Hi,
My company makes products for card makers. We are currently developing a new hand drawn character.
We have contracted an artist, who has done some excellent originals to our requirements and we are now preparing to turn them into products for the end user.
The artist has sold all rights to the artwork to us, but, we are unsure of what level of trade mark registration would be appropriate for us to proceed with.
Is it reasonable to rely on copyright law to protect our products or should we look at registering it as a trademark? And if we did, would that give us reasonable protection across the bredth of designs we have (20 images involving the same character)?
The name we (my wife) had chosen for the character is actually the same as the name as a character from a 60s children's program - is this likely to be an issue - I can't find any record of it being a registered trademark. (I've looked on the ipo.gov.uk website.
Thanks for any advice anyone can offer.
Naming a 'Cartoon Character' and other stuff
Hi Jon,
In theory copyright should give you pretty good protection for your character, but it would be sensible to complement that protection by registering it as a trade mark. The reason for saying that is the strength of copyright lies in where there has been exact copying of an artistic work, rather than the ideas which the work represent. So for instance copying themes and plots from a Harry Potter book or the Da Vinci Code* has been found not to infringe copyright because a substantial part of the actual text was not copied verbatim. It is possible for identical ideas formed independently to both be subject to copyright and not infringe each other. It might be sensible to lodge graphical copies of your character in a sealed and dated envelope with a bank, solicitor or copyright registration service to establish the date of creation.
On the other hand, trade mark legislation confers a degree of monopoly right to the use of anything which can be represented graphically provided it is eligible for registration. Thus competitors would be prevented from exploiting the graphical structure of your character even if there was no actual copying of one of your images. By registering your character in the correct classes (16 for card products and printed material and any other classes, such as games, where you anticipate a competitor might seek to use your character) you have strong documentary evidence available to support your case and it will be for a defendant to show that not only is there no identical copying, but also insufficient similarity that a reasonably skilled person would be confused between the two products, so a much lower threshold than with copyright. You should seek advice from the IPO about the best way to represent your character in a single registration (for instance multiple views of the figure from different angles). You would not need to register each design of card. The disadvantage of trade marks is that they need to be registered in each jurisdiction where protection is sought, unlike copyright which is largely universal.
Unless the name of the 1960's TV character is very iconic I doubt if re-using the name should pose any major problem. Names cannot be protected by copyright, so the most likely challenge you face would be one of passing-off. However if the previous character has not be used in the intervening 50 years, a claim of passing-off seems most unlikely to succeed.
* In actual fact the case involving the Dan Brown novel was about him copying an earlier book entitled the Holy Blood and the Holy Grail but the principle is the same.
In theory copyright should give you pretty good protection for your character, but it would be sensible to complement that protection by registering it as a trade mark. The reason for saying that is the strength of copyright lies in where there has been exact copying of an artistic work, rather than the ideas which the work represent. So for instance copying themes and plots from a Harry Potter book or the Da Vinci Code* has been found not to infringe copyright because a substantial part of the actual text was not copied verbatim. It is possible for identical ideas formed independently to both be subject to copyright and not infringe each other. It might be sensible to lodge graphical copies of your character in a sealed and dated envelope with a bank, solicitor or copyright registration service to establish the date of creation.
On the other hand, trade mark legislation confers a degree of monopoly right to the use of anything which can be represented graphically provided it is eligible for registration. Thus competitors would be prevented from exploiting the graphical structure of your character even if there was no actual copying of one of your images. By registering your character in the correct classes (16 for card products and printed material and any other classes, such as games, where you anticipate a competitor might seek to use your character) you have strong documentary evidence available to support your case and it will be for a defendant to show that not only is there no identical copying, but also insufficient similarity that a reasonably skilled person would be confused between the two products, so a much lower threshold than with copyright. You should seek advice from the IPO about the best way to represent your character in a single registration (for instance multiple views of the figure from different angles). You would not need to register each design of card. The disadvantage of trade marks is that they need to be registered in each jurisdiction where protection is sought, unlike copyright which is largely universal.
Unless the name of the 1960's TV character is very iconic I doubt if re-using the name should pose any major problem. Names cannot be protected by copyright, so the most likely challenge you face would be one of passing-off. However if the previous character has not be used in the intervening 50 years, a claim of passing-off seems most unlikely to succeed.
* In actual fact the case involving the Dan Brown novel was about him copying an earlier book entitled the Holy Blood and the Holy Grail but the principle is the same.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007