GANGNAM STYLE VS. GANGNAM STYLE
By Eunice Chung
Note: Eunice Chung is a native Korean and a former resident of the Gangnam district of Seoul, South Korea and she is also a long-time fan of PSY.
The music video entitled GANGNAM STYLE (강남스타일) performed by a South Korean pop artist Park Jae Sang (better known as his stage name “PSY”) went viral on YouTube and has become the second most-watched YouTube Video of all time with more than 620 million hits. The popularity of the song/music video and PSY’s signature “horse-riding” dance moves has drawn lots of media attention and has spawned hundreds of parodies and tribute videos all over the world.
Here’s the video clip for those who haven’t seen it:
Interestingly, PSY has waived his copyright to the song, which facilitated fans’ ability to create numerous parodies and tributes. This waiver is considered by some a brilliant marketing tactic to promote the song. (For more information, see an interesting blog article by Dae Ryan Chang about the marketing strategies of Gangnam Style).
Given the global popularity of the song/dance, it is not surprising that numerous third parties have filed trademark applications for GANGNAM STYLE. The Korean Intellectual Property Office started to see a surge in number of new Trademark applications for GANGNAM STYLE beginning in August of this year, totaling 9 new applications, around the time PSY’s video started to receive world-wide media attention. The goods and services applied for in connection with this mark vary from clothing and retail services to restaurants and electronic document services.
Although PSY decided to waive the copyright to his song, YG Entertainment decided to file trademark applications for GANGNAM STYLE, to go after third party users of the GANGNAM STYLE mark for their own profit. YG Entertainment has already requested a German online shopping company discontinue its sales of a t-shirt which reads: “KEEP CALM AND GANGNAM STYLE.” In order to increase international marketability, YG Entertainment has filed for GANGNAM STYLE (both word and design marks) in late August, after many other GANGNAM STYLE marks had been filed.
This is one of the four GANGNAM STYLE marks YG Entertainment has filed in Classes 9, 25, and 28:
Just as in the U.S., a trademark application with an earlier filing date has priority in registration in South Korea. YG Entertainment is hoping their unprecedented popularity gained in short period of time would help their case. In Korea, both the Unfair Competition Prevention and Trade Secret Act (“UCPA”) and the Korean Trademark Act can provide protection for unregistered famous trademarks against senior registered marks, if the bona fide owner of the purportedly famous mark can prove the following :
Unfair Competition Prevention and Trade Secret Protection Act (“UCPA”)
(i) The subject mark at issue must be famous or well-known in at least in one geographic location in Korea;
(ii) The respective marks are similar;
(iii) There is a likelihood of confusion or dilution.
The Korean Trademark Act
(i) The subject mark must have been famous in Korea or internationally at the time the senior mark was registered;
(ii) The respective marks are similar, although the similarity of the goods and/or services is not required;
(iii) The owner of the senior registered mark registered the mark in bad faith to prevent the rightful owner from entering the domestic market or to force a distributorship agreement with the rightful owner or to sell the trademark to the rightful owner for monetary compensation.
Another potential roadblock for the GANGNAM STYLE mark is that “GangNam” is a name of geographic location in Seoul, which literally translates into “South of the River,” known as the most affluent and dynamic neighborhood in Seoul or in South Korea. (For more information on GangNam, see http://en.wikipedia.org/wiki/Gangnam_District) .
It appears that when YG Entertainment filed in Korea, they also filed in the U.S. around the same time in Classes 9, 25, and 28.
Would the application in the U.S. be deemed as merely descriptive due to the fact that “GangNam” is a geographic location in Seoul? Even though it is not a geographic location in the U.S., given the popularity of the song GANGNAM STYLE, it is possible that many potential consumers would have the knowledge about what the term “GANGNAM” means.
What are your thoughts on the future outcome of the U.S. and Korean applications, specifically on the famous marks doctrine and geographical descriptiveness issues ?