INTRODUCTION
In late September of last year, Beijing’s No 1 Intermediate People’s Court heard a case involving the Chinese Press using pictures of Beatrix Potter’s fictional character, Peter Rabbit, on books. The British company Frederick Warne Co. Ltd. alleged infringement upon their trademark of Peter Rabbit illustrations, which was registered in 1994 (a decision has not yet been reached in the case).
The rights attached to a fictional character can generally be referred to as “property rights”. As is the case with most property, those rights include the right to use a fictional character’s name, image, appearance, etc., to receive the benefits resulting thereof and the right to dispose of it. These rights are in principle owned by the creator of that character unless lawfully transferred, created in the course of his professional activity for his employer, commissioned to be created, or conferred on the creator’s descendants for the exploitation of his/her work.
The secondary exploitation of a fictional character’s essential features by its creator in relation to various goods and/or services to exploit consumers’ affinity with that character can be defined as character merchandising. This merchandising activity is very seldom conducted by the creator of the fictional character, and thus the various property rights vesting in the character are subjected to contracts which authorize one or several interested third parties (the merchandisers) to use the character. The main economic rights relevant to the merchandising of characters are the rights of reproduction, adaptation and communication to the public in any manner or form–books, for example.
Beatrix Potter was a pioneer in the secondary exploitation of literary works. The animal characters from books Peter Rabbit and Squirrel Nutkin were recreated and are still being recreated as still as soft toys or other articles for children. This merchandising successfully continues today, with a wider range of merchandise. On May 25th, 1919, Frederick Warne & Company Limited was registered. Although the imprint is still used by Penguin Books, Frederick Warne & Company Ltd really ceased to exist on December 31st, 1984.
LEGAL PROTECTION
The rights attached to a character may enjoy legal protection in a number of forms, either automatically (copyright), or following an act before a competent authority (for example, trademark or industrial design registration).
Copyright
Copyright protection starts on the date of creation of the work as expressed in a material form such as writings, drawings, etc. Contrary to industrial property rights such as trademarks or industrial designs, a work enjoying copyright protection is protected against all unauthorized uses, irrespective of the goods or services covered by each use. Generally, no one may exercise economic or exploitation rights without the authorization of the copyright owner. Needless to say, enforceability of such IP rights is not dependent upon effective registration or patent granting, although there are public registrars to this effect that provide evidence of the date of creation of such works.
It is generally accepted that copyright must be recognized and protected at least throughout the life of the author. After his/her death, his/her work continues to be protected for a certain time. Under Article 21 of China’s Copyright Law, copyright protection extends through the lifetime of the author and 50 years after the author’s death. Article 21 later states in paragraph two that “where the copyright belongs to a legal entity… the period shall be fifty years provided that any such work has not been published within fifty years after the completion of its creation”. Upon expiry of the term of protection, the work falls into the public domain. It is no longer protected by copyright and can be used by anyone without authorization.
It should, however, be noted that, through other forms of legal protection (for example, trademark protection), some works may continue to be protected against unauthorized use. Because Beatrix Potter created the fictional character of Peter Rabbit herself, she enjoyed the copyrights until her death in 1943. Afterwards, the copyright was probably managed by her descendants unless previously transferred by an act of law thereafter for the following 50 years.
Copyright vs. Trademark (Effectiveness in its Use for Fictional Characters)
When does a fictional character become a trademark in a strict sense? A mark is a symbol which distinguishes the goods or services of one entity from the goods or services of another entity, that is, it is intended to indicate who is responsible for the goods placed before the public. There may be many makers or sellers of the same goods, and they may all use different marks which all consist of pictorial devices, without any words at all. The consumers distinguish between the goods of competing traders solely by means of their marks on the basis of expected properties or a certain quality. When any consumer tries to purchase one of these books online, a notification comes up on the screen: “The Penguin Online bookshop is the recommended online shop from which to purchase Beatrix Potter titles”. This is a good instance of the natural way trademarks work: Penguin Publishers is the industrial origin of the books, and the little logo of a penguin appears in these goods to tell consumers which is the publishing company.
For that to be possible, the marks must be clearly recognizable. In other words, marks must be distinctive in order to apply for registration, as referred to in Articles 9 and 11 of the PRC’s Trademark Law. But then, how distinctive is a trademark consisting of a globally known fictional character first published and thus introduced to the general public in 1902? Article 9 of the Trademark Law sets forth the condition that the applied trademark “shall not conflict with any other legal rights acquired earlier by others”. It could be argued that when a fictional character’s copyright expires and falls into the public domain, it forms part of that ‘conflicting’ legal art and rights, as it is a legal text (Copyright Law) which concedes this right upon citizens.
A second point on the effectiveness of the PRC trademark law for fictional characters is that a trademark must be used in the same way it is registered and for the goods or services so elected, as set forth in Article 51 of PRC’s Trademark Law. It should be noted that, mainly in the case of cartoon strips and animated cartoons, copyright protects each different original pose adopted by the character. The same cannot be expected from a trademark, which, one can argue, makes it rather impossible for any trademark consisting of a fictional character of public domain to be distinctive at all.
In a further argument on this issue, the PRC Trademark Law states in Article 1 the purposes of trademark registration such as “…pressing producers and sellers to guarantee the quality of goods and services, maintaining the repute of trademarks, safeguarding the interests of consumers…” However, neither a merchandising agency nor the creator of a character will themselves be engaged in the manufacture or marketing of secondary products, and it will therefore be difficult for them to acquire trademark rights over a fictional character, as they will not themselves be dealing with the goods or services and be thus held liable for their quality as stated in Article 7 of the Trademark Law which sets forth the trademark user’s liability for the quality of goods to which trademarks were applied. And even if a merchandising agency or the creator of the character were involved in producing and selling at some levels, Article 40 sets upon the licensor the duty of supervising the quality of such goods, and the obligation to indicate “the name of the licensee and the origin of the goods”. So here again, trademarks are meant to work as a link between the product and its industrial origin, which ultimately provides useful information to the consumers.
Use of the Mark. The trend is more favorable here (Article 7) because the PRC’s Trademark Law allows a mark to be applied to an unlimited number of goods or services, independent of the true activity of the applicant and with no account taken of the non-use of such a registered mark. Most legislation will contain provisions relating to the effective use of a mark. It may sometimes be provided that an applicant or a holder should, by means of a statement or declaration, prove to the competent authority that the mark is being used (excluding token or ornamental use) at the time of the application (as a condition for registration), at regular intervals after registration and at the time of renewal. Furthermore, most countries provide that any person may request, before the court, that a given registered mark should be totally or partially invalidated and removed because of non-use.
The PRC’s TM Law does provide that a use shall not cease for a period longer than three years, however unlike other legal texts (such as that of the Community Trademark Regulation) it does not contain any provision requiring that use to be ‘effective’ in relation to the goods and services registered under that TM, nor a requirement upon the user to submit proof - if the applicant so requests - of use in case of opposition to a later trademark application. In short, PRC trademark law may only confer a rather limited protection, on the face of it, for so registered fictional characters.
Copyright vs. Design Patents
Cartoon characters such as those of Walt Disney or literary characters like those of Beatrix Potter are timelessly popular, such that they keep being regarded as what they indeed are: story tale characters. Drawings or cartoons (two-dimensional works) of literary works may also be protected independently of copyright protection as design patents, provided they meet the substantive requirements. According to Article 23 of the PRC’S Patent Law, “Any design for which patent right may be granted must not be identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not be in conflict with any prior right of any other person.” In that respect, it should be emphasized that a work which is original is not necessarily new, since a graphic adaptation of an already existing literary character (whether or not it has fallen into the public domain) may qualify for copyright protection (for example, the literary characters Pinocchio or Cinderella adapted to cartoon form by the Walt Disney Company), but may fail to fulfill the novelty requirement. The same applies to the drawing of a common creature (for example, the cartoon character Bugs Bunny).
The Teletubbies (Tinky-Winky, Po, Dipsy, and Laa-Laa) are fictional characters whose copyright owner is Ragdoll Productions Ltd. - also a British company - from their creation in 1996. Unlike the situation with Peter Rabbit, Ragdoll Productions Ltd. is a legal entity that actually owns the copyright, which means that after 50 years from the first publication in 1996 those friendly characters will also enter the public domain. And again, these have also been subject to trademark registration in the European Union in 1999, and in the People’s Republic of China in 2000.
Once the design patent elapses, the industrial design will also fall in the public domain and may be used by anybody without authorization, unless the owner of the design can, for the same article, avail him/herself of a longer form of protection (copyright or registered mark).
Whereas in other countries copyright protection may be denied where a work is created with the intention of being exploited industrially and embodied in mass-produced articles, which is an inherent quality of works (drawings, dolls, puppets, robots, etc.) designed for merchandising, the PRC’s Copyright Law does not observe this circumstance, ultimately allowing an overlap between the notions of artistic works and industrial designs, where the two forms of protection are generally not available cumulatively at the same time.
Once an artistic work such as a fictional character is incorporated into any industrial or handicraft item including packaging, graphic symbols, etc, it becomes the outward appearance of that product and becomes and industrial design with limited protection. And if the copyrighted fictional character has been used for these purposes and has been made public as a result, the Chinese patent law in its Article 24 concedes a small grace period of 6 months to claim priority, and after that period has elapsed it will become estate of the art and will break the novelty of that design, which ultimately makes it impossible for the copyright owner to wait until the expiration of its copyright to then obtain a design patent.
CONCLUSION
All in all, the legislation on copyright, trademarks and industrial designs may be relevant in the context of the merchandising of fictional characters (as the Peter Rabbit case illustrates), in a desperate race to exclude competitors from using anything that may make goods look more attractive for consumers to purchase.
As discussed, design patents are likely the best option available to seek longer protection for a fictional character, and although trademark protection may be renewed without limit, its scope is 1) just as limited or narrow as that of the one conferred by design patents, and 2) even if respectively registered or granted, it may be left to a Judge to determine if the trademark is distinctive enough to what all consumers simply regard as a fictional character. However, IP rights do have their own different purpose, and shall be protected according to what the law says but not beyond it.
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About the Author
Jordi Llopis and Grace Wang are attorneys in the Beijing office of Lehman, Lee & Xu.