The short answer is ‘yes’, you can own a fictional character, says UK Trademark Attorney Luke Portnow, and this summer the UK saw a particularly interesting case law development in copyright protection.
Special care must be taken when using characters, for example in marketing and advertising materials, particularly if they are registered as trademarks. Works such as cartoons, animated films, books, and computer games can each bequeath multiple intellectual property rights, including copyright and trademarks, and (in the UK) rights under the common law tort of ‘passing off’. Improper use can result in trademark infringement; the main exception or defence to this being parody or pastiche.
One need only think of Disney to appreciate how a brand can develop any number of characters into truly monetised intellectual property assets: merchandising alone can generate huge revenues.
These characters are often registered as trademarks because such rights can be renewed, and their protection continue infinitum (copyright in this field generally runs out 70 years after the death of the author). Trademark registrations are also usually far quicker and more cost-effective to enforce than i.e., copyright or a claim for ‘passing off’.
It was interesting earlier this year to learn A.A. Milne’s original Winnie the Pooh stories had reached the 70-year rule and copyright was about to expire. Although Disney’s version of ‘Pooh’ is protected by copyright, the company no longer has exclusive rights to Milne’s work, and so, the loveable bear is now freely available to be recast as a killer in the new movie Winnie the Pooh: Blood and Honey.
Enhanced copyright protection
The news of the new murder-hungry Pooh movie arrived around the same time as a much anticipated judgment in the Only Fools The Dining Experience case at the UK Intellectual Property Enterprise Court (IPEC). The IPEC ruled that the specific character ‘Del Boy’ (from the original BBC TV sitcom Only Fools and Horses) is a copyright work.
This was the first time the UK Courts have recognised that a fictional character can be an independent copyright work.
Only Fools and Horses was a highly successful sitcom running on BBC TV from 1981 to 1991, with huge audiences devotedly tuning in for Christmas specials, until the show finally ended in 2003. Shazam Productions was set up by the creator of the sitcom and owns the rights to Only Fools and Horses.
The proceedings at the IPEC were brought to prevent the continued performance of an unlicensed interactive dining show (called Only Fools The (cushty) Dining Experience) which featured characters taken from the sitcom along with their same jokes, catchphrases, and backstories. Described as a ‘part-scripted, part improvised’ dramatic performance, the dining experience’s paying customers enjoyed drinks and a sit-down meal while interacting with actors playing central characters from the sitcom. The characters were, however, presented in the context of an interactive pub quiz, which never appeared in the original TV show.
Part of Shazam’s case was based on the characters in the Dining Experience having distinctive character traits and using ‘signature phrases and ways of speaking’ (including Del Boy’s poor French!); as such, if the scripts of Only Fools and Horses were found to be ‘literary works’, Shazam claimed it enjoyed a far higher standard of copyright protection.
The operators of the Dining Experience contended that their use of the characters and materials from the sitcom did not amount to material protected by copyright. They also denied ‘passing off’ (essentially misrepresenting itself so customers would think the show was officially endorsed by Shazam) on the basis that their offering would be seen as an unofficial tribute show and not linked to the owners of any IP rights in Only Fools and Horses.
The IPEC held, amongst other things, that the Dining Experience infringed Shazam’s copyrights and its marketing and name was contrary to the law of ‘passing off’. The Deputy Judge importantly also held that the Dining Experience was not ‘fair dealing’ with Shazam’s copyrights, for the purposes of parody or pastiche.
Those working in the creative industries now also have some judicial guidance on what were previously quite untested defences of parody and pastiche.
Freedom of expression
As hinted above, Only Fools and Horses is a household favourite in the UK, and so the specific facts of the case likely led to such a strong ruling. A concern from this, however, is that the decision arguably extends the rights of copyright owners too far and impedes on freedom of expression. There is an important balance to be struck between IP rights and the free market: it could well be that this decision will stifle the creative industries.
USA and EU comparison
The decision arguably draws the legal position in the UK closer to the USA, where fictional characters can be protected separately from their underlying works as derivative copyrights, provided that they are sufficiently unique and distinctive.
By comparison with the EU and the position in the UK prior to Brexit: the overriding case law and jurisprudence of the Court of Justice of the European Union is that parody evokes an existing work, while being noticeably different from it; and constitutes an expression of humour or mockery. The ECJ (as it was then) has also noted that, unlike works that have been copied for the purpose of criticism and review, parody need not relate to the original work or mention the source of the parodied work. The parody also need not display an original character of its own, nor reasonably be attributed to a person other than the original author. Although sounding rather opaque, the central tenet here is that a fair balance must be struck by the national courts between the interests and rights of copyright holders of the original works, and the freedom of expression of users of copyrighted works.
The CJEU focus on the national courts being required to balance the competing interests is linked to the Copyright Directive (2001/29/EC): while parody is a recognised exception to copyright infringement in Article 5(3)(k), it is optional for EU member states to implement this exception into their national laws. The UK amended its relevant national IP laws in 2014 to allow fair dealing with a copyright work for the purpose of caricature, parody or pastiche. By contrast, France, which is known for its relatively strict stance on copyright, already had a legislative parody exception in place for decades.
Luke Portnow is a Trademark Attorney at Novagraaf in the UK