Copyright in Characters: What Can I Use? Part III

Trademark in Characters

In the past two posts, I wrote about how copyright law is applied to fictional characters. This post will cover how trademark law applies to fictional characters.

Trademark law can be complicated and I won’t be going into the exceptions to the rules and the exceptions to exceptions (yeah, it’s like that) in this post. Instead, I’m trying to provide a brief overview of trademark law and apply it to fictional characters – it’s a very different look at how characters can be protected compared to copyright.

The Lanham Act is the federal law that governs trademarks, but each state also has its own trademark laws that apply in addition to federal law. This post focuses on the use of characters as trademarks under the Lanham Act since it applies across the U.S.

What is a trademark?

A trademark is anything that acts to identify the source of goods or services. Typically, these are logos, business names, and slogans, but can also include things like colors, product configurations, and trade dress.

For something to be considered a trademark, it must be used in connection with the use or sale of goods or services. Otherwise, it isn’t being used as a trademark and the use won’t be protected by trademark laws. The trademark rights you gain are also specific to those goods or services.

Can a Fictional Character be a Trademark?

Yes, the name of a fictional character or its graphical representation can be registered as a trademark if it is being used as a trademark. A fictional character can be used as a trademark in many ways, such as using the character as a logo for a business or for retail items.

For example, Disney has many federal registrations for its characters that are used as trademarks, including Mickey Mouse and Minnie Mouse. As does Nintendo. Here. Are. A. Few. Recognizable. Examples.

However, note that they are all tied to specific goods or services. Registration No. 5,027,809 (depicting Mickey Mouse) is for “Binders; bookends”, and Registration No. 5,027,915 (depicting Minnie Mouse) is for “Children's multiple activity toys; Toy rockets”.

That’s because trademark rights do not protect the character on its own – that protection is provided by copyright laws, which was covered in the previous posts. A federal trademark registration protects the use of the mark in connection with the listed goods or services. In the examples above, the Mickey Mouse logo will be used on the binders or packaging and the Minnie Mouse logo will be used on the toys or packaging.

This also means that someone would be infringing trademark rights if they start using the registered trademark in connection with the sale of the same or similar goods listed in the trademark registration.

But there are exceptions and other factors that can complicate things, such as fame of a mark, likelihood of confusion, and other rules relating to subject matter such as national symbols.

But generally, the trademark protection a fictional character receives will be limited to the use in connection with goods or services.

What are Trademarks Rights?

Trademark rights give the owner of a trademark the exclusive right to use a trademark in connection with the sale or use of goods or services and to prevent others from using a trademark that could cause confusion with your customers. This is called a “likelihood of confusion”.

Trademark rights are created in two ways – through “common law” use and through registration at the state or federal level.

Common law trademark rights arise in the places where a trademark has been used in connection with goods or services. For instance, if you are using a fictional character in the logo for your business and are selling your goods (let’s say it’s video games) online, then you’re likely building common law trademark rights in the areas that people are downloading your game. Common law rights typically do not extend beyond those territories, though.

Registering that trademark with the US Patent and Trademark Office (“USPTO”) provides you with a handful of significant benefits that you wouldn’t have received otherwise, such as nationwide protection of the trademark (not just in the common law territories) and a presumption that you’re the owner of the trademark in case a dispute arises.

How Aren’t Trademarks Protected?

There are many ways that trademark protection is limited or even not granted, including nominative use, ornamental use, and (importantly for this post) names and designs of characters in creative works. But I’m going to focus on the scope of protection and trademark non-use.

First, the scope of protection for a trademark plays a large role in how much protection it receives. When registering a trademark, you will need to describe the goods or services that are provided under the trademark. Here’s the USPTO’s trademark ID manual it uses for pre-approved descriptions. That trademark registration will then protect the use of the mark in connection with those goods or services and any other goods or services that are close enough to cause a likelihood of confusion.

For example, if you use a fictional character for the logo of your book series and have registered that trademark with the USPTO, someone else could not also start using the same or similar character for their book series. But someone might be able to use the same or similar character for a different type of business such as a clothing line.

Trademark non-use is also an important exception to trademark infringement claims. For someone to have a trademark infringement claim against someone, the claimed infringing use must be a trademark use – use of a mark in connection with goods or services. Just saying the name of a fictional character or showing it in a movie generally isn’t a trademark use, but there could be other issues involved such as copyright infringement.

Relationship to Copyright

While trademarks are protected by different laws than copyright, they often overlap in this context because a fictional character can be protected by both trademark and copyright. Also, even if someone’s use of a character isn’t a trademark use, it could still be copyright infringement if they aren’t the owner of the copyright in the fictional character.

I hope you’ve found this series helpful! If you’re interested in learning more or registering a copyright or trademark, feel free to contact us – we’d be happy to help.

Read the original post, "Copyright in Characters: What Can I Use?"

Notice: This post is for informational purposes only and is not a substitute for professional advice based on a review of individual circumstances. Please contact an attorney regarding your particular legal issues.

Copyright in Characters: What Can I Use? Part II

First, thanks to everyone that read and commented on the original post! The comments were great and touched on a few subjects that weren’t discussed in the post, so I wrote this follow up post to expand on a few of the copyright issues that were brought up. I’ll also be posting Part III soon, which will cover trademark issues.

Copyright Law

Let’s first dig a little deeper into copyright law:

I explained in the previous post that copyright is a form of protection given to authors of “original works of authorship”. The author is typically the person that makes the work, but can also be an employer if the work is considered a “work made for hire”. I won’t discuss “works made for hire” in this article, but you can read more about that on the Copyright Office’s circular on works made for hire.

The works need to be “fixed in any tangible medium of expression” for copyright protection, which means that the work needs to be recorded somehow – essentially, something more than an idea. A painting satisfies the requirement, as does a video or audio recording, and so do video games (although video games have many different copyright involved).

Copyright is actually a bundle of rights that give the author of the work the exclusive rights to reproduce (i.e. make copies), prepare derivative works (i.e. make new works based on the original work), display, distribute, and perform the protected work. These rights are granted automatically to the author but registering the copyright has certain advantages, which are discussed in the Copyright Office’s circular on copyright basics.

Copyright, along with trademarks and patents, is a type of intellectual property. This means that the rights granted to an author are treated as property that can be transferred by the author in a number of ways, such as licensing and assignments. Also, each right is an individual right that can be transferred on its own.

For example, an artist can allow someone to show the artwork in a gallery (display the work) but not make prints of the work (reproduce). Or, keeping in line with characters, a game developer can allow a publishing company to distribute copies of the game, which include the individual copyright in the character itself, to different platforms such as Steam (reproduce and distribute), but not allow the publishing company to make new games based on the original game or change the character in some way (which would be making derivative works).

What doesn’t copyright protect?

Copyright is limited in its scope and specifically does not protect “any idea, procedure, process, system, method of operation, concept, principle, or discovery”. Patent law typically covers these instead of copyright.

Copyright also doesn’t protect names, titles, or short phrases, which is explained in this Copyright Office circular. However, these can be protected as trademarks, which I’ll explain in Part III.

In the games and characters context, this means that things such as game rules, game mechanics, and basic plot are not protected by copyright. Nor does copyright protect the name of the game or character names. The Copyright Office has a helpful article on the subject that’s worth reading.

Copyright and Fair Use

We’ve covered what copyright protects and what it doesn’t, but sometimes works that are protected by copyright but can still be used in certain situations defined in the “fair use” doctrine.

Fair use is a legal doctrine that permits limited use of works protected by copyright without requiring permission from the copyright holder. However, fair use is a defense to copyright infringement, which means a jury in a federal lawsuit must answer the question as to whether the use is fair use (i.e. you’ve already been sued). That’s why I always recommend seeking a license first.

Fair use comes in many flavors. The most typical examples are commentary, criticism, and parody. To determine fair use, Courts look at the following factors:

• The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
• The nature of the copyrighted work;
• The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• The effect of the use upon the potential market for or value of the copyrighted work.

In the character and game context, fair use is often used in order to make game commentary or critique videos. Some of the “Let’s Play” videos are good examples of this.

For the sake of keeping this article on the shorter side, I’ll refer you to this Stanford article for more examples and a good breakdown of what each of the fair use factors are supposed to mean.

De Miminis Use

In certain situations, you can also use copyright protected works in small portions without the author’s consent. This is because of a legal doctrine called “de minimis use”. De minimis use is tricky because, like fair use, there are no clear lines for when a use qualifies as de minimis and you also have to prove this in court.

The term “de minimis” is from a shortened Latin phrase that translates to “the law does not concern itself with trifles”, which essentially means in the legal context that not enough of the copyrighted work has been used to amount to copyright infringement.

This is different from fair use because de minimis use relates to uses that are so small that courts won’t bother with them, while fair use is intended to provide avenues for the public to use works in a way that would otherwise be considered copyright infringement.

In the character context, de miminis use might allow for a character to briefly appear in the background or be mentioned in a factual manner.

I hope that helps and, again, feel free to leave a comment below if you have any questions!

Read the original post, "Copyright in Characters: What Can I Use?"

Read the final post, which covers trademarks and characters.

Notice: This post is for informational purposes only and is not a substitute for professional advice based on a review of individual circumstances. Please contact an attorney regarding your particular legal issues.

Logos: to Inc. or not to Inc.

Aspect Law Group is collaborating with Design Week Portland for a column called "Creatives Ask a Lawyer". Head over here to find out more. Q: "Do logos need to display ‘Inc’ or ‘LLC’? I have a client that has been told by his lawyer that his logo has to have ‘Inc’ somewhere in it. I have run into this many times, as well as clients insisting that they have to have the ‘LLC’ in the logo. All the information on the web says that it is not needed on the actual logo, but must be on trademark and corporate filings."

You can read the full post and answer to this question on the Design Week Portland tumblr.

In the post, I cover trademark law basics, business law, and general business practices issues. The short answer is that logos do not need to have the business designation but certainly can, and business should use their full legal name when conducting business.

Thanks for the question!

Notice: This post is for informational purposes only and is not a substitute for professional advice based on a review of individual circumstances. Please contact an attorney regarding your particular legal issues.

Copyright in Characters: What Can I Use?

Q&A: “How do [some video games] get away with using so many famous franchise movie characters? We got DMCA'd for making a robot graphic that ‘resembled R2D2’.” Good question! The answer is actually more complicated than it might seem. Let’s dive into this:

Copyright Law:

For a work to qualify for copyright protection under current US copyright law, it must be an original work of authorship, fixed in a tangible medium of expression. “Original work of authorship” means it must be independently created by the author and possess some minimal degree of creativity. The creativity bar is pretty low, and most things will pass as being creative.

“Fixed in a tangible medium of expression” means that it has to exist somewhere somehow, i.e. writing something down, recording a song, or drawing a picture. Consequently, copyright law does not protect ideas; only the original, fixed expression of that idea by the author is protected.

The distinction here is expression of the idea. Actual copying of the expression of the idea is likely copyright infringement, especially in the commercial context, however copying only the basic idea behind the work is copying unprotected ideas and isn't copyright infringement.

Copyright in Characters:

For characters, the character only becomes protected under copyright law once it becomes a unique expression, i.e. drawing your own rendition of something or adding certain attributes. Concepts like robots, men in black, beefy army dudes with guns, samurai, etc., are called “stock” characters, and don't rise to the standard of creative until the author adds something more or expresses that concept.

This line can get pretty blurry, especially in the context of written stories since there often isn’t a visual element and the author must describe the character with sufficient originality. For video games though, the unique expression is the actual visual character created by the artist.

Famous Characters and Copyright Law:

Famous franchise movie characters, like Rambo, Snake Plisskin, and RoboCop, are protected by copyright law because of the copyright in the film and script, but only to the extent of the creative expression by the author. As I said earlier, copyright law does not protect stock characters. Consequently, any use of a gun-toting cyborg won’t be considered copyright infringement of RoboCop until that cyborg looks and acts like RoboCop.

Also, names alone do not have copyright protection. So just mentioning the name of a character won’t be copyright infringement without more.

The creators of some video games use stock characters and scenery that resemble famous movie franchises. This alone likely doesn’t infringe the copyright of someone else’s work if the game’s character art and scenery are original creations developed by the game company.

Do they bring to mind other notable characters in pop culture because of the context? Totally! But copyright law isn't concerned about that here. That's the area of trademark law, and there may certainly be trademark law issues going on there, as well as rights of publicity.

R2-D2:

So how about using a picture of a robot that looks very similar to R2-D2? Like I said earlier, the idea of robots is not protected. But the expression of a robot with three legs, half-sphere for a head, cylindrical, with blue and white ornamentation? Definitely protected - it's Lucas's expression of a robot.

The other thing about Lucasfilm though, is that they have many of their works trademarked as well. Trademarks are source indicators and trademark law is concerned with likelihood of confusion. So even making a robot that brings to mind R2-D2 could be trademark infringement. Lucasfilm also vigilantly polices its trademarks and copyrights, so I recommend steering clear of that territory.

The Take Away:

Characters can be protected by several theories of law, including copyright law, trademark law, and rights of publicity.

You can’t stop someone from suing you (even if you’re right), and using a famous character may not be worth the risk of a lawsuit, so think about getting a license or using your own original character before attempting to use a famous character.

- Bryan and James

Note: this Q&A was modified to remove the name of the video game referenced in the original question.

Read "Copyright in Characters: What Can I Use? Part II"

Notice: This post is for informational purposes only and is not a substitute for professional advice based on a review of individual circumstances. Please contact an attorney regarding your particular legal issues.