IP Newsletter | Summer 2015
	TRADEMARK, COPYRIGHT & UNFAIR COMPETITION
	The Supreme Court Says Titles of Musical Productions May Be Protectable as Source Identifiers
	Under Korean practice, the titles of books and music albums generally are not protectable as trademarks, unless a title is used for a series of works. While titles for musical productions generally also have been considered not protectable as trademarks for similar reasons, no exceptions to that rule have been recognized, until now. In a recent case involving the well-known Andrew Lloyd Webber musical "CATS," the Supreme Court held that the title of a production can be protectable under the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA") if the production has been staged enough times to cause its title to become associated with the particular party or parties who have been responsible for the production. This is the first decision in Korea to clearly confirm that the title of a musical production can be protected as a source identifier, following the logic of earlier decisions protecting titles of series of books and albums as trademarks. In this particular case, Seol and Company ("Seol"), the company that stages performances of "CATS" in Korea, sought to enjoin another company from staging a musical under the title "Children's Cats." Seol filed an action under Article 2(1)(ii) of the UCPA, which prohibits acts likely to cause confusion with another's business facilities or activities. In order to prevail in such an action, one must show that: (i) the asserted mark is well-known in Korea as a source identifier; (ii) the cited mark is similar or identical to the well-known mark; and (iii) a likelihood of confusion exists as a result of the similarity. While Seol prevailed at the first instance, the High Court reversed the decision on appeal, stating that in order to function as a source identifier, the title "CATS" needed to be used specifically in relation to the production company's business, and not merely to convey the content of the musical. The Supreme Court ultimately disagreed with the High Court, although it did affirm that ordinarily, the title of a copyrighted musical production merely conveys the content of the production and is not separately protectable as a trademark. However, in this case, the Court found that Seol had been staging "CATS" repeatedly in Korea under license since 2003, and took note of the large number of performances, the size of the audiences, and significant advertising expenditures in connection with the production over the years. The Court thus concluded that the name "CATS" has become conspicuously distinctive and associated with the parties involved in staging the production, thereby functioning as a source identifier, and remanded the case back to the High Court, which found in favor of Seol. The case was appealed again to the Supreme Court by the defendant, and is now pending.
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