1. Protection by copyright law
The Supreme Court of the Republic of Korea recognizes copyright protection for characters created by animation. Its 11 February 2010 ruling (Decision 2007Da63409) states, "Copyright protection shall apply to creative expressions that convey thoughts and emotions. Regarding human or animal characters from comic books, TV, movies, newspapers, magazines and other mass media, copyright protection can apply to these independently, apart from the original creative work in which they appear, if these characters have unique visual expressions, movements, etc." Further, "When players and referees which appear as characters in [the Japanese online game] Jikkyou Baseball meet legal copyright requirements by displaying unique, cute cartoon-like images, they can be protected separately from the game itself. When determining copyright validity, it is immaterial whether or not these characters have been commercialized."
The ruling is a departure from the Seoul High Court's (22 August 2007) original finding, "Jikkyou Baseball characters, which the plaintiff claims as creative works upon themselves, are in actuality only a part of Jikkyou Baseball, itself a work containing various components: characters, plots, game development, offered choices and tools. Removed from Jikkyou Baseball, one of these cannot be regarded as a character with unique copyright until it has obtained its own recognized copyrighted value through the process of commercialization as an individual Jikkyou Baseball character." In addition, Article 2 (1) of the Copyright Act stipulates that a work subject to copyright protection refers to one that expresses the thoughts or feelings of human beings, and in general, the creation refers to the image established by repeatedly portraying characters with unique names, appearances, roles, etc. This stands in contrast to a simple image or expression. In other words, a character is an abstract concept of characteristics sublimated from concrete expressions gathered from multiple scenes; it is not a stand-alone concrete expression. The High Court concluded that protection of Jikkyou Baseball as a visual work featuring characters that comprise the whole is sufficient; copyright protection for an individual Jikkyou Baseball character was denied on the grounds that it could not be regarded as a creative expression of ideas or emotions.
Nevertheless, the Supreme Court's reversal in this case should not be considered as granting copyright protection to every character engaged in dialogue. In a case involving alleged infringement of the Right of Reproduction and the Right to Produce Derivative Works based on a character, including caricatures of the protagonists in "Winter Sonata," "Hwang Jini," "Jewel in the Palace," "Jumong" or other Korean dramas, High Court Decision 2009Na4116 (14 January 2010) found that a character in a movie or a drama is defined by the actor's performance and unique appearance – the total identity, including the appearance, behavior, name, personality, voice, tone, situation and dialogue. These combined elements conjure a character like one created in a novel, play or other literary work. Therefore, a character from a drama cannot be replicated by a visual product, such as a doll or toy, which utilizes a costume reminiscent of one worn by the same character nor by a cartoon character in a stand-alone drawing or within a work of animation. Here, the court concluded that it was difficult to bestow copyright protection upon individual characters that use the names, costumes and accessories associated with characters in a drama but do not actually replicate all the facets of that character.1 Two judgments (Decision 99Do1152, 14 May 1999 and Decision 2005Do703, 29 April 2005) are interpreted as the Supreme Court starting to acknowledge the independent authorship of an animated character The rulings state that all of the visual elements of animated characters were created and hence do not illegally replicate any "linguistic character" (e.g., one from a TV drama) that the animated character may be based upon.
Among those expressing dissenting opinions about the extension of copyright to a character, there are some opinions criticizing the Supreme Court's decision for not distinguishing the "character itself" from the "visual expression of characters." According to this opinion, in the latter case, the pictorial expression emphasizing the visual element of the character will be protected by the copyright of the corresponding game (video work); legal protection is already implied. In short, there is no benefit to discuss whether the character itself is allowed to have its own copyright.4
2. Protection by the Unfair Competition Prevention Act5
In the Unfair Competition Prevention Act, the term "act of unfair competition" refers to causing confusion with another person's goods by using marks identical or similar to another person's name, trade name, trademark, container or package of goods, or any other mark indicating another person's goods, which is widely known in the Republic of Korea. Article 2, Subparagraph 1 of article 2 allows a person whose business interest is injured or threatened by such an act of unfair competition to petition the court to prohibit or prevent any person from selling, distributing, importing, or exporting goods bearing such marks.
When it comes to commercializing goods based on a character, the product is often protected by the Copyright Act, Trademark Law or Industrial Design Protection Act. However, the Trademarks Law and Industrial Design Protection Act have restrictions in regard to registering characters or investigating related charges of unfair trade through them. Therefore, Koreans normally rely on the Unfair Competition Prevention Act when commercializing character goods, provided the character goods are already widely known in the Republic of Korea.
"Character merchandising is the act of profiting off of fictional or real characters that appear in mass media (e.g., cartoons, TV, movies, newspapers, magazines)," according to Supreme Court Decision 2005Do70, 4 April 2005 (a.k.a., "the Top Blade case").6 "However, the main function differs from simply displaying a trademark on goods or packaging. Even if character goods are widely known to the public, displaying them as a trademark on goods is not enough to meet the legal definition of 'widely known'. For that distinction under Article 2, Subparagraph 1 of the Unfair Competition Prevention Act, commercialization plans must be evident with continuous advertisement and quality management to ensure that the public can recognize which individual or group holds the rights of commercialization on the character goods and rights of exclusive use and reuse."
Also, according to Seoul Central District Court Decision 90Gahap31607 (1 January, 1991), "When famous characters like Disney's Mickey-Mouse or Donald Duck are simultaneously used to promote various goods, it is hard for the public to recognize that the manufacturers of these goods hold exclusive marketing rights. Therefore, the use of famous characters could not be seen as causing confusion as stipulated in the Unfair Competition Prevention and Trade Secret Protection Act."7
While the Unfair Competition Prevention Act offers a means to protect characters used in merchandising, it is a feasible defense only when a business can prove unique commercialization of character goods to fulfill the legal condition "widely known." In that regard, the Unfair Competition Prevention Act is quite insufficient when numerous businesses employ the same character. In principle, character goods are best protected by copyright law based on positive law.8
1 The Supreme Court upheld the lower court's ruling upon appeal (Decision 2010da20044, 9 March 2012).
2 Ruling grants the character "Little Bobdog" protection under the Copyright Law.
3 An importer of tops made in China bearing the image of a popular Korean cartoon character was found guilty of copyright infringement.
4 Sungho Park, 저작권법 (Copyright Law), Pakyoungsa, Seoul, 172 (2015).
5 Formal title: Unfair Competition Prevention and Trade Secret Protection Act
6 Supreme Court Decision 96do139 holds the same position: though widely known in Korea, Mickey Mouse failed to satisfy the legal definition of "widely known" because the character lacks continuous advertisement to ensure that the public recognizes which individual or group is authorized to hold the rights of use from Disney.
7 IP Law Reports, op. cit. p. 1962 and sentencing from lower court trial, p. 259.
8 Se-bin Oh, "캐릭터의 부정사용과 부정경쟁방지법 위반죄의 성부" ("The acceptance or rejection of wrongful use of characters under the Unfair Competition Prevention Act") in 형사재판의 제문제 (Problems in Criminal Trials), Pakyoungsa, Seoul, 247 (2000).
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