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.
Source: Vop.co.kr
Translated by: Jimmie of TheJYJFiles
Shared by: TheJYJFiles
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JYJ3 
oohh,my slow brain,i llbe back after im understand the main idea…o my brain got stuck in the midlle of night.see u later.
i thought the reason why it was rejected is because of the word East on their name..now im confused
I’ve commented about this issue various times on syc last year but a lot of people either bashed me or didn’t understand my point….something that cassies and JYJ should be worried about now is the fact that if HoMin keep using TVXQ only for themselves,by patent law the trademark TVXQ will be associated only to U-know Yunho and Choikang,as they are the only ones who now promote under that name,the risk is that SM can a year from now if they have HoMin consent(as now they are adult)fill another request to gain the copyright over the name and when that time comes there will be no reason to reject it.The only way JYJ can oppose to this is by suing NOW SM and HoMin for using the name;if they wait until the time SM will try to do that,their claims will be reject as it can be easely proved that they didn’t promote under the name for long and didn’t object to the others using it for themselves.
But JYJ will probably not sue now cause they don’t need another expensive lawsuit and the hate that will come from HoMin fans and delusional cassies who will accuse them of hating their “brothers”.
Truth is if they sue JYJ will be protecting TVXQ’s essence and the chances of them getting back together under the name of TVXQ one day will be higher than if SM gets the copyright of it.
I sers hope that i am wrong,although i doubt it cause seeing how things are evolving nowdays this is the only explanation that my mind come up with for why SM is creating a new fandom for the boys by alienating old pro5cassies and putting up with the loss of money,the boycott and the growing number of antis just to promote HoMin under TVXQ name.
OMFG im scared now. You make sense.
don’t be scared maybe it’s just me over analyzing things,i tend to do that alot i even freak my self out^.^’
Even if it is really SM plan to do that,nothing will change for us we will forever treasure TVXQ act1 and move on by cheering for JYJ ^_^
SM can keep the name and the products,JYJ along with us will protect those memories and TVXQ original essence^^
ohh wow you made me feel a whole lot better. Thnxx >.<
Yeah lets protect the memories and TVXQ original essence. ❤
@Cris,i think it make sense, and SM sure know JYJ will never want to sue HM and the time will help SM!
wow…that actually makes alot of sense. i never even thought about that. but of course JYJ will not sue HoMin over the name so i’m almost certain that SM will eventually be able to copyright it.
To me the name dong bang shin ki has no value its just a name but wat has value is the members So why bother fighting over trademarks, jyj has already famous without the word dbsk right next to their namev
@Cris
I personally think SME will have to PROVE JYJ ‘officially’ withdrew from DBSK/TVXQ. Can’t recall any statement or action that says that is the case. Contrary to that, all their comments have said they still consider themselves DBSK/TVXQ. Remember the first instance mentioned all 5 names, IMHO that gives ‘ownership’ to all 5. Promoting as 2 under the name is one thing, the others not being there is something different.
Besides, aren’t HOMIN saying “they should settle, and just come back”? To me, that indicates JYJ are still considered (by HOMIN) part of the group, ‘they are just having a little hissy fit.’
I have faith that JYJ have an excellent law firm and will be looking out for their interests. Everything I’ve seen so far from SME has shown they know they are going to lose this case. Desperate actions cause one to make mistakes, they appear to be tripping all over the place.
I’m not taking SME lightly, but their actions just don’t come from a view of strength. Besides, the issue isn’t about the name of the group, it’s about the contract. They signed these contracts as individuals, not as a group. The copyright rights with regards to the songs, are under the names of the lyricists/composers, therefore, also the royalties (as individuals in the group).
I could be wrong, but I don’t think SME gives a hoot about the name of the group. They would not have disrespected in so many ways, the ones who really made the group famous, their fans. They were only interested in the monetary gains from the group.
My concern was only about the brand and name TVXQ,SM didn’t throw them out it’s JYJ who choose not to continue to work under them and to form a new unit with a new name that could be easely seen as them renouncing to it.
A brand is connected to who use and to who make it successful,SM can prove that now the brand TVXQ is only connected to HoMin and the buyers identified with only the two of them consequently they have more right to it than JYJ.A paragon could be made with Zara brand scandal few years ago,Zara which is a clothes worldwide brand opened a store in Turkey the problem was that in that country there was already another brand called Zara connected to sweetes,ZaraClothes filled then a lawsuit against ZaraSweeties claiming that the copyright of that name was theirs,no matter it was proven that ZaraSweeties was older and has been using the name way before them,the latter lost and had to change the name cause worldwidely the brand Zara was associated to the clothes.My point here is that it doesn’t matter who use first it matters with what or who the buyers identifie a certain brand.
I doubt that the name Dong Bang Shin Ki will be patented because another reason the patent office gave that was not included in the article is that the official also said that “Dong Bang” meaning East Sun (?) cannot be patented because the name does not belong to SM. SM cannot own the name East Sun because it is a common use word.
That reason was given by the chinese patent court,am not sure if it applies also to the Korean patent court as it seems that here that reason is omitted.
I don’t think SM can really do much I don’t think the consent of only two members is enough.
How can SM get the trademark if there is not completed 5 members on the group ?And that HM have no shame at all when using that name ,without the other 3 members ,I was just wondering how they can do it ?….
SM can do that for the simple fact that they are shameless?!!!!!
ohh,but i think our boys are a wise man,they didnt care about money,but attitude,respect,do you know unnamed song?that part of the truth that we just read the lyric,we know whats happen to them in that time,i feel my heart hurt,i lost my breath,and my tears goind drained,in part they payday got deficit coz of expense,while they make a mega big success in their hardworked?their bloody tears and sweat,mean nothing?then when yc?askedwho?lend money?he asked interest?WHAT KIND OF FAMILY SM E MEAAANNNN??!????????????