Peter Rabbit and IP Protection of Fictional Characters in China

Written by Jordi Llopis and Grace Wang


In late September of last year, Beijing’s No 1 Intermediate People’s Court heard a case involvingrepparttar Chinese Press using pictures of Beatrix Potter’s fictional character, Peter Rabbit, on books. The British company Frederick Warne Co. Ltd. alleged infringement upon their trademark of Peter Rabbit illustrations, which was registered in 1994 (a decision has not yet been reached inrepparttar 119175 case).

The rights attached to a fictional character can generally be referred to as “property rights”. As isrepparttar 119176 case with most property, those rights includerepparttar 119177 right to use a fictional character’s name, image, appearance, etc., to receiverepparttar 119178 benefits resulting thereof andrepparttar 119179 right to dispose of it. These rights are in principle owned byrepparttar 119180 creator of that character unless lawfully transferred, created inrepparttar 119181 course of his professional activity for his employer, commissioned to be created, or conferred onrepparttar 119182 creator’s descendants forrepparttar 119183 exploitation of his/her work.

The secondary exploitation of a fictional character’s essential features by its creator in relation to various goods and/or services to exploit consumers’ affinity with that character can be defined as character merchandising. This merchandising activity is very seldom conducted byrepparttar 119184 creator ofrepparttar 119185 fictional character, and thusrepparttar 119186 various property rights vesting inrepparttar 119187 character are subjected to contracts which authorize one or several interested third parties (the merchandisers) to userepparttar 119188 character. The main economic rights relevant torepparttar 119189 merchandising of characters arerepparttar 119190 rights of reproduction, adaptation and communication torepparttar 119191 public in any manner or form--books, for example.

Beatrix Potter was a pioneer inrepparttar 119192 secondary exploitation of literary works. The animal characters from books Peter Rabbit and Squirrel Nutkin were recreated and are still being recreated as still as soft toys or other articles for children. This merchandising successfully continues today, with a wider range of merchandise. On May 25th, 1919, Frederick Warne & Company Limited was registered. Althoughrepparttar 119193 imprint is still used by Penguin Books, Frederick Warne & Company Ltd really ceased to exist on December 31st, 1984.


The rights attached to a character may enjoy legal protection in a number of forms, either automatically (copyright), or following an act before a competent authority (for example, trademark or industrial design registration).


Copyright protection starts onrepparttar 119194 date of creation ofrepparttar 119195 work as expressed in a material form such as writings, drawings, etc. Contrary to industrial property rights such as trademarks or industrial designs, a work enjoying copyright protection is protected against all unauthorized uses, irrespective ofrepparttar 119196 goods or services covered by each use. Generally, no one may exercise economic or exploitation rights withoutrepparttar 119197 authorization ofrepparttar 119198 copyright owner. Needless to say, enforceability of such IP rights is not dependent upon effective registration or patent granting, although there are public registrars to this effect that provide evidence ofrepparttar 119199 date of creation of such works.

It is generally accepted that copyright must be recognized and protected at least throughoutrepparttar 119200 life ofrepparttar 119201 author. After his/her death, his/her work continues to be protected for a certain time. Under Article 21 of China’s Copyright Law, copyright protection extends throughrepparttar 119202 lifetime ofrepparttar 119203 author and 50 years afterrepparttar 119204 author’s death. Article 21 later states in paragraph two that “whererepparttar 119205 copyright belongs to a legal entity…repparttar 119206 period shall be fifty years provided that any such work has not been published within fifty years afterrepparttar 119207 completion of its creation”. Upon expiry ofrepparttar 119208 term of protection,repparttar 119209 work falls intorepparttar 119210 public domain. It is no longer protected by copyright and can be used by anyone without authorization.

It should, however, be noted that, through other forms of legal protection (for example, trademark protection), some works may continue to be protected against unauthorized use. Because Beatrix Potter createdrepparttar 119211 fictional character of Peter Rabbit herself, she enjoyedrepparttar 119212 copyrights until her death in 1943. Afterwards,repparttar 119213 copyright was probably managed by her descendants unless previously transferred by an act of law thereafter forrepparttar 119214 following 50 years.

Copyright vs. Trademark (Effectiveness in its Use for Fictional Characters)

When does a fictional character become a trademark in a strict sense? A mark is a symbol which distinguishesrepparttar 119215 goods or services of one entity fromrepparttar 119216 goods or services of another entity, that is, it is intended to indicate who is responsible forrepparttar 119217 goods placed beforerepparttar 119218 public. There may be many makers or sellers ofrepparttar 119219 same goods, and they may all use different marks which all consist of pictorial devices, without any words at all. The consumers distinguish betweenrepparttar 119220 goods of competing traders solely by means of their marks onrepparttar 119221 basis of expected properties or a certain quality. When any consumer tries to purchase one of these books online, a notification comes up onrepparttar 119222 screen: “The Penguin Online bookshop isrepparttar 119223 recommended online shop from which to purchase Beatrix Potter titles”. This is a good instance ofrepparttar 119224 natural way trademarks work: Penguin Publishers isrepparttar 119225 industrial origin ofrepparttar 119226 books, andrepparttar 119227 little logo of a penguin appears in these goods to tell consumers which isrepparttar 119228 publishing company.

For that to be possible,repparttar 119229 marks must be clearly recognizable. In other words, marks must be distinctive in order to apply for registration, as referred to in Articles 9 and 11 ofrepparttar 119230 PRC’s Trademark Law. But then, how distinctive is a trademark consisting of a globally known fictional character first published and thus introduced torepparttar 119231 general public in 1902? Article 9 ofrepparttar 119232 Trademark Law sets forthrepparttar 119233 condition thatrepparttar 119234 applied trademark “shall not conflict with any other legal rights acquired earlier by others”. It could be argued that when a fictional character’s copyright expires and falls intorepparttar 119235 public domain, it forms part of that ‘conflicting’ legal art and rights, as it is a legal text (Copyright Law) which concedes this right upon citizens.

A second point onrepparttar 119236 effectiveness ofrepparttar 119237 PRC trademark law for fictional characters is that a trademark must be used inrepparttar 119238 same way it is registered and forrepparttar 119239 goods or services so elected, as set forth in Article 51 of PRC’s Trademark Law. It should be noted that, mainly inrepparttar 119240 case of cartoon strips and animated cartoons, copyright protects each different original pose adopted byrepparttar 119241 character. The same cannot be expected from a trademark, which, one can argue, makes it rather impossible for any trademark consisting of a fictional character of public domain to be distinctive at all.

In a further argument on this issue,repparttar 119242 PRC Trademark Law states in Article 1repparttar 119243 purposes of trademark registration such as “…pressing producers and sellers to guaranteerepparttar 119244 quality of goods and services, maintainingrepparttar 119245 repute of trademarks, safeguardingrepparttar 119246 interests of consumers…” However, neither a merchandising agency norrepparttar 119247 creator of a character will themselves be engaged inrepparttar 119248 manufacture or marketing of secondary products, and it will therefore be difficult for them to acquire trademark rights over a fictional character, as they will not themselves be dealing withrepparttar 119249 goods or services and be thus held liable for their quality as stated in Article 7 ofrepparttar 119250 Trademark Law which sets forthrepparttar 119251 trademark user’s liability forrepparttar 119252 quality of goods to which trademarks were applied. And even if a merchandising agency orrepparttar 119253 creator ofrepparttar 119254 character were involved in producing and selling at some levels, Article 40 sets uponrepparttar 119255 licensorrepparttar 119256 duty of supervisingrepparttar 119257 quality of such goods, andrepparttar 119258 obligation to indicate “the name ofrepparttar 119259 licensee andrepparttar 119260 origin ofrepparttar 119261 goods”. So here again, trademarks are meant to work as a link betweenrepparttar 119262 product and its industrial origin, which ultimately provides useful information torepparttar 119263 consumers.

Registration of Personal Names in the PRC

Written by Jordi Llopis


Personal names are intangible assets which are used more and more often by enterprises, as they increasingly rely onrepparttar market appeal of famous people to sell products. Many personal names have a high level of recognition and awareness at all levels of society and as a result can have a high economic value. In practice, oncerepparttar 119174 status of fame is reached,repparttar 119175 name may be used in many commercial activities with a fair prospect of profitable business.

When Michael Jordan’s name was once used in Nike products, within a certain period of time, fans and consumers alike stopped saying ‘I am wearing a pair of Nikes’, and instead began saying ‘I have a pair of Jordans’, eventually turning this model of Nike basketball shoes into a powerful brand. Jordan’s brand has since been extended to a wider range of products and even services (restaurants). Many other famous people or celebrities allow their names to be used in connection with perfumes and other products. Such products connote a feeling, an experience of success, andrepparttar 119176 image ofrepparttar 119177 person lending their name.

Inrepparttar 119178 People’s Republic of China, famous people also register their names as trademarks; however, in China,repparttar 119179 successful registration of a personal name depends on its cultural value as well as its market appeal. In some cases, people associate a given name with values and moral standards, which could eventually frustraterepparttar 119180 effort to register withrepparttar 119181 Chinese Trademark Office, asrepparttar 119182 Lu Xun case illustrates.

The Lu Xun Case Lu Xun is a famous writer in China, who was born in Shaoxing, East China's Zhejiang province on Sept. 25, 1881. Shaoxing is a Chinese geographic location known for its famous yellow wine (绍兴黄酒). Some of his literary works are required reading for all Chinese students who attend middle school throughout China.

Needless to say, Lu Xun (as far as I know) never attempted to apply for registration of his personal name as a trademark before he died back in 1936. As a historical note,repparttar 119183 first Chinese Trademark Law was enacted underrepparttar 119184 Qing Dynasty in 1904.

In 2001, Lu Xun’s grandson founded a wine company, which he named after his grandfather. He also filed an application to register Lu Xun as a liquor brand on behalf ofrepparttar 119185 family. The application was rejected byrepparttar 119186 Trademark Office, which also prohibited any commercial activity concerning Lu Xun. The grounds for refusing its registration wasrepparttar 119187 contention that it is ‘improper’ to userepparttar 119188 name of one of modern China’s greatest writers for commercial activities. The Trademark Office alleged that as a public figure, Lu Xun’s fame is not only owned by his family, but byrepparttar 119189 whole of society.

The applicants have appealed torepparttar 119190 Trademark Review and Adjudication Board. They also successfully registered a trademark using simplyrepparttar 119191 characters for Lu Xun in Japan in October 2001. Also in China, an art school successfully registered Lu Xun as a word mark, butrepparttar 119192 trademark comprised more Chinese characters than merely those of Lu Xun (鲁迅艺术学院)(in English, Lu Xun Art School). We set outrepparttar 119193 options for Lu Xun’s descendants and those wishing to register personal names, in general.

1. Options underrepparttar 119194 Amended Copyright Law ofrepparttar 119195 PRC

Personality Rights As an author of literary works, Lu Xun was entitled to both personality and property rights. Whilerepparttar 119196 latter have a term of protection of 50 years afterrepparttar 119197 author’s death,repparttar 119198 former are unlimited in time. The economic rights expired a long time ago.

According torepparttar 119199 Regulations forrepparttar 119200 Implementation ofrepparttar 119201 Copyright Law ofrepparttar 119202 PRC,repparttar 119203 inheritance of economic rights contained in copyright shall be executed in accordance withrepparttar 119204 Law of Inheritance. Chinese morality and social customs suggest that Lu Xun’s descendants haverepparttar 119205 obligation to maintainrepparttar 119206 reputation of their ancestor, an obligation which –withrepparttar 119207 economic rights having expired- can only be carried out throughrepparttar 119208 enforcement of his personality rights beforerepparttar 119209 courts. But personality rights compriserepparttar 119210 right of authorship, alteration of one’s work andrepparttar 119211 right of integrity (protection against distortion and mutilation), which are not pertinent torepparttar 119212 present case.

Also, according to Article 9 ofrepparttar 119213 General Principles of Civil Laws, “A citizen shall haverepparttar 119214 capacity for civil rights from birth to death and shall enjoy civil rights and assume civil obligations in accordance withrepparttar 119215 law”. It is clear then, that only a living person can enjoyrepparttar 119216 right to determine, use, or change his/her personal name; his descendants may only inherit those property rights deriving fromrepparttar 119217 name forrepparttar 119218 limited period of time stated inrepparttar 119219 PRC Copyright Law.

Authorship Another key issue, moreover, is that copyright protection extends only to “original works of authorship.” Article 3 states clearlyrepparttar 119220 kinds of works that can be protected by copyright. To be protected by copyright, a work must contain at least a certain minimum amount of authorship inrepparttar 119221 form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements and, therefore, are not entitled to copyright protection, even ifrepparttar 119222 name, title, or short phrase is novel, distinctive and/or lends itself to a play on words.

Becauserepparttar 119223 trademark registered byrepparttar 119224 art school does not refer to any of Lu Xun’s works over which to claim authorship,repparttar 119225 descendants are defenceless in this respect.

The descendants can claim copyright through neither economic nor personality rights, only through a bare moral and social obligation to respect and defendrepparttar 119226 reputation of Lu Xun. Authorship is a personality right, and as such is enforceable no matterrepparttar 119227 time, as opposed to economic rights, which expire 50 years afterrepparttar 119228 author’s death.

2. Options underrepparttar 119229 Amended Trademark Law ofrepparttar 119230 PRC

The Trademark Law ofrepparttar 119231 People’s Republic of China, Article 8, provides a definition of what signs may constitute a mark, whether a trade, service, collective or certification mark:

“Any visible sign capable of distinguishingrepparttar 119232 goods of a natural person, legal person, or other organization from those of others, including words, graphs, letters, numerals, three-dimensional signs and combinations of colours as well as combinations of foregoing elements”.

The Country’s Trademark Law has no provisions forbiddingrepparttar 119233 adoption of famous names as trademarks. Practice indicates, however, thatrepparttar 119234 personal name which is to be applied for trademark registration must have a clear connection withrepparttar 119235 name and with what it represents. In this respect, for instance, any athlete known torepparttar 119236 people may register his name as a sportswear brand.

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