When it comes to animated productions including films; TV series; and video games, instrumental are their characters whose appearance and traits are what give the production its appeal. Particularly when such characters then go on to form part of a series or franchise, for instance the likes of Elsa in Frozen; Woody in Toy Story; or the Master Chief in Halo, and develop a degree of marketing appeal, ensuring these characters are sufficiently protected against would-be copy cats can often be of critical importance.
Mindful of the above, when considering the development of a character for use in an animated production, thought should be given to the different types of intellectual property which might be used to protect the character, such as those listed below:
One of the most fundamental rights afforded to animated characters, in particular their appearance, is copyright protection. Generally speaking, such copyright protection automatically manifests itself upon the initial creation of the character by its relevant author(s).
The duration of such copyright in many European territories is around 70 years from the death of the relevant author that created the copyright work. In practice therefore, for a devised animated character, the duration of any associated copyright should more than exceed the expected lifetime of use for the character.
For enforcing any copyright, at least in many parts of Europe, it is necessary to show that a third party has taken the whole or a substantial part of the copyright work, without its owner’s permission. In practice, for copyright residing in the appearance of an animated character, what constitutes a "substantial part" of that work involves a qualitative comparison between the appearance of the given character and its supposed infringement. Although not exclusively determinative, where it possible to demonstrate the replication of any distinctive visual features from the animated character, this may prove particularly beneficial in establishing copyright infringement in respect of the character.
As noted above, in most territories (including the UK and the EU) copyright protection is automatic upon creation of the relevant work without the need for registration at an official registry. However, it is worth noting that in some notable territories around the world, it is possible to register any generated copyright before a relevant copyright registry, for instance in the USA where copyright protection is registrable before the US Copyright Office. In these territories, registering the copyright can make it more readily enforceable, and may provide additional remedies – such as more punitive damages – when enforcing the copyright against an infringing third party.
An introduction to copyright
For more general information about copyright, please read our guide to copyright protection.
Trade marks and passing off
In some cases, the name and image of an animated character may also be registered as trade marks. Where possible, obtaining such protection is advisable given that, in principle, any generated trade mark protection can then be maintained for an unlimited period of time, so long as the relevant trademark remains used in relation to the goods/services which it covers. Trade mark rights can also be of particular importance where character merchandising is concerned, noting such rights can prove particularly effective at combating the sale and importation of counterfeit versions of the merchandise.
It is to be noted that obtaining such trade mark protection requires demonstrating that the relevant public would associate the pertinent feature of the character with a particular undertaking, over any other undertaking. In practice therefore, achieving this association may not always be immediate, such that obtaining trade mark protection for a feature of an animated character may need to be deferred until such time when the animated character has been sufficiently ingrained with the relevant public.
Irrespective of whether any trade mark protection is obtained however, at least with regards to the UK, the image and name of an animated character are also capable of being protected under the common law tort of passing off. This is an unregistered right which requires proof of reputation in the relevant mark relied upon, misrepresentation and damage in order for liability to be established, which in practice can make the right slightly more onerous to enforce compared with any corresponding trade mark right. That being said, a claim under passing off may nonetheless prove useful, especially if no corresponding trade mark right can otherwise be relied upon.
An introduction to trade marks
For more general information about trade mark rights please read our guide to trade mark protection and enforcement.
When it comes to registered design protection for an animated character, it is necessary to apply for the protection at an early stage, preferably before the character is first publicly disclosed. Failure to do so might otherwise rule out the possibility of obtaining valid registered design protection in respect of the character, since an integral part of registered design protection is that a design must be sufficiently new and distinguishing over what has come before (so called the design needing to have "novelty" and "individual character").
In terms of how a registered design(s) might be used to protect an animated character, consideration should be given as to how the appearance of the character will change in use, and whether or not the character has any particularly distinctive visual features. At least for registered design protection covering the UK and the EU, one strategy that might be considered is to pursue a registered design in respect of the character’s head such to better protect the appearance of the character irrespective of its attire, with one or more additional design registration(s) showing the entire character in any favoured outfits which they might often wear.
Equally, if a given character has a favoured prop, weapon, or some other item, registered design protection may be worth pursuing in respect of each of these items individually.
One of the prime benefits of registered design protection, at least in the EU and the UK, is it that the protection can be achieved very quickly (in a matter of days) and at a modest cost (the official fee for a UK/EU registered design can be as low as £50/€350 respectively). Upon grant, each UK and EU registered design will then be protected for an initial period of five years from the date when the design registration was applied for. Depending on the success of the animated character, the duration of any associated design registration(s) can then be extended, if required and upon payment of official renewals fees, by additional periods of five years up to a maximum period of 25 years. In most cases, this 25 year period will be more than enough to cover the lifetime of the animated character.
Introduction to design rights
For more information about design rights in the UK & EU, please see our guide to design rights.
If you are contemplating the creation of an animated character, whether for use in a film, TV series, or some other production, consideration should be given from the outset as to how this character is going to be used and marketed, as this will have an impact on what intellectual property rights would be best suited for protecting the character.