The problem of patenting idol group names brought up by the ‘Kara’ contract termination issue
By Jeon Sojeong, patent lawyer, IP&company
Translator’s note: Where the name for idol group Kara is written as “Kara” I am translating directly from the Korean name “카라” but where the name appears as “KARA” it was also originally written as “KARA” in the Korean article.
January 26, 2011—These days, the entertainment industry is monitoring the unpredictable ‘Kara incident’ with keen interest. At this point, both scenarios are equally expected: that the contentious issues [between Kara and their management] can be resolved or that the group has reached it limit. In all honesty, I have no interest in girl groups, but as the ‘Kara’ contract termination controversy gets thicker, management company DSP Media has moved to gain exclusive trademark rights to the name ‘Kara’. I’ve never thought of this before, but it struck me that the question of who owns the trademark rights to the names of idol groups could become a source of big problems, and so I looked into to whom the trademark rights of these names belong.
The application for trademark rights to KARA 3 years after debut
On December 7, 2010, Kara’s management company DSP Media filed an application for exclusive trademark rights to ‘KARA’, as written in English and not in Korean, for products pertaining to: Category 9 (downloadable music files), Category 35 (Albums that include music/songs from trademark for large-scale distribution), Category 41 (concerts and exhibits, sound recordings).
What’s questionable about this action is that it came 3 years after Kara’s 2007 debut and a good month before the present situation regarding [Kara’s] contract termination.
It appears that until now KARA’s management company had an easygoing attitude toward trademark rights. But after experiencing increasing difficulties with the members and their parents, it appears the company decided to pre-empt the current situation. However, ‘CARA’ was already registered and its derivative ‘KARA’ is also a name associated with famous brands in clothing, cosmetics and even toys. So, [DSP] couldn’t do much about that. And when this news became public, it became an even bigger controversy.
The reason why the application to trademark Dong Bang Shin Ki was denied
As more and more reports come in that KARA may split many people are worried that the group will become the 2nd Dong Bang Shin Ki. Consequently, I suddenly became curious about whatever happened to the trademark rights related to Dong Bang Shin Ki and decided to find out.
Choikang Changmin and U-know Yunho as a duo are continuing activities under their old group name ‘Dong Bang Shin Ki’, and the remaining three—Park Yoochun, Kim Junsu, Kim Jaejoong—have formed a new unit ‘JYJ’ and are active under that name.
Upon researching who owns the trademark rights to name Dong Bang Shin Ki I came across an interesting fact; from the beginning, management company SM Entertainment didn’t file an application for the Korean name for Dong Bang Shin Ki but instead filed for the name ‘東方神起’ in Chinese characters.
Different from my expectation that the name would be registered for a variety of products, the majority of [SM’s] applications were flat-out denied and only the name for “東方神起” in simplified Chinese “东方神起” was registered for products falling under Category 9 (downloadable recordings, sound recordings for compact discs). I further investigated whether there were registrations with similar trademark names, but there weren’t any.
I became so curious as to why the application for “東方神起” got denied that I filed a special document request with the Korean Patent and Trademark Office to find out the reason. The reason for the rejection is interesting and is fully enunciated in the first instance opinion issued by the Korean Patent and Trademark Office.
“The requested trademark filed by SM Entertainment is inextricably and intrinsically connected to famous a cappella dance and singing group members U-know Yunho, Youngwoong Jaejoong, Micky Yoochun, Xiah Junsu and Choikang and as such, under Trademark Act Article 7.1.6, this request cannot be accepted. End”
Therefore, under Article 7.1.6 of Korea’s trademark law it is not permissible to register a trademark for names related to famous people, and it was on this basis that [SM’s] application was denied. What Dong Bang Shin Ki’s management company SM Entertainment failed to recognise is that the very act on their part of filing an application for trademark registration for ‘Dong Bang Shin Ki’ underscored the fact that Dong Bang Shin Ki and SM Entertainment are clearly two separate legal entities; this is why such an ironic (from SM’s perspective) opinion was issued. This undoubtedly left SM Entertainment dumbfounded, but what could it do? The only way to avoid possible rejection on grounds of Article 7.1.6 is to receive permission from the famous people to whom the name is attached and submit in writing an attestation of this permission. And so, SM Entertainment secured the agreement of the members of Dong Bang Shin Ki and submitted it in writing to the Korean Patent and Trademark Office. But what is this? The Korean Patent and Trademark Office issued a second instance opinion that was identical in content to the first one.
“The requested trademark filed by SM Entertainment is inextricably and intrinsically connected to famous a cappella dance and singing group members U-know Yunho, Youngwoong Jaejoong, Micky Yoochun, Xiah Junsu and Choikang and as such, under Trademark Act Article 7.1.6, this request cannot be accepted. In addition, because this request involves minors, under Patent Law Article 3, Article 5 and Article 909 of the Civil Code, it is necessary to also obtain the permission of the minors’ parents and submit it in writing. End.”
Because at the time of request, the members of Dong Bang Shin Ki were minors, the second instance opinion insisted that the permission of the members’ parents also be submitted in order to preserve transparency in adhering to the law. Afterwards, for whatever reason related to the state of relations between the management company and the parents of the Dong Bang Shin Ki members, [SM] was unable to submit documentation attesting to the parents’ permission, and the final decision on the application to the trademark rights for Dong Bang Shin Ki was a flat-out rejection. This, supported by the same reasons mentioned above, also applies to attempts to trademark the Dong Bang Shin Ki name to products belonging to Category 28 (toys), Category 25 (clothing) and Category 18 (accessories).
Considering the reasons for rejection in the Dong Bang Shin Ki case, I started to think that the KARA contract termination situation brings to light the complications that arise when management companies have to face not only the members of their idol groups but also their parents who express dissatisfaction at the profits distribution scheme and other related activities.
Is it because of the parents’ difficulty in yielding the trademark rights to ‘Dong Bang Shin Ki’ that their management company was not able to reap the potential benefits from the products, clothing, accessories and toys sold tagged with the group’s name? This is all just speculation on my part, but the thought of these attractive idols jumping so early into the equally attractive world of entertainment whilst their management company and even their parents remain largely ignorant of their stress leaves me overwhelmed with pity.