상표침해와 희석화에서 표현의 자유로서의 패러디의 보호범위 -상표가 상품출처표시로 사용되는 경우에도 표현의 자유가 우선하는가?-

The U.S. has protected trademark parodies based on the freedom of expression enshrined in the First Amendment. In trademark infringement cases, courts have primarily used two methods to protect trademark parodies. The first method involves determining whether the defendant’s parody constitutes a successful parody and then considering the successful parody when assessing the likelihood of confusion. A successful parody can avoid liability for trademark infringement. The second method involves comparing the benefits of preventing confusion over the source of goods protected by trademark law with the freedom of expression protected by the First Amendment. The "Rogers test" has been used as a criterion for specifying this method. In dilution cases, courts protect parodies as fair use based on 15 U.S.C. § 1125(c)(3)(A)(ii) which provides an exemption from liability for dilution. The U.S. Supreme Court, in its Jack Daniel’s decision, held that:(i) the "Rogers test" does not apply when a trademark is used as a designation of source, and in such cases, trademark infringement must be determined based on the likelihood of confusion; and (ii) the defendant’s use of the trademark does not constitute "noncommercial use" under 15 U.S.C. § 1125(c)(3)(C) simply because the defendant parodies another’s trademark. This decision strengthens the rights of trademark owners by limiting the scope of the "Rogers test" and by restricting the scope of fair use for parodies. To date, there are no decisions in the Republic of Korea that protect trademark parodies in trademark infringement or dilution cases. Trademark parodies are grounded in the freedom of expression and deserve protection. First, in determining trademark infringement, it is necessary to consider the circumstances of a successful parody by introducing the U.S. trademark law principles. Next, in determining dilution, the circumstances of a successful parody should be considered. If dilution is determined, the standards presented by the Seoul Central District Court in the 2016GaHap36473 decision should be applied to determine whether the defendant’s parody falls under Article 1-2, Paragraph 4 of the Enforcement Decree of the Unfair Competition Prevention Act. The method seeks a balance between the interests protected by the Trademark Act and the Unfair Competition Prevention Act and the interests protected by freedom of expression, and can provide an effective way to protect trademark parodies.