Old characters, new tricks: The conundrum of the expiry of copyright
Peter Rabbit and Betty Boop – what do these culturally iconic illustrated characters have in common?
The answer is that early illustrations of both characters have now entered the public domain (with early Peter Rabbit illustrations in the public domain for most, if not all, territories around the world, while early Betty Boop illustrations are in the public domain in the US). As the term of copyright protection relating to an increasing number of beloved and well-known cartoon and other illustrated characters in popular media reaches expiry, a key question emerges: how do rightsholders continue to commercialise and protect their IP rights in these characters when copyright protection falls away?
The good news is that the expiry of copyright protection for such characters is often not the end of the story. With the right IP strategies, businesses can maintain meaningful control over and continue to effectively commercialise their most valuable characters for years (even decades) beyond the expiry of copyright.
How long does copyright last?
In many countries, including the UK, Singapore and EU member states, the general rule is that copyright in artistic works lasts for the life of the author plus seventy years (with a work entering the public domain in the relevant country on 1 January of the following year). However, this is not the case in all countries: for example, in China, the general rule is that works created by individuals are protected for the life of the author plus fifty years (with works created by legal entities instead protected for fifty years from first publication), and in India, copyright in artistic works lasts for the life of the author plus sixty years.
The duration of copyright protection has changed over the years (so that historic legislation and/or transitional provisions may still be relevant): for example, in Spain, the copyright in works created by authors who died before 7 December 1987 lasts for the life of the author plus eighty years. Special cases may also attract different terms of protection: in the case of ‘Le Petit Prince’, the author and illustrator, Antoine de Saint Exupéry, was officially declared “mort pour la France” (which is official recognition of having died for France), resulting in the term of protection being extended by thirty years (although some commentators debate the validity of the extension, following the introduction of EU directives harmonising the duration of copyright protection).
Importantly, different depictions of the same character can each attract separate copyright protection, sometimes with different expiry dates. For example, the original illustrations of the character ‘Peter Rabbit’ by Beatrix Potter entered the public domain in most jurisdictions in either 1994 or 2014, after the expiry of the fifty-year or (in some jurisdictions) seventy-year period of protection following Beatrix Potter’s death in 1943. However, later illustrations (for example, those illustrated by Nicola Kinnear in the 2021 book ‘Peter Rabbit: Head Over Tail’) continue to enjoy separate copyright protection across the world.
How can the commercialisation of fictional characters be protected once copyright expires?
In the light of the above, creating new iterations of a character is a key strategy employed by many rightsholders. Each update or variation of a character (such as a revised visual appearance or a modernised animated version) should, provided it is sufficiently different from previous iterations, attract its own layer of copyright protection. In doing so, there is a ‘resetting of the clock’ on the character’s copyright protection, without extending the term of protection for previous iterations. Good record-keeping is essential here – rightsholders should have a clear audit trail documenting specific work creation dates, and evidencing authorship, ownership and the chain of title in respect of such works (including evidence of employment history where relying on the default position under many copyright regimes that the copyright in employee-created characters vests in the employer company automatically), in case they are ever challenged on this. In addition, in territories with copyright registration regimes, even where not mandatory to do so, it may still be helpful to obtain copyright registration in respect of any new iterations of a character. For example, in India, registration certificates serve as prima facie evidence of ownership and subsistence during enforcement proceedings.
Outside of new character iterations, trade marks are one of the most effective ways of continuing to commercialise characters beyond their terms of copyright protection. Character names, logos, and distinctive visual elements can be registered as trade marks and, crucially, can remain registered in perpetuity in most countries (provided that the relevant requirements are satisfied: for example, in the UK, trade marks need to be renewed every ten years and put to genuine use in the UK). There may be exceptions to this rule: for example, in China, where a trade mark’s graphic elements are entirely derived from works in the public domain, the trade mark owner is usually refused a monopoly right and thus the ability to block third parties’ legitimate, descriptive use of the original character content.
A well-managed trade mark portfolio can therefore provide a long-term means of maintaining control over characters, deterring competitors and providing a clear basis for enforcement action where necessary. For example, the owners of the Betty Boop brand may not be able to prevent third parties from making unauthorised use in the US of the visual appearance of the 1930 Betty Boop cartoon character, but any commercial use of a ‘BETTY BOOP’ logo or word registered trade mark or a figurative trade mark (such as certain trade marks containing an image of Betty Boop) would likely give rise to an actionable case in trade mark infringement in the relevant countries.
Enforcing so-called ‘unregistered trade mark rights’ is another potential strategy to consider here. In the UK, India and Singapore, for example, the tort of passing off (which has been codified in Indian legislation) allows rightsholders to take action against a third party using the rightsholder’s unregistered trade mark where the rightsholder can demonstrate that they (i) have generated sufficient goodwill in the relevant jurisdiction, (ii) that there has been a misrepresentation by the third party to the public that the third party’s goods or services are those of the rightsholder, and (iii) that this misrepresentation has caused damage to the rightsholder. Even if the tort of passing off is not available in a particular jurisdiction, protection against the unauthorised use of an illustrated character may arise in the form of an alternative cause of action such as parasitism (in France), slavish imitation (in the Netherlands) or unfair competition (including in Austria, Bulgaria, China, Czechia, France, Germany and Hungary). However, enforcing rights in unregistered trade marks is reactive by nature and harder to prove than trade mark infringement, so it often works best as a supporting cause of action (for example, by being pleaded alongside a claim for trade mark infringement).
Rightsholders should also consider if it is possible to enforce rights in designs associated with the relevant character. It is possible for rights in designs to protect the appearance of a product, which can be particularly useful in relation to character merchandising. It is worth noting that, in many countries, the term of protection provided under designs law is shorter than the protection offered under most copyright regimes; for example, in the UK and the EU, registered design rights last for twenty-five years while, in China, registered design patents last for fifteen years. Nevertheless, this type of right may add another layer of protection.
In addition to the rights and causes of action mentioned above, licensing and contractual arrangements frequently play a key role in enabling the continued commercialisation of valuable creative assets (such as illustrated or cartoon characters) by controlling third-party use of those characters. Where copyright in a version of a character is due to expire in the near future or has already expired, a licence to use the copyright in that version of the character will often expire when the copyright does. From the rightsholder’s perspective, it would be helpful for the licensing arrangement, to the extent permitted by applicable law, to contain restrictive covenants and non-compete provisions to limit the third party’s use of the relevant character following the expiry of copyright in the licensed work. However, the enforceability of these provisions will be subject to competition law considerations. Therefore, it would be sensible to structure any licensing arrangement around intellectual property rights or other rights (such as copyright in later versions of the character or trade marks or rights in designs) that continue beyond that copyright expiry.
Finally, it may be worth considering the role of moral rights (and equivalent rights), which typically allow authors to protect the integrity of their works. This is especially useful in author-centric jurisdictions such as France, where these rights are perpetual and cannot be waived or assigned. In addition, in Sweden and other Nordic countries, the so-called ‘classics protection’ protects literary and artistic works of cultural significance from being subjected to offensive treatment. In effect, it confers on certain works of cultural significance a form of perpetual integrity right that survives the expiry of copyright. It remains to be seen whether there are any illustrated characters that would be considered eligible for such protection. However, it’s not usually possible for these rights to be transferred to or exercised by commercial organisations, and so enforcement of these rights may be commercially less useful than some of the other options outlined above.
Conclusion
Expiry of copyright in a fictional character does not have to result in the end of the rightsholders’ ability to commercialise that character. By planning ahead, adopting a more layered IP strategy, and actively managing their portfolio of creative assets, rightsholders should be well placed to continue to maintain control of and commercialise their characters long after any initial term of copyright protection has expired. A clear understanding of the IP legal framework in each key jurisdiction, and how these evolve over time, will be crucial for implementing an effective commercialisation strategy.
The authors would like to thank Nicholas Yau Lun Chong, Trainee at CMS, for his assistance in writing the article and colleagues from Austria, Bulgaria, China (PRC), Czechia, France, Germany, Hungary, India, Italy, the Netherlands, Singapore, Slovakia, Spain and Sweden for their jurisdictional insights.
