Lee International

In a recent decision (Case No. 2024Na2015375), the Seoul High Court upheld a lower court ruling in favor of internationally acclaimed artist Mark Gonzales in a copyright infringement and unfair competition lawsuit against Korean fashion company BKAV.

BKAV obtained a sub-license in 2018 through Japan's Sakura Group to use the MARK GONZALES trademark and associated designs in Korea. Leveraging both the trademark and Gonzales’s distinctive angel motif, BKAV launched a successful line of apparel, footwear, and accessories under the “MARK GONZALES” brand, achieving significant commercial success.

However, after the original license between Gonzales and the Sakura Group expired in late 2021, BKAV continued to use the same designs and motifs under a new brand name, “What it isNt”. In response, Mark Gonzales filed a lawsuit, asserting that BKAV’s continued use of his artwork and signature consituted copyright infringement and violation of the Unfair Competition Prevention Act.

Seoul High Court’s Ruling

The Seoul High Court affirmed that the disputed design was originally created by Mark Gonzales in 1996 and made publicly available through magazines and poetry collections by 1998. It agreed with the lower court that the Sakura Group, from whom BKAV obtained its sublicense, held only limited rights for reproduction and promotion, not full copyright ownership. Consequently, BKAV’s continued use of the design without Gonzales’s express consent constituted copyright infringement.

The court further found that BKAV’s use of Gonzales’s design and signature was likely to mislead consumers and cause confusion with Gonzales’s genuine products and commercial activities. On this basis, the court also confirmed that BKAV’s actions amounted to a violation of the Unfair Competition Prevention Act.

As a result, BKAV was ordered to cease the manufacturing, marketing, and distribution of all products featuring the disputed design and signature, and to destroy all related merchandise, promotional materials, and packaging. The case is currently under appeal before the Korean Supreme Court.

Key Takeaways for Brand Owners

This case highlights the critical importance of thorough legal review and proactive risk management when entering into IP licensing agreements—particularly those involving well-known global brands. Licensing structures that involve sub-licensing demand a clear understanding of IP ownership, scope of permitted use, and obligations following license termination.

Because copyright protection does not require registration to be enforceable, agreements must clearly specify whether the original rights holder must approve or be involved in any sub-licensing agreements. Provisions such as requiring prior written consent for sublicensing or stipulating that a sublicense automatically terminates with the main license can significantly reduce the risk of future disputes.

This ruling serves as a valuable cautionary tale for companies involved in IP-based brand licensing. It emphasizes the importance of consulting legal counsel with specialized expertise in IP law early in the process.  A thorough review of contracts and the establishment of clear safeguards can help prevent costly disputes.