With the New Year around the corner, those in the intellectual property field might be keeping a closer eye on the news than others as 1 January marks Public Domain Day.
The start of this year (2024) signified a landmark for the public domain, as it welcomed Disney’s most famous cartoon animated character, Mickey Mouse (Steamboat Willie). In fact, the next ten years will see some exciting developments on this front as a number of icons are expected to enter the public domain: Daffy Duck (Porky’s Duck Hunt) and Superman (Action Comics #1), to name a few [source].
So, what does it mean when a work enters the public domain?
A work entering the public domain signifies the end of its copyright protection. The duration of copyright protection may differ depending on the type of work (e.g., literary work, sound recording) or the country of origin, but the general rule in the UK is that the duration of copyright is the life of the author + 70 years after death. This means that, unless there are any other intellectual property rights at play (spoiler: more on this below), the work will be available for use by anyone after the expiry of copyright protection.
The Twisted Childhood Universe (or the “Poohniverse”) is a fictional cinematic universe inspired by childhood staple, beloved characters in the public domain. The first film to form part of the Twisted Childhood Universe was Winnie the Pooh: Blood and Honey, a slasher horror starring Pooh and Piglet as a murderous killer duo. Other films expected include Peter Pan’s Neverland Nightmare (an evil Peter Pan and a heroin-addicted Tinkerbell) and Bambi: The Reckoning (Bambi becomes a predator on a rampage). Safe to say, these adaptations are not where your dreams come true.
But is this, the public domain, truly where a work’s cycle of life ends?
Perpetual protection via trade marks
As opposed to copyrighted works which, as explained above, have an expiration date, a trade mark can be renewed in perpetuity. In theory, aspects of copyrighted works which are in the public domain can retain protection by way of trade mark registration (of course, there are limitations e.g., the subject matter of trade mark registrations must function as an indicator of origin).
The UK case law relating to expired copyright works (particularly fictional characters) which have retained protection via trade marks is somewhat limited, but we can gather some pointers from Peter Rabbit (US), Nellie The Elephant and Betty Boop…
Frederick Warne & Co., Inc. (Plaintiff) v. Book Sales Inc. (Defendant), 481 F. Supp. 1191 (S.D.N.Y. 1979)
Frederick Warne, the publisher of the Peter Rabbit books, owned trade mark registrations for cover illustrations and eight character-drawings appearing in The Tale of Peter Rabbit. The seven Peter Rabbit books at issue here were in the public domain.
Book Sales Inc. published the book Peter Rabbit and Other Stories, consisting of those Peter Rabbit stories in the public domain and the illustrations trade marked by Frederick Warne. Frederick Warne sued for trade mark infringement.
It was held that, even if Peter Rabbit were in the public domain, this “should not preclude protection under the trademark laws so long as it is shown to have acquired independent trademark significance, identifying in some way the source or sponsorship of the goods” (1196-97). I.e., Frederick Warne must prove that the cover illustrations are a source of Frederick Warne’s, as opposed to Beatrix Potter’s, goodwill and reputation as publisher.
Decision O-392-03 for the application for revocation of UKTM No. 1391538 NELLIE THE ELEPHANT
In this case, the UK Registry appears to align with the US approach in the Peter Rabbit case, citing with approval the following from the decision of the EUIPO Opposition Division in Francis Fitzpatrick v Disney Enterprises, No 951/2001:
“Characters of fiction may be trade marks, there is nothing to exclude them from acting as such. However, what makes them trade marks is either the fact of registration as trade marks or use in such a way that they will be seen as trade marks. Even when they enjoy registration the question of reputation and renown will depend on the ability of the public to identify them as indicators of origin; and not to simply see them as characters or titles or items of decoration.”
On the facts, though, the Registry held NELLIE THE ELEPHANT not to be an indicator of origin above and beyond her status as a children’s character. So, at its core is the fundamental understanding that the primary function of a trade mark is that of an indicator of origin. But how easy is it to enforce a trade mark of a fictional character?
Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch) (25 February 2014) : Betty boop
The Claimant, Hearst, the owner of various BETTY BOOP word mark and figurative device registrations (see below) brought proceedings for trade mark infringement under s. 10(1) against the word marks, and 10(2) and 10(3) against all the trade marks, against the Defendant, AVELA’s, “unauthorised” use. (Other claims are omitted.)
The Claimant, Hearst, the owner of various BETTY BOOP word mark and figurative device registrations (see below) brought proceedings for trade mark infringement under s. 10(1) against the word marks, and 10(2) and 10(3) against all the trade marks, against the Defendant, AVELA’s, “unauthorised” use. (Other claims are omitted.)
(The above also registered in combination with the word element “BETTY BOOP”.)
AVELA entered licensing agreements with numerous companies. AVELA admitted that their goods were “unauthorised” merchandise, but denied trade mark infringement, arguing the Betty Boop imagery is purely decorative and makes no representation as to trade origin. Conversely, AVELA did not (and made it a condition that licensees did not) use Betty Boop as a trade mark, though allowed use of the slogan and each element alone.
The Judge held there to be trade mark infringement on all grounds. The following points are particularly interesting:
- On the likelihood of confusion grounds, the BETTY BOOP word mark was infringed by use of Betty Boop image, as this image triggered the perception of the words (BETTY BOOP will be perceived spontaneously and inevitably because they are the name of the character). The Judge goes so far as stating their view that consumers would not even notice that the words BETTY BOOP are absent.
The Judge cited La Chemise Lacoste [2011]:
“the outcome of the comparison between a word mark and a device might be different if the word had the power to trigger perceptions and recollections of the imagery of the earlier mark with the same degree of spontaneity and specificity as (say) the images conjured up by the words MONA LISA, EIFFEL TOWER and STARS AND STRIPES.”
- On the reputation grounds: the Judge was persuaded that by virtue of Hearst’s 20 years of exclusive merchandising in the UK (which is what popularised Betty Boop) consumers were educated by Hearst to understand BETTY BOOP as a trade mark and sign of origin. As such, regardless of her differing poses, the Betty Boop character acted as a distinctive sign.
The Judge makes a point of distinguishing forms of merchandise for a celebrity (where it is clear that the public do not believe such images derive from a single source), and fictional characters:
“[…] it is probably easier to educate the public to believe that goods relating to an invented character derive from a single official source than it might be for a real person, not least because copyright law may give the inventor the ability to control the reproduction of the character for a very long time.”
In all, Hearst’s trading history and investment in educating the public that they were the only entity responsible for the marks’ origin were vital to the favourable decision.
Considerations going forward
It is clear that, to successfully obtain and enforce a trade mark registration for a work which depicts a fictional character, the following factors are of specific importance:
- The trade mark must act as an indicator of origin;
- That origin must relate to the proprietor; and
- Trading history and public education in relation to the trade mark and proprietor can be particularly persuasive.
It is important to note that the creator of the fictional character and related copyright works does not need to wait until copyright expires before seeking registered trade mark protection. It is perfectly possible to obtain trade mark registrations for character elements in addition to the existing copyright, where the requirements for trade mark registration are met.
Considering the wide recognition of the works set to enter the public domain in the coming years, and the trend in the creative industries, it will be interesting to monitor whether any developments will arise in this area, and to what extent owners of copyright works will seek to rely on trade mark registration to protect their established fictional characters.