Trade marks may be protected under the Korean Trade Mark Act ("TMA"), while well-known marks can be protected under the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA"). International conventions to which Korea is a signatory, such as the Agreement Establishing the World Intellectual Property Organization, the Paris Convention for the Protection of Industrial Property, the Madrid Protocol on the International Registration of Marks and the Agreement on Trade-Related Aspects of Intellectual Property Rights, have the same legal effect as domestic laws. In principle, the TMA and treaties have equal effect.
The TMA effectively protects well-known marks by prohibiting the registration of marks that are similar/identical to marks that are well-known in or outside of Korea and filed in bad faith. The UCPA also prohibits the use of marks that are famous in Korea.
The law makes a distinction between "well-known" and "famous" marks. A well-known mark is considered as a mark that is recognized by a majority of customers, while a famous mark is recognized by an overwhelming majority.
Trade marks belonging to the "luxury industry" do not enjoy a broader range of protection apart from that provided by law.
The fame of the mark must be established in order to prove that a trade mark is entitled to broader protection in Korea. The courts generally review sales and advertising figures, sales volume and duration, global registration status, and any other evidence showing that the mark was exposed to local traders and consumers as an indication of source.
The well-known status of a mark may be substantiated by the above evidence or in an affidavit duly executed by a person who has access and knowledge of such information.
There is no test or threshold to establish that a trade mark is entitled to broader protection.
For <.co.kr> or <.kr> level domain names, trade mark owners may file an administrative proceeding with the Internet Dispute Resolution Committee ("IDRC") or file a civil action based on the UCPA in order to transfer or de-register an unauthorized domain name that contains their trade mark. An IDRC action is similar to a Uniform Domain Name Dispute Resolution Policy proceeding, and petitioners may rely on claims under the anti-cybersquatting provision of the UCPA and the Internet Address Resources Act ("IARA").
Article 18-2 of the IARA provides that:
the IDRC can issue a decision to deregister or transfer the domain name (if the registrant does not have any legitimate right for the domain name).
The anti-cybersquatting provision of the UCPA defines the following acts as constituting unfair competition: the act of registering, maintaining, transferring or using a domain name which is similar to another person's name, trade name, trade mark or any other indicator which is widely known in Korea for the purpose of:
A registered trade mark can be enforced against a trade name, but TMA Article 51 limits the extension of such trade mark right if the trade name indicates the trade mark in a common way.
A trade mark can be enforced against other distinctive signs, if the sign is similar to the registered mark and perceived as a source identifier.
A trade mark cannot be enforced against its use as a metatag.
If the trade mark is used to indicate a source in social media in relation to similar/identical goods/services, then the owner may have a claim for infringement. Also, if the trade mark is used by the social media account holder to cause dilution or mislead the public as to an affiliation with the owner and account holder, then there may be claims available under the UCPA.
When considering whether a trade mark be enforced against its unauthorized use in comparative advertising the key is to establish whether the trade mark was used as a source identifier in the advertisement. Most comparative advertisements do not use a third party's trade mark as a source identifier, and thus it is generally difficult to assert infringement under these circumstances. The trade mark owner may explore other regulatory claims as well as Article 2(1)(vi) of the UCPA if any of the statements in the advertisement are false.
It is possible for a trade mark to be enforced against its unauthorized use in a parody if the parody mark is used as a source identifier. For instance, a trade mark owner may assert infringement if the parody mark is used as a source identifier, is similar to the other mark, and the goods are identical or similar. The owner may also assert likelihood of confusion over the source of the goods and/ or dilution under the UCPA.
A trade mark owner can claim both trade mark infringement and unfair competition in the same civil and/or criminal proceedings. It is also possible to bring parallel and/or separate proceedings, but not necessary.
The Korean Copyright Act ("CA") is the relevant local law regarding copyrights, while Korea is also member country of the Universal Copyright Convention, the Geneva Phonogram Convention, the TRIPs Agreement, the Berne Convention for the Protection of Literary and Artistic Works, the WIPO Copyright Treaty and the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations and the WIPO Performances and Phonograms Treaty.
In principle, the CA and treaties have equal effect. However, if there is a conflict between these sources, the more recent or special laws are applied depending on the circumstances or parties involved.
The CA non-exhaustively lists examples of categories of protected works according to the forms they take, but even if a type of work is not included in this list, it may still be protected under the Act. The list reads as follows:
Objects of industrial design may be copyrightable as applied art. The industrial design or applied art must possess the fundamental elements of a copyrightable work, which is "creativity" and "expression of human emotion or idea", in addition to having artistic value that is physically or conceptually separable from the function of the industrial article.
The rights of reproduction, public performance, broadcasting, transmission, exhibition, distribution, renting and making derivative works are covered by copyright. According to the CA, the copyright holder also has moral rights, which include the rights of public disclosure, preservation of integrity or identity of the work, and attribution of authorship.
The creator of the work is generally considered the author, but the CA does have special rules for works made for hire. That is, the CA deems an employing legal entity, organization, or other person to be the "author" of a work and own copyright in a work, if all of the following conditions are satisfied:
If the above conditions do not apply, then the legal entity in question should receive an assignment of the copyright through a separate agreement with the creator (author) of the work.
Consultants are not considered an "employee" as identified in the above provision, and thus the legal entity would have to receive an assignment of the copyright to the work through a separate agreement. However, depending on the facts, the consultant's work may be considered a work made for hire if he/ she was actually working for the legal entity as an employee.
Shareholders and suppliers are not considered "employees" as identified in the above provision, and thus the legal entity would have to receive an assignment of the copyright to the work through a separate agreement.
If a director of a company was subject to the employing legal entity's supervision, then it is possible for a director's work to be considered a work made for hire.
As long as the parties agree to an assignment of the copyright, a copyright assignment agreement does not have to satisfy particular formalities to be valid. However, to be binding on third parties, the assignment must be officially recorded. For example, in the event that the copyright holder has executed duplicate assignment agreements, it is possible that ownership would be acknowledged only for the assignee that is recorded with the Korean Copyright Commission. Therefore, it would be prudent for a copyright assignee to record the assignment.
A separate assignment agreement is not necessary if the particular work can be construed as a work made for hire (see above). Otherwise, however, if the circumstances require the execution of a copyright assignment agreement between a legal entity and its employees, consultants, shareholders, directors and suppliers, then the entity should be cautious about entering into an agreement where there is no consideration for the assignment. Such lack of consideration may be deemed unfair and subject the agreement to validity issues.
In addition, even if there is a full assignment of a copyright, the right to make derivative works are not presumed to be included in the assignment. Therefore, if desired, the legal entity should include an express provision in the assignment agreement specifying that the copyright assignment also includes the right to make derivative works.
It is not possible for an author to transfer or waive his/her moral rights.
Copyright protection lasts for the life of the author plus a term of 70 years after death. Works made for hire have a protection term of 70 years after the work is made public, but if the works have not been made public or published within 50 years of its creation, the protection term is then for 70 years after its creation.
The CA provides that a protected work may be registered with the Ministry of Culture, Sports, and Tourism, which delegates its authority for registration to the Copyright Council. Although a copyright deposit or notice is not required, a person who desires to register the copyright in a work must submit an application to the Copyright Council with specified information. Such registration is not mandatory and is not a pre-condition for copyright protection or enforcement, but it does provide certain advantages for the right holder.
As discussed in 2.2, industrial designs are capable of protection by copyright under certain conditions, and any type or form of evidence may be produced to establish the foregoing.
Copyright infringement is assessed by proving that the infringer created its work based on a third party's copyright work, and that there is substantial similarity between the compared works. Actual copying is not necessary, and substantial similarity is sufficient to establish infringement.
Despite a valid trade mark registration, if a trade mark conflicts with a copyright of a third party that existed prior to the trade mark application filing date, then the trade mark registrant is not allowed to use his/her own registered mark without the copyright owner's authorization (Article 53 of the Trade Mark Act).
Despite a valid design registration, if a design conflicts with a copyright of a third party that existed prior to the design application filing date, then the design registrant is not allowed to use his/her own registered design without the copyright owner's authorization (Article 95 of the Design Protection Act).
There is no specific provision with regard to the enforceability of a copyright against a patent, domain name, trade name, pseudonym, or other IP right. However, in principle, the copyright holder's consent is necessary if the foregoing IP rights conflict with a copyright.
A copyright may be enforced against its unauthorized use in social media, as long as the conditions identified above are met and there are no other exceptions applicable, such as fair use.
A copyright may be enforced against its unauthorized use in comparative advertising, as long as the conditions identified above are met and there are no other exceptions applicable, such as fair use.
There is no settled law or precedent with regards to the use of a third party's copyright in a parody. However, Korean courts may excuse the use of a third party's work in a parody if it is on the whole clearly distinguishable from the prior work. On the other hand, a lower court decision has acknowledged copyright infringement against a party's production of an album and music video that was alleged to be a parody of a famous song. The court applied a strict standard and reasoned that the infringer's song was neither a criticism nor satire of the original song, and did not create any additional value.
The CA provides exceptions to copyright infringement. For instance, an alleged infringer may have an available defence against infringement if use of the copyright work was for any of the following uses: private, educational, library and other archival reproduction, non-profit performance and broadcasting, current news reports, reproduction for judicial proceedings, temporary sound or visual recording by a broadcaster, exhibition or reproduction of fine art, temporary reproduction on a computer, reproduction for the handicapped, and free use of public works.
The fair use defence is also included in the CA, and expressly permits the use of copyrighted works for the purposes of reporting, criticism, education and research, etc. to the extent that such use does not conflict with the ordinary use of the works, and does not unreasonably prejudice the legitimate interests of right holders.
A copyright holder's enforcement of its valid copyright may be held as an abuse of rights if the copyright holder's purpose behind the enforcement was to bring harm. Abuse of rights is determined on a case by case basis.
There is no time limit for seeking injunctive relief in an infringement action. However, a claim for damages must be brought within three years from when the copyright owner became aware of the infringement, or ten years from the date of infringement.
A copyright holder may claim copyright infringement, design infringement and/or unfair competition for the same set of facts. It is possible to assert the foregoing claims in one civil complaint or in separate proceedings.
Product designs that are registered with the Korean Intellectual Property Office ("KIPO") are protected in Korea under the Design Protection Act ("DA"). Unregistered designs can be protected under the UCPA and/or CA in certain circumstances. Further, Korea is a signatory to the Agreement Establishing the World Intellectual Property Organization and the Paris Convention for the Protection of Industrial Property, and thus they have the same legal effect as domestic laws.
In principle, the DA and treaties have equal effect. However, if there is a conflict between these sources, the more recent or special laws are applied depending on the circumstances or parties involved.
The subject matter protected by the DA is industrial designs. The DA defines "design" as "the shape, pattern, or color, or a combination of these in an article (including part of an article) which produces an aesthetic impression in the sense of sight". A typeface can also be protected under the DA, as well as moving designs and image designs (for example, computer icons, on-screen computer displays and graphic-user interface).
Unregistered designs cannot be protected by the DA, but under the "dead copy" provision of the UCPA, any act of assigning, renting, displaying, importing or exporting a product which imitates the appearance of another party's product (for example, the shape, pattern, color, or combination of such attributes) is deemed to be unlawful.
In order to obtain a grant of a valid design registration, a design must possess novelty and creativity. More specifically, prior to the filing of the design application, such a design must not be:
Further, a design may not be registered where a person with ordinary skill in the particular field of design could have easily created the design from a widely known design or published design in or outside Korea.
As for unregistered design rights, the "dead copy" provision is not applicable where:
The basic principle underlying the Korean laws on in-service inventions is that intellectual property rights (including patents, utility models and designs) inherently belong to the employee who created the invention. That is, an employee has an inherent right to obtain a registration for his/her design.
There are two ways for an employer to have vested title to in-service inventions. One is to enter into a pre-invention assignment agreement with the employee, thereby the employee agreeing to assign any and all future in-service inventions to the employer. The other is to adopt an employment rule (for example. an invention compensation policy) expressly providing for employee-inventors' assignment of any and all future in-service inventions to the employer. When an employer succeeds to the rights to the in-service invention in accordance with a contract or employment rule, the employee is entitled to "reasonable compensation" from the employer - even if the employer ultimately decides not to pursue a design registration and, instead, decides to keep the invention as a trade secret.
Consultants are not considered an "employee" as identified in the above provision, and thus the legal entity would have to receive an assignment of the design through a separate agreement. However, depending on the facts, the consultant's work may be considered an in-service invention if he/she was actually working for the legal entity as an employee.
Shareholders and suppliers are not considered to be "employees", and thus the legal entity would have to receive an assignment of the design through a separate agreement.
If a company director was subject to the employing legal entity's supervision, then it is possible for the director's work to be considered an in-service invention.
As long as the parties agree to an assignment of the design, a design assignment agreement does not have to satisfy particular formalities to be valid. However, for the design assignment itself to be valid, the assignment must be recorded with KIPO. The Korean Invention Promotion Act ("KIPA") sets forth a set of rules governing two aspects:
KIPO also has published guidelines in connection with in-service inventions. Therefore, KIPA rules and KIPO guidelines should be taken into consideration when drafting a design assignment agreement.
There are no moral rights in relation to designs.
Once registered, a design is protected for twenty years from the application filing date.
As discussed above, the "dead copy" provision is not applicable if the imitation product is manufactured more than three years after the date of manufacture of the original product.
It is an infringement of the rights to a registered design to use an identical or similar design without authorization from the owner of the registered design. Substantial similarity is sufficient to establish infringement.
As for protection of unregistered designs under the "dead copy" provision, the compared designs must be nearly identical.
According to Article 95 of the DA, a registered design or a design similar to the registered design may be enforced against another's trade mark, design, patent, copyright, or utility model if an application for the foregoing was filed earlier than the filing date of the registration of the design concerned. In cases of conflict between the design right and other person's patent right, utility model right, trade mark right, copyright, the owner of the registered design in question shall not commercialize the design without permission from the owner of the relevant design right, patent right, utility model right, trade mark right or copyright, or without complying with Article 123 (trial for granting a non-exclusive license in connection with relevant design right, patent right, utility model right or trade mark right).
There must be an infringement of the registered design right for a design to be enforced against its unauthorized use in social media. A personal posting of an image of a product may not rise to the level of infringement.
There must be an infringement of the registered design right for a design to be enforced against its unauthorized use in comparative advertising.
There must be an infringement of the registered design right for a design to be enforced against its unauthorized use in a parody.
There is no "repair clause" in Korea nor are there any comparable limitations. Invalidity of the design is the most common defence raised by alleged infringers.
An otherwise valid registered design can be deemed unenforceable if there are validity issues. There is no time limit for seeking injunctive relief in an infringement action. However, a claim for damages must be brought within three years from when the design registrant became aware of the infringement, or ten years from the date of infringement.
A design holder may file one action claiming design and copyright infringement, as well as unfair competition, for the same set of facts. It is possible to bring parallel and/or separate proceedings, but not necessary.
Product placement is permitted if certain requirements are met under the Broadcast Act.
The Enforcement Decree of the Broadcast Act specifies various limitations with regards to product placement (for example, type of broadcast and product, and method). For instance, product placement is only permitted on programs related to entertainment and culture, and it is prohibited to refer to the product, or recommend purchase or use. Also, the logo or brand shown on the product cannot exceed a quarter of the screen.
The owner should give the other party an opportunity to perform the agreement, and if corrective measures have not been taken, then the owner can terminate the agreement and also petition for damages incurred due to such failure to perform.
There is no law regarding right of publicity and/or privacy for legal entities or corporations. However, it may be considered an unlawful tort for a party to harm the reputation or credibility of a legal entity, and such party may be subject to damages.
It is generally possible to include specific clauses in agreements aimed at protecting the corporate image/reputation.
It is possible for a party to include a clause regarding re-sellers, but such condition may be perceived as an unfair trade practice prohibited by the Monopoly Regulations and Fair Trade Law ("MRFTL"). When determining if there is a risk for impeding fair business practices under the MRFTL, the Korea Fair Trade Commission will review the totality of the circumstances, including the party's intent, purpose, and the effect of the party's actions, in addition to the nature of the product in question, transaction terms, and whether the party is in a dominant position within the relevant market, as well as the contents and degree of harm on the transacting party.
The MRFTL prohibits the maintenance of resale price, but will allow a business to implement actions to prevent its products from being sold higher than a certain price as long as there are business justifications.
Prohibition against buying non-original, but legitimate, spare parts and components are generally permissible, but depending on the circumstances, such prohibition may be considered a violation of the MRFTL for possibly hindering fair trade.
It is permissible to include a liquidated damages clause for protecting the reputation or corporate image of the other party in an agreement, and such provision is considered valid by a court. However, the court may ultimately order a decrease in the payment amount if it determines that the liquidated damages pursuant to the agreement is excessive compared to the market position of the parties, the proportion between actual damages compared to the liquidated damages amount, and expected amount of actual losses.
There is no law in South Korea recognizing the right of an individual to control the commercial use of his or her name, image, likeness, or other unequivocal aspect of his/her identity. Furthermore, the lower court decisions are also split on this issue of one's right to publicity, and there is no Supreme Court precedent in this regard.
For those lower courts that have recognized the right to publicity, they have relied on constitutional laws for their reasoning, such as personal rights, the right to pursue one's happiness, or the right to own property.
The lower court decisions that recognize the right of publicity have at minimum, required commercial value in such right. As such, there have been instances where the court has recognized the infringement of publicity rights even for non-public figures as long as there is commercial value in their name or likeness.
There is no statute or Supreme Court decision regarding the right of publicity and whether such right survives the death of the individual. Moreover, the lower courts that have addressed this issue are inconsistent as well.
Although not a Supreme Court decision, a lower court has held that it is possible to assign one's right of publicity.
It is possible for an individual to license his/her right of publicity. Such license can either be exclusive or non-exclusive, and common practice for celebrities that enter into contracts authorizing third parties to use their name, likeness, or other aspect of their identity.
There are no set requirements for an agreement involving the assignment/ license of the right of publicity to be valid.
When drafting an assignment/license of the right of publicity it would be necessary and prudent to consider whether the contracting party is the rightful owner of the subject publicity right, and whether the owner has not already contracted with a different party. It is also important to conduct due diligence to make sure that the publicity right does not conflict with other third party rights. The assignment/license contract itself should identify the right to be assigned/ licensed with specificity as well as the license period and method of use.
As there is no statute with regard to the right of publicity, there are no unique conditions and the parties are free to enter into an agreement according to their desired terms.
The lower courts are split on what should happen following the death of the licensor when it occurs while the license agreement is still in force. While one court ruled that the right of publicity extinguishes upon the right holder's death, another court has recognized that such a right can be passed on to one's heirs.
There is no law or precedent in South Korea regarding the assignee's or licensee's position in relation to heirs that have an independent right over the deceased individual's publicity right.
There is no Supreme Court decision on the expiry of a right of publicity if transmissible mortis causa, and a lower court decision has recognized that the right of publicity term corresponds to the copyright term, while others have not.
A lower court has ruled that an assignee may have standing to sue for a violation of the right of publicity.
Although not a Supreme Court decision, some lower courts have enforced the right of publicity against infringing commercial use. Further, it would be possible to assert one's constitutional rights against a third party's unauthorized use of one's name or likeness despite lacking a commercial aspect.
The right to publicity is not recognized by law or precedents, but for those cases that have addressed this issue, the commercial value of one's name, image, or likeness was generally presumed for purposes of obtaining a remedy against its unauthorized use.
The form of evidence is not recognized by statute, but in practice, the public figure's agency contract, advertisement contract, and testimony from an employee working in the advertising field would be helpful to establish one's commercial value.
In terms of defences available to an alleged infringer there is no law or precedent in this regard.