"Mark Gonzales" Trademark Lawsuit: Korean Company Loses

[Supreme Court Ruling]

BKAVE, a domestic clothing company famous for fashion brands such as Covernat and Lee, has ultimately lost a trademark dispute with Mark Gonzales, a renowned American skateboarder and artist.

The Civil Division 1 of the Supreme Court (Presiding Justice Noh Tae-ak) on July 3 upheld the lower court's partial ruling in favor of Gonzales in the lawsuit (2025Da209384) he filed against BKAVE, which sought to prohibit copyright infringement and other actions.

BKAVE, a domestic clothing company famous for fashion brands such as Covernat and Lee, has ultimately lost a trademark dispute with Mark Gonzales, a famous American skateboarder and artist. Pixabay

[Facts of the Case]

In 2018, BKAVE entered into a sublicense agreement with Sakura Group, a Japanese licensing company, to use Mark Gonzales's signature and designs for its domestic apparel business. Clothing, hats, bags, and other items featuring Mark Gonzales's signature and the bird-shaped angel illustration became extremely popular among young people, and BKAVE's annual sales soared from 5 billion won in 2018 to 40 billion won in 2021.

Even after the license agreement between Sakura Group and Gonzales ended in 2021, BKAVE renewed its contract with Sakura Group and continued to sell products under the brand name "What it isNt" instead of Mark Gonzales, just as before. In response, Gonzales argued that "BKAVE generated unjust profits by using the designs without authorization," and filed a lawsuit to prohibit the sale of products featuring his signature and designs, and to have the products destroyed.

BKAVE countered by stating, "Sakura Group acquired the rights from Gonzales, and BKAVE was granted permission to use the designs through a sublicense agreement with Sakura Group, so there is no issue."

[Lower Court Rulings]

The court of first instance ruled partially in favor of the plaintiff, stating, "BKAVE must not manufacture or sell products featuring some of Gonzales's drawings and signature, and must destroy all such products."

The first-instance court first established that the applicable law in this case was Korean copyright law, based on Article 40 of the Private International Law Act, which states that "the protection of intellectual property rights is governed by the law of the place where the infringement occurred."

The court further found that the "angel" design, depicting a bird-shaped angel, constituted an original work by Gonzales, and stated, "BKAVE's acts of reproducing, exhibiting, and distributing the angel design constitute copyright infringement."

Additionally, the court determined that even after BKAVE changed the brand name to "What it isNt" in 2022, it continued to display and sell clothing, shoes, hats, and other items featuring Gonzales's signature image. The court held that using or selling products identical or similar to Gonzales's signature design, thereby causing confusion with Gonzales's products, constituted unfair competition under the Unfair Competition Prevention Act.

However, the court found that the design featuring the phrase "What it isNt," which was the title of an album released by Gonzales, could not be recognized as Gonzales's copyright. The first-instance court explained, "Copyrightable works protected by copyright law are creative expressions of human thought or emotion. Unless there are special circumstances indicating that the title of a work is itself a creative expression of thought or emotion, it cannot be protected as a copyrightable work. It is difficult to regard 'What it isNt' as an expression of human thought or emotion, so it does not qualify as a copyrightable work."

The appellate court upheld the first-instance ruling.

[Supreme Court Ruling]

The Supreme Court also found the lower court's decision to be correct and dismissed both parties' appeals.

The panel stated, "There was no error in the lower court's judgment that would have affected the outcome, such as misunderstanding the legal principles regarding creative expression or failing to sufficiently review substantial similarity, or violating the rules of logic and experience and thus exceeding the limits of free evaluation of evidence."

Regarding the lower court's finding that Sakura Group did not acquire the intellectual property rights to the disputed designs used by BKAVE, and therefore did not hold the copyright to those designs, the Supreme Court stated, "There was no error in the judgment that would have affected the outcome, such as failing to sufficiently review the applicable law governing the legal relationship of works made for hire or the claims based on the contract for transfer of rights in this case, or misunderstanding the legal principles regarding the identity of works."

Hong Yoonji, Law Times Reporter

※This article is based on content supplied by Law Times.