We encounter fictional characters in product advertising as well as in literature or film. Harry Potter, Superman and the Michelin Man also show the high economic value and the possibilities of exploitation for such artificial characters. The legal dispute over the bearded advertising figure of Captain Iglo shows, however, that legal risks can arise when using them. It is therefore advisable to consider some guidelines when introducing new fictional characters or mascots.

The legal protection of fictional characters is complex, not least because various legal disciplines of Intellectual Property Law are affected and the measures to be taken can be extensive. In addition to the physical characteristics of a figure, the question arises as to how one can secure possible qualities or the name. The first thing that comes to one’s mind is legal protection based on Copyright Law. Under German Law, this applies automatically as long as the legal requirements are met in the specific case. There is no need for an application or registration to obtain copyright protection.

Mixture of Intellectual Property rights

The prerequisite for copyright protection is a creation that is characterized by a sufficient degree of originality. For fiction film or book characters such as Bambi and Asterix, the ability to be protected by Copyright Law was affirmed by Courts very early. A distinction must always be made between the physical appearance and further features of the figure, for example the character. While copyright protection for the outer appearance is quickly affirmed, at least for artificial characters like comic characters, the situation is more complex for real people who appear with certain characteristics. However, legal protection is also conceivable in such cases.

Copyright Clearance recommended

If Copyright Law comes into play, the legal situation should always be cleared at an early stage. Since fictional characters are often created by external contractors, care must be taken to obtain the usage rights required for the specific use. When mascots for a use in advertising are concerned, it is obvious to acquire rather extensive usage rights. Only this may enable to use the character rather freely and to develop it further in the future. It is also important to clarify the question of naming the author.

In addition to copyrights, Trademark Law may play an important role to secure the features or the name of a fictional character:

• The physical appearance of a fictional character can be secured via device marks or 3D marks. This offers the advantage to obtain legal protection for an unlimited period. Unlike copyright protection which ends 70 years after the death of the author/creator, trademarks can be renewed without limitation every 10 years. However, it should be noted that trademark protection is limited to the specific registration.

• It is also recommended to register trademarks with the name of the fictional character. Ideally, this should be done as a word mark, as this results in a wider scope of protection. For a successful registration of a word mark it is required that the word elements have a distinctive character. This can become an obstacle, especially with well-known literary characters – at least for goods and services from the media segment (see Batman judgement of the General Court, 7 June 2023, T-735/21). It is also important to ensure that trademark protection is gained in all countries in which the character is currently or will be exploited the future.

• Several Trademark Offices also allow unusual kinds of trademarks to be registered and this can be particularly interesting in the context of fictional characters. Movement marks and Multimedia marks are worth to be considered in that context and they can be registered not only at the European Union Intellectual Property Office (EUIPO) but also before the German Patent and Trademark Office (DPMA). These kinds of trademarks allow to secure sequences of images or video sequences with sound using tags.

Often ignored – Design Law

Finally, Design Law can be another building block for the legal protection of a fictional character. A design protects the aesthetic appearance of a figure, which, in addition to copyright protection, can provide a further defense against the adoption of the physical appearance. However, it requires novelty or uniqueness of the respective design. This implies that a design registration must be made within a 12-month period after its initial disclosure. Otherwise, the registration is worthless. Once registered, a design can provide protection for up to 25 years. In the EU, in addition to registered designs, there are also unregistered design rights, which, however, offer less protection in terms of time and scope (so-called Unregistered Community Design). For these – as the name suggests – a registration procedure is not necessary. If the fictional character is still adopted, Unfair Competition Law offers another starting point to take action against the infringement. One may enforce claims based on the misleading confusion of consumers or may apply the so-called supplementary protection based on Unfair Competition Law (“ergänzender wettbewerbsrechtlicher Leistungsschutz”). The latter appears suitable for fictional characters that are well- established and enjoy a certain level of recognition. Whether the conflicting use by a competitor will then be prohibited also depends on the type of use. This is illustrated by the dispute over “Captain Iglo”. The company behind it was bothered by the advertising of a manufacturer who also offered fish products. The competitor’s packaging also featured a bearded man in a hat. Nevertheless, claims were not only rejected in the 1st level of jurisdiction (District Court of Munich, file number: 17 HK O 5744/20) but also the 2^nd level of jurisdiction.

Unfair Competition Law: Action against free-riders

The decision shows how difficult it can be to defend well-established fictional characters. Nevertheless, one should not be deterred by such judgements as the outlined legal measures offer a resilient legal basis to take against infringements. As a result, it will be advisable to consider a broad legal protection for a fictional character when it is introduced. If the fictional character becomes popular, a regular review should be carried out and the expansion of existing legal mechanisms should be considered.