using a lightsaber.
The live shows and repeated announcements of new TV series and movies kept Ultraman in the public eye in Thailand and helped Tsuburaya Chaiyo with their main focus: licensing and merchandising Tsuburaya Productions’ characters. Chaiyo partnered with the Chinese company Guangzhou Ruishi Culture Developing Co., Ltd. to produce as many Ultraman products as quickly as they could. Many of these products were manufactured by Apex Toys Co., Ltd., the largest toy company in Thailand. Nearly half of Chiayo Productions’ income came from merchandising Ultraman. “That and the [Ultraman] branding is the key to our financial survival,” Perasit Saengduenchai told Asiaweek.
On February 28, 2003, the Japanese court upheld the Intellectual Property and International Trade court ruling. TPC still retained all copyrights to Ultraman, and Chaiyo kept what had been determined in the Thai courts. The following month, Tsuburaya Productions took the case to the Tokyo High Court and issued a statement that ran in Variety, Television Asia, Television Business International, MIP-TV News, and other publications. It read:
To Our Many Valued Customers and Licensees;
2003 marks Tsuburaya Productions’ 40th year of producing Ultraman and other high quality entertainment properties. It is thanks to our many fine customers and licensees around the world that we have been able to continue to prosper.
Recently there has been some confusion in the market concerning the copyright and licensing rights to the Ultraman properties.
Be assured that Tsuburaya Productions is the genuine legal owner of all copyrights, character copyrights, merchandising rights, secondary usage rights and all other legal rights to any and all of the Ultraman television programs, theatrical films and other properties as well as to all of the characters that appear in those productions. Anyone wishing to make inquiries regarding any such usage of the Ultraman properties is invited to inquire at Tsuburaya Productions’ Tokyo Home Office or at Shanghai Tsuburaya Planning Co., Ltd. in Shanghai. Any unauthorized usage of Tsuburaya Productions’ legal rights to the Ultraman television series, theatrical films or to any of the characters that appear in those productions will be prosecuted to the fullest extent.
Tsuburaya Productions Co., Ltd.
Shanghai Tsuburaya Planning Co., Ltd.
In Bangkok, Sompote Saengduenchai held a press conference to announce Tsuburaya Chaiyo’s victory, erroneously stating that the court had awarded him full rights to the Ultraman character worldwide except Japan. “I have fought for seven years and have documents that prove I was in the right, and now intend to enhance Ultraman’s commercial prospects,” he said. “The fight was not just for myself and my family, but for the dignity of all Thais.”
Saengduenchai told the Thai press that an ULTRAMAN MILLENNIUM movie was now in production, and would be released in Thailand and overseas in 2004. He also announced that Tsuburaya Chaiyo’s “Ultraman Town and Museum” would open at Pratunam Pra-In, Pathum Thani sometime that year. Chaiyo’s managing director Tanin Tiranasawadi added that the company was in negotiations for an Ultraman restaurant chain to launch in 2004. As with the previous wave of announcements, none of these projects ever saw the light of day.
The Tokyo High Court ruling came down on April 27, 2004. The court again agreed that Chaiyo Productions had “usage rights” to the first six Ultra shows and JAMBORG ACE, and that TPC was the sole owner of the worldwide copyrights to Ultraman. The decision enforced that only Tsuburaya Productions can create new Ultraman characters, films, or television shows. The Tokyo court also rejected Sompote Saengduenchai’s claim that he was one of the co-creators of Ultraman, and decided that Chaiyo’s merchandising rights to Ultraman did not include television, cable, or home video outside of Thailand.
While the 2004 decision actually returned or reinforced many of Tsuburaya Productions’ rights, Sompote Saengduenchai and Chaiyo Productions treated the news as if it were a major victory. On May 1, Bangkok’s The Nation reported that the Tokyo High Court decision gave Saengduenchai exclusive worldwide rights (outside Japan) to “to all Ultraman characters and the Ultraman trademark”… a claim far beyond the scope of the 1976 contract. The article went on to say that the licensing of over 30 different Ultramen would be worth more than 1.2 billion baht (approximately $30 million US) per year.
In addition, Chaiyo’s lawyer Chayatawatch Atibaedya said that Sompote Saengduenchai would be filing a lawsuit against Tsuburaya Pro for damages, legal fees, and the loss of 29 years of profits from Ultraman. Atibaedya estimated the damages to be close to $3 billion dollars US, stating that “Tsuburaya Productions is now under financial difficulties and there is a strong possibility that Sompote may become a major shareholder and gain the right to manage the company by converting debt into equity if Tsuburaya is unable to pay for any damages awarded by the court.”
Sompote Saengduenchai told The Nation that he was “deep in talks with top Hollywood moviemakers” to make a new Ultraman movie, disregarding the Tokyo High Court ruling that only Tsuburaya Pro had the legal right to produce new characters, films, or shows.
Perasit Saengduenchai held a press conference on May 24, 2005 to announce that Tsuburaya Chaiyo, Apex Toys, and Guangzhou Ruishi Culture Developing were collaborating on a new 52 episode Ultraman television series that would be marketed in both China and Thailand (with Europe and the US to follow). Chaiyo would be putting up half of the series’ Bt 104 million ($2.6 million US) budget, with Ruishi supplying 40% and Apex the remaining 10%. The series would feature the long-delayed Ultraman Millennium as well as two new characters, Ultraman Elite and Dark Ultraman.
Perasit revealed that the TV show would be followed by a movie that would introduce four more Thai Ultramen, saying that Chaiyo was spending up to Bt100 million ($2.5 million US) developing new Ultraman characters and screenplays. There were also talks of a Tsuburaya Chaiyo Ultraman Theme Park, which would be built in the ancient Thai capital of Ayutthaya. Construction of the Bt1 billion ($25.3 million US) park would begin in June 2006 for a scheduled 2009 opening.
By early 2006, the new television series was reportedly well underway as PROJECT ULTRAMAN, with 80% of filming taking place in China and Mongolia’s Gobi Desert. The producers scored by casting popular Hong Kong actor Ekin Cheng as the alter-ego of Ultraman Elite. Cheng is well known in Asia for his role in the YOUNG AND DANGEROUS film series (1996-2000), as well as THE STORM RIDERS (Fung Wan: Hung Ba Tin Ha, 1998), TOKYO RAIDERS (Dong Jing Gong Lue, 2000), and the recent FOREST OF DEATH (Sum Yuen, 2007) from the Pang Brothers. Perasit Saengduenchai explained to The Nation that, “We chose Ekin Cheng as he has the character of a good man. He has been widely recognised by Japanese people and is the presenter for many Japanese products, including Seiko watches.” Cheng later told reporters he only shot for two weeks for the entire series since a stuntman played all the scenes of Ultraman in costume.
Thai pop singer Matthew Dean (“When I Fall in Love”) played Ultraman Millennium, while Dark Ultraman was played by Ray MacDonald, an actor who had previously appeared in the international horror hit THE EYE (Gin Gwai, 2002) and its sequel THE EYE 10 (Gin Gwai 10, 2005). “It is a first time for Ultraman characters played by Chinese and Thai performers, not Japanese,” Perasit Saengduenchai told the Bangkok Post. “Using stars from the two nations was part of a marketing plan to capture wider audiences across Asia.”
PROJECT ULTRAMAN was scheduled to debut on China Central Television in December, followed by Thailand in January 2007, then 10 additional markets including Taiwan, South Korea, and Hong Kong. Perasit Saengduenchai also stated that stations in the US, Brazil, and Argentina had shown interest in the show, and that he was expecting Ultraman licensing to bring in more than Bt1 billion ($25.3 million US) in the coming year.
Tsuburaya Chaiyo also began licensing products featuring more recent Tsuburaya characters like Ultraman Dyna and Ultraman Cosmos, and sold US DVD rights for the original ULTRAMAN to the American company BCI Eclipse. While BCI is a reputable company that has released quality authorized DVDs of Japanese titles, their ULTRAMAN discs were a huge disappointment because all the original elements for both the Japanese and English versions of the series belong to Tsuburaya Productions. Tsuburaya had recently partnered with Panasonic to remaster the series for DVD in Japan, but BCI had to make due with whatever materials Chaiyo could find. The end result was lower video quality, as well as incomplete English audio tracks for many of the episodes. Also, BCI could not include the live ULTRAMAN premiere episode “The Birth of Ultraman: The Ultraman Premiere Celebration” (Urutoraman Tanjo Urutoraman Sai) or any behind-the-scenes material from the TPC vaults, and none of the Japanese cast and crew for ULTRAMAN would have any involvement with the Chaiyo DVDs.
Tsuburaya Productions considered Chaiyo’s actions in violation of court rulings and appealed the case back with the Intellectual Property and International Trade court. Tsuburaya also took the matter to the Chinese courts, and Beijing officials formed the “Ultraman Copyright Study Group” to look at PROJECT ULTRAMAN.
VICTORY FOR TSUBURAYA PRODUCTIONS
On April 2, 2007 the IPIT ruled in favor of Tsuburaya Productions. Sompote Saengduenchai, Chaiyo Productions, and Tsuburaya Chaiyo had no rights to any Ultraman films or shows except the titles named in the 1976 contract, so merchandising of the newer Tsuburaya characters was a violation of TPC’s copyright. The court also determined that Saengduenchai and his companies had no legal claim to create, market, or distribute their own characters such as Ultraman Millennium, Dark Ultraman, and Ultraman Elite. The three defendants were ordered to stop all licensing, film and TV production, and public appearances of the Thai Ultramen, and also pay fines and Tsuburaya’s attorneys’ fees.
The ruling put an immediate stop to the PROJECT ULTRAMAN television series, which had reportedly been completed at a cost of BT150 million ($3.75 million US) and was most recently scheduled for a summer 2007 launch. This cancellation could result in major financial and legal ramifications for Chaiyo and its partners Apex Toys and Guangzhou Ruishi Culture Developing, as the three companies are now holding an expensive investment that they may not be able to ever release or sell.
In addition, all companies who had licensed the new characters and show from Chaiyo are also prevented from doing anything with the property. One day before the court decision was announced, RSi Dream Entertainment had signed a 5 year exclusive marketing agreement for PROJECT ULTRAMAN. The deal gave the company a major stake in sponsorships, productions, and home video of the series in Thailand. “Luckily we haven’t spent a big budget promoting the series,” RSi managing director Boonperm Intanapasat said after hearing the news.
Sompote Saengduenchai was given 30 days to file an appeal of the IPIT ruling. As the case went back to the courts yet again, there were the first signs that the Thai press was looking at Chaiyo Productions in a new light. The April 11 The Nation ran an article about the Isuzu All Star Hero Festival 2007 entitled “Superheroes Unmasked as Outlaws”. Up to 20,000 attendees per day attended the month-long festival, and Tsuburaya Chaiyo planned to use the event to publicize PROJECT ULTRAMAN with a booth, a big screen video display, and personal appearances by Dark Ultraman, Ultraman Elite, and Ultraman Millennium. But in the wake of the court ruling, the Hero Festival organizers rejected anything related to the Chaiyo series, prompting The Nation to write that the Thai Ultramen had “fled the scene” and that fans of the characters “might take some consolation from the thought that these so-called superheroes were outlaws who violated the IP law.”
The latest IPIT ruling was formally announced on May 2, 2007. The court statement declared:
1.That Sompote Saengduenchai only has rights to the 9 movies mentioned in the 1976 agreement according to the Judgment of the Court in case Aor.36/2540. These rights are limited to only the 9 movies, not including any characters. The Court viewed that the rights to the movies are separate from the rights to any characters.
2. That the three Defendants, i.e. Sompote Sangduenchai, Tsuburaya Chaiyo and Chaiyo Productions Co., Ltd jointly infringed the copyright of TPC in imitating and copying Ultraman characters and producing Ultraman Millennium, Dark Ultraman and Ultraman Elite.
3. That the three Defendants jointly infringed the copyright of TPC in licensing customers in Thailand to use new Ultraman characters created by TPC, i.e, Ultraman Tiga, Ultraman Dyna, Ultraman Gaia and Ultraman Cosmos for merchandising.
4. The Court ordered the three Defendant to be jointly liable for payment of Baht 15 Million to TPC plus interest at the rate of 7.5% p.a. as from the date after the filing the lawsuit until payment is made in full. The Court also ordered the three Defendants to be jointly liable for payment of court fees to TPC, plus lawyer fees of Baht 80,000.
5. The Court ordered the three Defendants not to claim the copyrights to new Ultraman characters created by TPC and also not to distribute Ultraman Millennium, Dark Ultraman and Ultraman Elite.
6. The Court dismissed the Counterclaim made by Sompote Sangduenchai and Tsuburaya Chaiyo.
7. The Court dismissed Tsuburaya Productions’ claim regarding Matching Entertainment Co., Ltd, the company who jointly organized the “Ultraman Millennium Live Show” in Bangkok with Chaiyo, since Matching Entertainment was not aware that Chaiyo does not have rights to the two new Ultraman characters created by Chaiyo (Ultraman Millennium, Dark Ultraman).
The Intellectual Property and International Trade court decision contains several key points with very large ramifications for the Ultraman franchise. First, there has been some confusion regarding the “9 movies” named in the ruling… this actually refers to the nine properties listed in the 1976 document: the two films JAMBORG ACE AND GIANT and SIX ULTRA BROTHERS VS THE MONSTER ARMY, the television series JAMBORG ACE, and the six series from ULTRA Q to ULTRAMAN TARO.
The court determined that “the rights to the movies are separate from the rights to any characters” and that Chaiyo’s rights do “not include any characters”. For years, Sompote Saengduenchai and Chiayo Productions have claimed to have the rights to merchandise the characters and also use them for stage shows, public appearances, and the like. IPIT has now said that Chaiyo does not have those rights, which would mean the end of Ultraman character products, events, or theme parks licensed from Chaiyo.
While this case has been in the courts, Tsuburaya Productions has been cautious about any international marketing involving the early Ultraman characters. This included more recent shows like ULTRAMAN MAX (Urutoraman Makkusu, 2005) and ULTRAMAN MEBIUS (Urutoraman Mebiusu, 2006), which featured episodes with classic characters like Baltan, Red King, King Joe, Zetton, and the Ultra Brothers. Now that the courts have rejected Chaiyo’s claims on any characters, TPC can try to sell these newer shows outside of Japan.
The IPIT court also ordered that Chaiyo “infringed the copyright of TPC in imitating and copying Ultraman characters and producing Ultraman Millennium, Dark Ultraman and Ultraman Elite” and therefore could “not distribute Ultraman Millennium, Dark Ultraman and Ultraman Elite”. This ruling prevents Chaiyo from using the Thai Ultramen or releasing PROJECT ULTRAMAN.
Following the court decision, Tsuburaya Productions’ Thai representative, Sampote Thianthong of Pro-Link, ran ads in several newspapers to explain the Ultraman rights situation. “It is the key policy of Tsuburaya Productions to encourage better understanding among the general public as well as the business community about the copyrights to Ultraman characters and its legal licensing body in Thailand,” Thianthong said to The Nation.
Since the IPIT ruling determined that Chaiyo Productions did not have any rights to the Ultraman characters, stores can no longer display or sell any Ultraman character products licensed by Chiayo. Sampote Thianthong added, “We will take legal action against all infringing products of Ultraman characters as well as their producers. We have already contacted nearly 10 companies which make merchandise like CDs, urging them to stop producing and distributing those illegal products immediately. We don’t want those who have the illegal licenses to waste time and money.” Thianthong also said that a number of companies have applied to Pro-Link for legal licenses to make Ultraman products.
This is a major blow to Chaiyo Productions, who had earlier described licensing and merchandising as “the key to our financial survival.” Beyond losing (possibly permanently) any money that would have come from airing PROJECT ULTRAMAN, Chaiyo now has to deal with court fines and legal fees related to the show and the Thai Ultramen, business partners who have spent money in good faith, investors who believed they were buying into the lucrative Ultraman brand name, and licensees who have paid to make Chaiyo Ultraman products they legally cannot sell. In addition, reps from BCI Eclipse recently stated the company will not be releasing any more Ultraman DVDs licensed from Chaiyo.
There are also unconfirmed reports from Thailand that Sompote Saengduenchai can no longer use the Tsuburaya name for any of his businesses. If true, this would effectively end Tsuburaya Chaiyo Productions Co. Ltd (but not the parent company Chaiyo Productions).
As for Tsuburaya Productions, they are continuing in their efforts to reclaim all rights to their shows and characters. The recent rulings that Chaiyo ignored earlier court decisions and infringed on TPC’s copyrights should only bolster Tsuburaya Pro’s position that Sompote Saengduenchai and his companies have engaged in unethical business practices and therefore violated any claim to Ultraman.