Article by Nicola Solomon published in The Author of Spring 2001. Leading literary lawyer Nicola Solomon, a Deputy District Judge and Partner of Finers Stephens Innocent (179 Great Portland Street, London W1W 5LS, tel. 020-7344-7652) has kindly given AKME permission to reproduce this article. She can be e-mailed at nsolomon@fsilaw.co.uk.
Bookshops no longer sell only books, particularly in the childrens' section; each seems to come with its matching doll, colouring book, sticker book, lunchbox and stationery. There is a lot of money to be made from characters that catch the public imagination. How can you protect the characters you originate? If you want to use other people's characters, how safe are you in doing so? Surprisingly, characters per se are not protected under English law; copyright protects the words and form in which ideas are expressed, not the ideas or characters themselves. The type of copying traditionally envisaged by the law, taking chunks of original text, is not what happens when someone lifts your famous character's name or catchphrase for their doll or pencil. It is sometimes possible to protect a plot, if it can truly be shown to be original, but not usually a format unless it is particularly well developed. Since The Little Book of Calm there have been a great many spin-off 'little books'. There is nothing the original author and publisher can do about this because the idea and format are not sufficiently original to be protected. Names do not attract copyright protection, as they are considered too short to be literary work. They can, however, be protected by trademark. For example Peter Rabbit is registered as a trademark which would be infringed if you published a Peter Rabbit book. There are limits on what you can register as a trademark, notably descriptive names; Jane Hissey would be unable to register the name Old Bear, as that is clearly descriptive.
If your character is illustrated then it may be a little easier to protect; English law recognises the principle that a picture is worth a thousand words. Your original drawings will have copyright and any new works which use a substantial part of any of those drawings will be an infringement. 'Substantial part' is hard to define but judges start from the position that 'what is worth copying is worth protecting'. So pictures or three-dimensional objects which bear a suspicious resemblance to your character will be infringements. Illustrations can also be registered as trademarks, but this does not protect the character, only each specific image. In 1993, Beatrix Potter's pictures came out of copyright and each image was then registered as a trademark. In Peter Rabbit each individual picture now has ("r" - resistered symbol) against it, indicating it is a registered trademark ("TM" denotes a trademark that is not yet registered). Although the registration process is expensive it has the great advantage that trademarks can be re-registered every ten years, so protection can be perpetual.
If a character is not protected by copyright or trademark, the author may still be able to prevent unauthorised use through the law of passing off, which is intended to stop someone trading on another's reputation. Passing off applies if someone is confused into thinking that the new goods were designed or licensed by the original author. Because there is no copyright in a name or character you might take a minor character and develop a book about them. Tom Stoppard did this very successfully in Rosencrantz and Guildenstern are Dead. Of course he had little difficulty as Shakespeare is well out of copyright. If you write a sequel to a modern work, the author might claim passing off (while your book would usually have your name prominently on it and the public would not be misled into thinking that it was by the original author, he or she might claim that confusion was likely because the public does not remember the author's name but only the name of the character). For this reason some books using characters originated by others now bear both the names of the new author and the original author.
The original author could also claim passing off if the public might think you had been licensed to use the character. The sale of secondary licensing rights is known to be lucrative - one only needs to look at the number of Barbie products in your average high street shop and the fuss over the Harry Potter merchandising material due out this month. If you decided to write a Harry Potter spellbook the public might think that it was endorsed by J. K. Rowling or her publishers, who would be able to claim damages for passing off. But if you called it 'the unofficial Harry Potter spellbook' there might be little that J. K. Rowling or Bloomsbury could do about it; by calling it unofficial you would make it clear that it had not been endorsed by them. The Harry Potter name is too short to be protected by copyright and is not yet a trademark. So long as you did not use chunks of the text or the illustrations there would be no copyright infringement. The only danger here would be if your work amounted to derogatory treatment of the original by in some way damaging the integrity of the work or damaging J. K. Rowling's reputation.
If you want to use a character that you think is out of copyright, remember that it may have various owners. Of course, the owner may be the writer. However it might also be the illustrator. Copyright lasts for the life of the creator plus 70 years so there might be quite different copyright duration between the two. Take The Wind in the Willows. Kenneth Grahame died in 1932 and his work will therefore be out of copyright at the end of next year (it was also briefly out of copyright between 1983 and 1994 when copyright was changed from 50 to 70 years after death). E. H. Shepard died in 1976 at the grand old age of 97 and his illustrations will be in copyright until the end of 2046. A note of warning. The sincerest form of flattery may be imitation but characters are valuable and their originators are constantly developing new and sophisticated attempts to use the law to protect them. While the above represents the law now, this is a changing area. Incorporation of the European Convention on Human Rights into English law under the Human Rights Act 1998 may allow a claim that characters should be protected. Article 1 of the Protocol to the Convention gives everyone the right to peaceful enjoyment of their property. It may be held that allowing people to take away valuable property such as rights in characters is not in the public interest and should be forbidden under the law. However a similar argument in the context of copyright failed recently. Furthermore, character merchandising is an increasingly international trade and many other countries such as the United States and most of continental Europe have laws against unfair competition which may provide protection for characters. Do check carefully as to the current state of the law in the countries you intend to sell in before you make those Bob the Builder dolls!
If you develop a character which you feel may be successful how do you protect and exploit your concept? First make sure your idea is properly documented. You do not have any rights in an idea until it is recorded in permanent form. Trademarks are quite expensive and the process is slow, so registering a name and illustrations may not be worthwhile until you are sure the design is going to be a hit. If you show the concept to a publisher, whether commissioned or not, state that the ideas are valuable and given in confidence. If a valuable idea (even if incapable of copyright protection) is given in a situation of confidence the recipient cannot use it without your consent. Make a dated copy of exactly what you told the publisher so that you can later prove that it is your concept for Twiggy the Tree that is now, written by another author, that publisher's bestseller. If your publisher likes the idea, consider carefully any contract that is offered. Take advantage of the Society's contract checking service. If you do not think that your publisher can properly exploit all the character rights (character merchandising is a very specialist field) then try to retain merchandising rights. You might also want to retain the rights to spin-off books such as colouring and pop-up books. Be careful if the publisher is going to help you develop the character. There is a risk that they could claim rights in the developed images, for example if the idea is animated by computer. Make sure that you own not only the original rights but also any material which is created from your original design. Such developments multiply as sub-licences are given. For example the Disney version of Winnie the Pooh is quite different from E. H. Shepard's original illustrations, and in the case of The Snowman, although the original story was written by Raymond Briggs, it was animated by another illustrator whose images were used for the merchandising. Without an agreement it would be the animator rather than Raymond Briggs who would profit from sales.
If your book and character catch the public imagination and you are asked to enter into merchandising arrangements, you can either grant a licence to a merchandising agent who will grant separate sub-licences to manufacturing companies or you can licence direct to those companies. It is important to be careful about the specific terms of merchandising arrangements. There is no room to discuss them in detail here but they have quite different considerations from book contracts, most particularly in the area of quality control. Speak to a specialist solicitor or the Society about negotiating such terms. Characters can be lucrative. Don't lose out!
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