IP Safety for Featured Characters in Digital and Bodily Media | Troutman Pepper

The Trademark Trial and Attraction Board (TTAB) just lately dominated in In re Joseph A. Stallard (dba Osgoode Media) that Osgoode Media couldn’t register the picture of a personality as a trademark in reference to a online game. Nevertheless, this doesn’t imply the picture of a personality can by no means be eligible for trademark safety. As an alternative, registrants might want to rigorously consider circumstances the place trademark safety is relevant to a personality related to their product or providers, in addition to take into account whether or not different mental property (IP) protections can be found.

Trademark Safety for Characters

Logos are generally related to tradenames, slogans, and logos. However the U.S. Patent and Trademark Workplace (USPTO) will trademark “any phrase, phrase, image, design, or a mixture of this stuff that identifies … items or providers”(1) — which may embody a personality mark related to a online game or different services or products. For instance, Sonic the Hedgehog is a online game character that Sega Company has registered with the USPTO as a design mark on a number of events, with illustrations of the titular character integrated into the brand design of the sequence title.

So, if character logos are permitted, why did the TTAB deny Osgoode Media’s trademark request? In its opinion, the TTAB clarified that “designations that merely determine a personality in a inventive work should not registrable.” In different phrases, the character being registered should determine and distinguish the supply of the work. In a online game context, this implies the character should create an affiliation between the mark and software program as a way to be eligible for trademark safety. For instance, this would possibly embody the character being centrally depicted on the launch display, web site, or different advertising supplies for the online game — or anything that will trigger a person to affiliate the picture of the character with the online game. This identical idea can even apply to pictures of a personality from a comic book e-book or cartoon.

Using a trademark to guard a personality can supply substantial advantages, notably when it comes to enforcement in opposition to rivals and counterfeiters. It additionally permits an organization to strengthen its IP rights, which will be advantageous for licensing functions. Nevertheless, the USPTO solely permits insubstantial modifications to the general design, which may restrict the flexibleness for future modifications. Moreover, there could also be coloration limitations, which may limit the scope of safety. Due to this fact, whereas trademarking a personality design will be helpful, further IP safety could also be needed to handle potential gaps in trademark safety.

Different IP Protections for Characters

Whether or not or not a personality is eligible for trademark safety, it’s value contemplating different IP rights which may be obtainable. These IP rights can bolster safety for a efficiently trademarked character, or can present another possibility if trademark safety shouldn’t be doable.

Copyright

For video video games, copyright safety is out there in two methods. First, the underlying code for the online game is a copyrightable work. Second, the general look — together with artwork, sound, characters — is eligible for copyright safety. Usually, if the identical social gathering owns each components, then it should register the code and audio-visual elements as a single unit. In doing so, this is able to additionally defend the looks of any character throughout the online game.(2)

A person online game character picture can be copyrighted, offered it’s distinctive and authentic. Nevertheless, notice that safety solely extends to the precise expression of the character. The concept of the character itself shouldn’t be topic to safety, and subsequently, related characters will be created by others, offered they don’t seem to be precise copies. This identical idea applies to creative renderings of characters in cartoons, graphic novels, and comics,(3) in addition to the literary delineation of a personality’s particular attributes in textual kind, equivalent to in a novel.(4)

The Copyright Act is a strict legal responsibility statute, that means it could be simpler for a copyright holder to implement their rights in opposition to violators, even when the violator didn’t have the intent to infringe.

Design Patent

To some restricted extent, it’s also doable to hunt a design patent to guard the distinctive, visible traits of a online game character featured as a decorative design on industrial items. Whereas doable, it’s a weak choice to pursue when trademark and copyright safety are available.

Conclusion

Whereas Osgoode Media has just lately requested reconsideration of the TTAB’s last determination on its trademark software, In re Joseph A. Stallard nonetheless highlights the distinctive challenges and issues related to IP protections for character pictures. We are going to proceed to observe the end result of this matter, ought to the TTAB elect to rethink its last dedication.

(1) United States Patent and Trademark Workplace, What’s a trademark?

(2) United States Copyright Workplace, Round 61: Copyright Registration of Pc Packages (March 2021).

(3) United States Copyright Workplace, Round 44: Cartoons and Comedian Strips (October 2015).

(4) United States Copyright Workplace, Compendium of U.S. Copyright Practices, Part 313.4(H) (January 28, 2021).