법무법인(유한) 율촌 | Yulchon LLC

Yulchon's IP Group represented Locus Corporation in a copyright infringement and unfair competition action brought by Mercis B.V., a Dutch company that owns the rights to the popular Miffy character. Mercis claimed that Locus's character Booto was an imitation of Miffy and sought an injunction.  

Mercis argued that (i) Booto was substantially similar to Miffy and thus infringed Mercis's copyright; and (ii) Locus's sale of the Booto character merchandise that is similar to Miffy (a well-known/famous mark) created confusion as to the source of the product or diluted its famous (more than well-known) mark under the Korean Unfair Competition Prevention and Trade Secrets Protection Act.
 

In Locus's defense, Yulchon first argued that some similarity was unavoidable, given that the two characters expressed a rabbit in simplified forms, and submitted evidence to show that other characters also exhibited such similarities when expressed in simplified forms. Yulchon then argued that Booto was not substantially similar to Miffy because the key elements of the two characters were different, for example, differences created by Booto's Y-shaped nose, heart shaped ears, overall shape of the body and scarf covering the mouth.
 

After two hearings, the Seoul Central District Court held that despite some similarities, such as the oversized heads, simplified physical features and black dotted eyes, the two characters could not be found to be substantially similar because such similarities were commonly found in other cute animal characters, where the nature of expressing a rabbit character inevitably dictated the use of such similar expressions. Further, the Court found that over-simplified characters, such as Miffy and Booto, have relatively restricted ways in which they can be expressed, so even small differences could lead to a finding of dissimilarity. Therefore, the Court held that the differences identified above significantly affected the overall aesthetics of the characters when taken as a whole, even if the difference in aesthetics created by each individual difference was minute. As a result, the Court held that Booto was an original work and denied that consumers would be confused or that Miffy’s distinctiveness/fame would be harmed.
 

This case is meaningful in that it provides a guideline on determining the scope of copyright protection for characters that are expressed in simplified forms.