미국법상의 상표의 희석화 보호규정에 관한 분석

육소영 정보통신정책연구원 2003 CLIS Monthly Vol.2003 No.2

IT 패션과 지적재산권

육소영 경북대학교 IT와 법연구소 2016 IT와 법 연구 Vol.0 No.12

Information technology has deeply influenced on any aspects of modern society and fashion is undoubtedly one of them. Fashion has mixed characteristics as applied art and industrial goods. Accordingly, it has been a long time issue in intellectual property whether fashion should be protected under design or copyright law. The fashion industry prefers protection under design law and trademark law, but designers favor protection under copyright law. The problem is accelerated in applying information technology to fashion industry. In the past, the debate surrounding fashion was based on the concept that fashion was the result of creativity by human being. However, introduction of information technology to fashion narrows creativity of human being. Now, creativity is made in producing a machine or a computer program. Application of information technology to fashion makes fashion as industrial goods rather than creative works. This can be supported by popularization of a CAD program and a 3D scanner in fashion design. Recent Louboutin case in the U.S. may show such a trend in fashion industry. In my opinion, this trend will be slowly profound as information technology becomes popular in fashion industry.

상표의 동일·유사와 출처혼동 판단에 관한 주체적 기준

육소영 충남대학교 법학연구소 2022 法學硏究 Vol.33 No.3

상표법은 상표권자 보호와 수요자 보호라는 이중의 목적을 가지고 있 으며, 이러한 목적을 달성하기 위하여 상표권의 보호범위를 등록상표와 동일한 상표만이 아니라 유사한 상표까지, 지정상품과 동일한 상품만이 아니라 유사한 상품에까지 확대하고 있다. 상표의 동일·유사는 상품의 동 일·유사와 함께 상표출원부터 등록, 권리행사, 등록무효와 취소 등 상표 권의 발생부터 권리소멸까지 상표법 상의 거의 모든 쟁점을 논함에 있어 전제가 된다. 희석화 보호가 인정되기 시작하면서 상표보호에 있어 상품 의 유사성이 차지하는 비중은 약화되었다고는 하지만 상표의 동일·유사 판단이 상품과의 상관성을 고려하지 않은 채 이루어질 수는 없다. 특히 상표의 유사는 해당 상품의 일반적 수요자를 기준으로 판단하게 되어 있 어서 상품이나 서비스의 수요자가 누구인지는 상표의 유사판단에서도 중 요한 의미를 갖는다. 상표는 출처표시기능을 통하여 수요자가 자신이 원하는 상품을 선택할 수 있도록 하는 지표가 된다. 그러나 상표는 수요자에게 상품을 구별할 수 있게 하는 역할만을 할 뿐 실제로 수요자의 상품 선택에 영향을 미치 는 것은 상품의 전문성, 상품의 가격, 거래소요시간 및 거래의 복잡성, 거 래빈도 등이다. 그리고 소비자의 상품선택에 영향을 미치는 이러한 요소 들은 상표선택에 매개가 되는 상표의 식별력에도 영향을 미친다고 할 수 있다. 만일 상품의 속성이나 거래사정을 고려하지 않고 일반적 수요자를 기준으로 상표의 유사판단을 하는 경우에 구체적 수요자를 기준으로 하 는 경우보다 유사판단의 범위가 지나치게 넓어지거나 좁아질 수 있다. 그 러므로 기존과 같이 상표의 유사판단에 있어 일반적이고 평균적인 수요 자를 기준으로 할 것이 아니라 가능한 범위에서 상품 자체의 속성과 상품 거래의 특성을 반영하여 주체적 판단기준을 설정할 필요가 있다. 상품의 수가 증가하고 그 유형이 다양화되고 있는 반면에 상표의 확대 는 인간의 인지능력의 한계로 제한을 받을 수밖에 없어서 후발 시장진입 자의 상표선택의 폭이 좁아지고 있다. 수요자의 구매과정에서 이루어지는 상표의 인지는 분명 상품의 속성과 거래특성에 의하여 영향을 받으며, 이제는 상표선택의 폭을 넓히기 위하여 수요자의 구매에 영향을 미치는 것으로 인정된 이러한 요소들을 법률판단에서도 고려하여 유사판단의 주 체적 기준을 새로이 설정하는 것에 대한 검토가 필요한 시점이다. The trademark act has a dual purpose: protection of trademark owners and consumers. In order to achieve this purpose, the trademark act expands the scope of trademark rights to not only the same trademark as the registered trademark but also to similar trademarks, and not only to products identical to designated goods but also to similar goods. The sameness or similarity of a trademark, along with the sameness or similarity of a product, is the premise in discussing almost all issues under the trademark act: from the occurrence of trademark rights to the extinction of rights including trademark application, registration, exercise of rights, invalidation and cancellation of registration, etc. Moreover, as the protection of well- known trademarks has been expanded and dilution protection has begun to be recognized, the role of product similarity is weakening, while the judgment of sameness or similarity of marks still maintains an important position. Despite that, the judgment on the sameness or similarity of a mark cannot be made without considering the correlation with the product. In particular, the similarity of a mark is judged from the perspective of the average consumer, and then who the consumer of the product or service is important in judging the similarity of the mark. Trademarks are the media that enable consumers to choose the product they want through the source indication function. However, trademarks only allow consumers to distinguish products, and what actually affects the consumer choice is product attributes such as the price and time, complexity of transactions, and transaction frequency etc. Moreover, these factors also affect the distinctiveness of the trademarks. If the judgment of trademark similarity is made from the perspective of average consumers without considering these factors, the scope of similarity may be too wide or narrower than from that of actual consumers. Therefore, it is needed to establish the judgement criteria of the subject by reflecting the features of the product itself and the product transaction rather than maintaining the average consumer standard as in the past.

The History and Current Status on Fair Use of Copyrighted Work in Korea

육소영 인하대학교 법학연구소 2012 法學硏究 Vol.15 No.3

Korean Copyright Act purports to balance between author’s private interests in his work and user’s public interest in his use, and finally seeks to improve and develop the culture and related industry. Several provisions regarding author’s property rights on his works are stipulated from the copyright holder’s perspective, but provisions limiting author’s exclusive property rights on his works permit users to freely utilize author’'s works, and those provisions intend to protect public interest in free use. Since its first adoption of Copyright Act in 1957, limitations on exclusive property rights have been codified in the style of listing each condition. Then, whenever amendment to Copyright Act is made, conditions to limit exclusive property rights are added. However, the list of conditions cannot follow societal change and technological development. Accordingly, introduction of a fair use provision has been discussed, but failed due to disagreement on several issues. Recently, as a result of Korea-U.S. FTA, a fair use provision is introduced. The provision is composed of 4 factors with which fair use is decided. However, before adoption of a fair use provision, the Supreme Court already applied 4 factors in constructing fair quotations under article 25. After adoption of a fair use provision, several unresolved issues including plausibility of its location still remain. Moreover, it is unclear that this fair use provision is in favor of users. Despite that, reviewing the history and status of fair use, it is strongly expected that the provision will be of help to strengthen a user's chance to lawfully use copyrighted works.

권리불요구제도 - 미국과 영국의 권리불요구제도의 검토를 포함하여

육소영 한국지식재산학회 2011 産業財産權 Vol.- No.34

According to the concept of a trademark, very few visible elements can be a trademark and favored elements by customers are limited among them. In contrast, because the attitude to a trademark influences purchase of product,select of a trademark is critical to an applicant of trademark registration. Customers feel friendly toward familiar expression used in daily conversation,but such expression is impossible to be registered as a trademark due to its non-distinctiveness. However, considering correlation between a trademark and product sales, applicants may try to include familiar expression into a trademark and that increases a composite trademark. A composite trademark can be registered even though it contains a non-distinctive element if it is distinctive as a whole. For this composite mark, only distinctive part can be given trademark right, but the public mistakenly consider its whole parts to have trademark right. Disclaimer makes the extent of trademark right clear and helps a user to use the trademark without any fear of infringement. However, regardless of this merit, very few countries such as the U.S., U.K. etc adopt the disclaimer in their trademark systems and even these countries do not actively use the disclaimer. The reason to adopt the disclaimer is that they have a first-to-use system but the U.K. even has the provision to limit trademark right subsequent to registration. In Korea, the disclaimer was adopted in 1949, subsequently deleted and was discussed to be readopted in 2009. It was not adopted as a law at that time, but there is strong possibility to be re-discussed in the future. Under Korean trademark system, a first-to-file system, the disclaimer can be a way to overcome demerits of a first-to-file system. However, fundamental issues surrounding disclaimer in a first-to-file system are still in question. The disclaimer and the limit of trademark right under section 51 have the same result-limiting the extent of trademark right. Thus, if the issue of demarcating trademark right can be resolved properly in amending section 51, in my opinion, there is no need to introduce disclaimer into Korean trademark law.

냄새상표의 보호 - 미국법과 E.U.법에 대한 분석을 포함하여 -

육소영 한국지식재산학회 2013 産業財産權 Vol.- No.41

A scent mark is introduced in 2011 as the result of Korea-U.S. Free Trade Agreement. Before 2011, only visual signs could be protected as trademarks under Korean Trademark Law and 2011 amendment extends protection to non-visual marks. In the U.S., Lanham Act does not stipulate clearly the protection of a scent mark, but since TTAB admitted protection of the scent mark in Clarke, scent has been recognized as a mark to be protected under Lanham Act. Also E.U. regulation describes protection of a mark which can be represented graphically and ostensibly a scent mark may be expressed graphically. Even though a scent mark is included into protected marks legislatively, a scent mark must be recognizable objectively to satisfy some requirements for registration. First of all, it must be described or represented graphically. Under Korean and U.S. law, a scent mark has to be described and a specimen must be submitted. However, in E.U., Office for Harmonization in the Internal Market denies the possibility of graphical expression on a scent mark. Thereby, a scent mark cannot be protected in E.U. Even in Korea and the U.S., other obstacles bar protection of a scent mark: distinctiveness and functionality. A scent mark is hard to be inherently distinctive and usually acquires secondary meaning by use. However, there is possibility that the use of a scent mark makes the mark itself functional. Therefore, in the U.S. since 1990, a scent mark has been registerable, but very few scent marks are actually registered. Moreover, considering a complicated process and nature that scent is detected by a human being, a scent mark may not be proper to be protected as a trademark. However, protection of a scent mark is already resolved legislatively and then, it is not a proper time to discuss validity of a scent mark. Under the current situation, it is advisable that methods to register and protect a scent mark must be researched more thoroughly and until completion of the research, registration or protection of a scent mark need to be restrained.

컴퓨터프로그램의 역분석과 침해 : reverse engineering v. infringement

육소영 忠南大學校 法學硏究所 2004 法學硏究 Vol.15 No.1

Intellectual property law purports to protect right holders and simultaneously to promote fair use of intellectual properties. In real, scientific technology and information may be developed by revising and improving already existed creative works. Such revision and improvement have been accomplished by various approaches and reverse engineering is one of ways to develop them. It is true that the creation of computer program is encouraged by permitting an exclusive right to its creator. However, in comparing to other intellectual properties, the use of existed computer programs is more necessary to follow up the development of computer hardware and to achieve compatibility with other programs for a computer program. In addition to the fair use clause, Computer Program Protection Act expressly recognizes reverse engineering of the program. Stipulation of reverse engineering may be incurred by unique nature of a computer program which demands the broad use of other programs. Nevertheless, in constructing reverse engineering, it is frequently confused with program copyright infringement. The use of other programs is common for both of them and such a common element increases confusion. However, they are different because reverse engineering is lawful but infringement is illegal activity. From an economic point of view, reverse engineering can increase competition in the marketplace which will lower prices and promote follow-on innovations by second comers. Despite that, currently, lawful reverse engineering is strictly limited for a compatible purpose. Accordingly, to be a leading country of IT industry and to strengthen computer software industry, broad protection of reverse engineering is required.

싸이월드의 성공비결

육소영,이광우,김은옥,조수정,서보원,유인상 忠南大學校 經營同友會 2004 經友論集 Vol.35 No.-

미국 로스쿨 제도의 조망 : 교과과정을 중심으로

육소영 숭실대학교 법학연구소 2004 法學論叢 Vol.14 No.-

거울상 이성질체 관련 발명의 특허보호

육소영,변상현 한국지식재산학회 2005 産業財産權 Vol.- No.17

Enantiomer invention is known for bringing great profits to pharmaceutical companies and patent grant will help the companies to secure such profits. However, because enantiomers have identical physical properties except the direction of plane of polarized light and have identical chemical properties except optically active reagents, there seems to be no novelty and inventiveness in enantiomer invention. In reality, even though it is generally known to a skilled person that substances with an asymmetrical atom enable themselves to occur in the form of a racemate or enantiomers and one of enantiomers has a quantitatively greater effect than the other or a racemate, enantiomer invention may be patentable if it is not directly disclosed in the prior art and has more surprising effect than a racemate. In contrast, enantiomer itself is more difficult to be patentable than the use thereof since it is easy to anticipate enantiomer from a known racemate. Finally, regardless of patentability of enantiomer invention, from the outset, it must be scrutinized whether patent protection of enantiomer invention is justifiable from the economic perspective. Considering a modern trend toward increase of selection or improvement invention and the broadening scope of patent, enantiomer invention must be examined positively when it may contribute to development of technology and technical information.