Recent Supreme Court cases relating to K-pop and golf have shed light on the criteria necessary for right holders to seek redress under the "catch-all" provision of the Unfair Competition Prevention and Trade Secret Protection Act (UCPA).

Article 2(1)(k) of the UCPA was introduced in 2013 as a catch-all provision intended to address unfair competition not clearly defined in other statutes, by prohibiting "acts of infringing another person's economic interest by using that which the person produced through considerable effort and investment … without authorization … in a manner that contravenes fair trade practice or competition order." However, there has been criticism from some quarters that the requirements of this provision are vague, and that lower court rulings on this issue have lacked consistency. 

In 2016, Kim & Chang represented a bakery seeking protection for its general appearance (logo, outdoor signage, interior layout, etc.). While the lower court and the intermediate appeal court both held that the shop's general appearance could be protected under the catch-all provision, the Supreme Court ultimately rejected the defendant's appeal, without clarifying the requirements of the catch-all provision (Supreme Court Decision No. 2016Da6525 rendered on September 21, 2016; see our Winter 2016/17 Newsletter here). However, in two more recent cases, the Supreme Court has finally provided specific criteria to be used when determining whether the catch-all provision is applicable.

Summary of Recent Decisions

A magazine publisher created and sold a photo book containing photographs of BTS, the global boy band phenomenon, without their label's consent or permission. The Supreme Court ruled that the magazine publisher was in violation of the catch-all provision, because (i) the name and photographs of the band and its members had acquired a substantial level of consumer appeal, which was a result of considerable effort and investment by their label (the label was responsible for selecting the BTS members, training, producing BTS' music, performances, concerts, etc. as well as creating and distributing various contents, such as sound recordings and videos), and (ii) the publisher went beyond the ordinary scope of merely providing information, and instead mass produced a photo book using BTS' pictures without the artists' or label's consent and without any compensation. Therefore, the publisher took advantage of another person's achievements in contravention of fair business practices and competition order (Supreme Court Decision No. 2019Ma6525 rendered on March 26, 2020).

In the other Supreme Court case, Defendant used the names, topography, scenery, landscape elements, installations, etc. of Plaintiff's golf courses by transforming them into 3D videos for use in screen golf courses. The Supreme Court held that Defendant violated the catch-all provision of the UCPA, because (i) in addition to the fact that Plaintiff's golf course designs were protected by copyright, the golf courses themselves were a result of Plaintiff's considerable investment and efforts, and (ii) Defendant's screen golf operations were in competition with Plaintiff's golf courses (Supreme Court Decision No. 2016Da276467 rendered on March 26, 2020).

Criteria for Catch-All Provision

In deciding the above cases, the Supreme Court set specific criteria to be used in determining whether the catch-all provision may apply.

Comments

The Supreme Court's latest rulings are likely to improve the predictability of court judgments, by setting specific criteria to be used when applying the catch-all provision to protect right holders from new types of infringement, and for determining whether such elements have been met when applying the provision. In view of these criteria, rights holders may wish to actively seek remedies through the catch-all provision for matters where conventional remedies under intellectual property law may be unavailable.