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| IP Newsletter | Spring 2015 | |
Synopsis
On December 11, 2014, the Supreme Court confirmed that whether a work functions as a source identifier or trademark is irrelevant to whether the work can be regulated under the Copyright Act. The court also confirmed that access to a copyrighted work can be presumed if there is substantial similarity between the works, and the possibility of access is established. Indeed, the court noted that striking similarity alone (i.e., where the similarity cannot reasonably be explained as a coincidence) may be enough to presume such access.
The Facts
The plaintiff was Fox Head, Inc. ("Fox Head"), a U.S. company which manufactures MTB bikes, cycling clothes, and various other sports equipment. The defendants were a Korean fashion company, Fox Korea Co., Ltd. ("FKC"), as well as a director of the company and one other individual. The director had registered in Korea various fox head designs for various goods/services (the "Imitation Marks"). The director licensed these marks to FKC, who then began manufacturing and selling sports clothing and various accessories bearing these marks.
Due to the defendants' preemptive trademark registrations, which Fox Head was unable to invalidate, Fox Head was prevented from using or registering its trademarks in Korea. Thus, to stop the defendants' use of the Imitation Marks in Korea, Fox Head instead filed an action for copyright infringement at the Seoul Central District Court, seeking a permanent injunction against the defendants, destruction of the infringing goods and relevant advertising materials, and deletion of the infringing designs from the internet.
| Some of the Plaintiff's Devices | Some of the Defendants' Korean Trademark Registrations |
 
 
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| * Created and published as the plaintiff's logos as early as 1976. | * These registrations cover various goods and services, many of which designate clothing-related goods. |
The district court ruled that the defendants' use of the Imitation Marks did not constitute copyright infringement, finding that the defendants' access to Fox Head's fox devices had not been proven. In particular, the court noted that Fox Head's fox devices were not well-known in Korea at the time the defendants' earliest trademark applications were filed.
On appeal, the high court reversed the district court's decision, holding that access can be presumed where the possibility of access to the copyrighted work is shown, and there is substantial similarity between the two works. Accordingly, the Imitation Marks were found to infringe Fox Head's copyrights in its fox devices.
The defendants then appealed to the Supreme Court, arguing that since the Imitation Marks were only used as trademarks, Fox Head could not bring a copyright action against them. However, the Supreme Court ruled that whether a work functions as a source identifier is irrelevant to whether it may be regulated under the Copyright Act. Further, citing a prior Supreme Court decision, the Court not only affirmed the high court's ruling that access to a copyrighted work can be presumed if both substantial similarity between the works and a possibility of access are found, it also noted that striking similarity alone (i.e., where the similarity cannot reasonably be explained as a coincidence) may be enough for access to be presumed.
The Supreme Court's ruling makes it clear that companies with copyrightable brand designs have an additional avenue of protection for their brands in Korea if their trademarks have been preemptively registered by others.
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Seoung Soo LEE sslee@kimchang.com |
Angela KIM angela.kim@ip.kimchang.com |
Won-Joong KIM wjkim2@ip.kimchang.com |