Supreme Court: titles of musical productions may be protectable as source identifiers

Under Korean practice, the titles of books and music albums are generally not protectable as trademarks, unless a title is used for a series of works. The titles of musical productions have also not been considered to be protectable as trademarks for similar reasons, and no exceptions to that rule had been recognised - until now.    

In a recent case involving the well-known Andrew Lloyd Webber musical Cats, the Supreme Court has 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 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 music albums as trademarks.

In this particular case, Seol and Company, 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:

1. the asserted mark is well-known in Korea as a source identifier;

2. the cited mark is similar or identical to the well-known mark; and

3. 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 licence since 2003, and took note of the large number of performances, the size of the audiences and the significant advertising expenditures made in connection with the production over the years.

The court concluded that the name Cats had become conspicuously distinctive and associated with the parties involved in staging the production, thereby functioning as a source identifier. It remanded the case back to the High Court, which found in favour of Seol. The case was appealed again to the Supreme Court by the defendant, and is now pending.

Seoung-Soo Lee, Angela Kim and Seung-Hee Lee, Kim & Chang, Seoul