Intellectual Property Infringement | Assisting a Client Sued for Damages and Reducing the Award by 60%

Intellectual property infringement refers to the act of using another person's intellectual property rights, such as patents, trademarks, utility models, designs, and copyrights, without permission.

Such conduct can hinder industrial development and cause harm to consumers.

The representative types of intellectual property infringement are as follows.

∙Copyright infringement: copying or uploading an image one does not own without permission

∙Trademark infringement and counterfeiting: using a trademark without authorization in a manner that can cause confusion as to the source of a product

∙Patent infringement: making, using, selling, or offering an invention or design without the permission of the patent holder

∙Right of publicity infringement: using an individual's name, likeness, or features without authorization in product listings, advertising, or other commercial activities

🔗Copyright infringement is punishable under the Copyright Act by imprisonment of up to five years or a fine of up to 50 million won.

🔗Trademark infringement and counterfeiting are punishable under the Trademark Act by imprisonment of up to seven years or a fine of up to 100 million won.

Patent infringement may also be punished under the Patent Act by imprisonment of up to seven years or a fine of up to 100 million won.

If a right of publicity is infringed, the injured party may claim as damages the amount it could have received had it sold the right commercially.

To proceed with an intellectual property infringement suit, one must clearly assert the cause of the infringement.

An unclear statement of claim can be a cause of delay in the litigation and a ground for rejection, and even if one prevails, compulsory execution may be impossible, which can waste time and money.

The plaintiff should keep this in mind and specify the subject of the requested injunction in concrete, individual, and factual terms.

For example, statements such as ‘the defendant must not infringe the plaintiff's patent or use the trademark’ are meaningless, and unclear terms such as ‘etc., and the like, all, related’ must not be used.

When seeking to prohibit the production, sale, or transfer of an item, one should specify, as concretely as possible through the product name, product photographs, product number, and product description, the item that the opposing party is actually producing and selling, so that the enforcement authority can identify the subject of compulsory execution without difficulty.

Let us look at how the defendant may respond.

It is important for the defendant to take a basic position suited to the situation among the following and to respond clearly: ▲challenging the lack of specificity in the statement of claim, ▲contesting whether the plaintiff's intellectual property rights can be protected, ▲denying the infringement, and ▲cases where conduct appears at first glance to be infringement but there are matters to raise in defense.