Trademark Issues in Entertainment Industry
엔터테인먼트 산업 중 상표문제
- 법과대학 법학과
- Issue Date
- 서울대학교 대학원
- 학위논문 (석사)-- 서울대학교 대학원 : 법학과, 2017. 2. 정상조.
- Entertainment industry is a fast progressing and very profitable business all over the world. Nowadays, there are a lot of cooperation among entertainment enterprises of US, Korea and China. In order to protect and enhance the development of this industry, there is a huge demand for related laws and legal services. However, experts and lawyers specialized in entertainment law always focus on those legal issues most relevant to the regular process of the production, distribution and retailing of an entertainment work, such as agent contract signing and copyright clearing, and sometimes neglect other less relevant issues, like trademark issues. Even in textbooks of entertainment law for US law school students, trademark law is briefly and generally introduced. No specific trademark issue is analyzed thoroughly. However, a lot of cases have already showed the importance of trademark issues in the entertainment industry. As a Chinese trademark law professional who has studied US IP law in a Korean university and who are very interested in entertainment, I am writing this thesis in order to raise the attention on trademark issues in entertainment industry and give suggestions to legislators and lawyers in this area.
In the introduction, I explain the importance of trademark issues by analyzing a recent case in China, “the Voice of China” case and listing various advantages of trademark right compared to copyright. In the main body, I divide those important trademark issues into two categories, one before trademark registration and one after that.
Before trademark registration, we need to know what to apply, when to apply and who to apply. I introduce some special types of trademarks that are usually used by entertainment enterprises, such as name of celebrities, works and characters, three dimensional marks, sound marks and motion marks. I analyze the requirements of trademark registrability, including priority of the right, distinctiveness, legality and etc. I focus on those special issues related to entertainment industry, like the cross-class characteristic of entertainment service and trademark squatting. In my opinion, nowadays in modern society with high developed technologies, goods may have multi functions and services may have multi ways and purposes. Thus, it is better to be open minded in admitting double characters of one good or service. I analyzed the “星光大道”（Star Road） case and “非诚勿扰”(Feichengwurao) case in details to prove my idea. As to trademark squatting, the most serious problem in China, I illustrate three reasons to it and give respective suggestions to solve the problem. I also give advice to Chinese examiners on quoting a comparatively appropriate article within the range of legality requirement to refuse bad faith applications. Furthermore, I introduce a special requirement on trademark application. That is “not an illegal conversion of copyright and related right.” In the end of this part, I also explain how to make a good deal on the right to apply for trademarks.
After trademark registration, we need to know how to use, protect and restrict a registered mark. We shall avoid cancellation of a mark on non-use ground, and prevent infringement, especially dilution and reverse confusion. At the same time we shall respect trademark fair use, particularly the fair use by entertainment enterprises, including descriptive fair use, functional fair use, prior right fair use, nominative fair use and so on. In this part, I especially introduce a new article in Chinese Trademark Law on “no liability for damages to a non-used mark”, mention the difficulty in asserting dilution and suggest entertainment enterprise to avoid reverse confusion. For trademark fair use, I list different definitions and illustrations given by different trademark law systems, and remind entertainment enterprise to refrain from some controversial issues like trademark parody and comparative advertising.
From the discussion, we may find out that the trademark protection systems in US, Korea and China related to entertainment industry are in different developing stages. Moreover, due to the complexity of entertainment industry and its related IP rights, it is hard to make a good balancing between trademark right and other IP rights, or a clear distinction between use and misuse, fair use and infringement of trademark right. Hence in conclusion, I suggest legislators and scholars in this area to learn from those advance theories and practices to promote the development of its own country's trademark protection system and entertainment industry.
To sum up, there are three main characteristics of my thesis. The first one is about the structure. I arrange those trademark issues in the time flow of a trademark’s designing, application, registration, using and protection, so that readers may have a good understanding about the relations between those trademark issues. The second one is about the comparison. As to almost all issues, I list the similarities or differences among US, Korea and China, so that readers may know in different countries, they need to deal with trademark issues differently. The third characteristic is about examples. I carefully select trademarks and cases closely related to entertainment industry, so that readers may feel the importance of trademark issues to this industry.