IP Considerations in Creating a Character

by Valerie Brennan

Yet another dispute over copyright rights in sports branding has hit the news.  Similar to the fight over the Baltimore Ravens logo many years ago, the Phillies are embroiled in a dispute with the designers of the “Phillie Phanatic” mascot over who owns the copyright rights.  These battles provide a good backdrop for understanding copyright creation and trademark and copyright ownership of mascots, characters, and logos.

The Design Process.  Many companies and sports teams hire others to create their logos, characters, mascots, and other brand features.  Unfortunately, the clients often fail to enter into an agreement that solidifies their rights.

Dual Rights.  The visual appearance of characters can be both as copyrights (the creative expression) and trademarks (when the character becomes connected with a product or service as a source identifier). Character / mascot names can only be protected as trademarks, because “names” are not sufficiently creative to be protected as copyrights.  As an example, GEICO uses the word mark GECKO and the character/logo of a standing gecko as trademarks; the appearance of the GEICO Gecko also is protected as a copyright.

Work-for-Hire.  This vies with “public domain” and “fair use” for the most-misunderstood-to-your detriment term in copyright law.  Just because you “hire” someone to do some “work” doesn’t mean that you own the copyright as a “work-for-hire.”  It’s counterintuitive and so trips people up.

Document it correctly.  Get a written assignment.  Not a statement of intent or a declaration of ownership but a straightforward “x hereby assigns to z”.  Make sure the work is original.  If it’s an original work but influenced from past works, make sure you’ve reviewed those past works and determined, with the help of counsel if needed, that the new work is not substantially similar.

What about a contest?  Contests are great ways to build up excitement among fans of a team or a restaurant even before the new character is launched.  But they can be tricky.  You’ll need to make it clear at the outset that rights in all submissions are assigned, include assignment language in the rules, then get written assignments from all frontrunners.  If you’re doing a fan or customer vote, consider filing to protect the finalists as trademarks a day before they are put out to vote.  And don’t forget about registering all corresponding domain names.

Do any necessary trademark clearances. Be sure to clear the availability of character/mascot names and likenesses just as you would any other trademark.  If you’re using a vote to pick a winner, do the clearances on all the finalists before they are announced.  To be protectable, your character name and likeness cannot be likely to cause confusion with a pre-existing mark.  In contrast, copyrights aren’t “cleared”; the focus is the design process and making sure that the work is original and not copied.

Rights of Personality.  If using a live human (or even an animal) as a mascot actor, be sure you’ve obtained all the rights you need to exploit the mascot and to replace the mascot as necessary.

Lastly, protect your Rights.  Because characters can serve both as trademarks and copyrights, it’s recommended to register both ways.  The trademark registration covers the goods or services that the public connects with the character – the name RONALD MCDONALD is registered for restaurant services, for instance.  Copyrights, which also can be registered, cover the visual appearance.  Character marks also often appear on products, like clothing, and can be protected for those as well.  The visual appearance of the character of Ronald McDonald also is protected by copyright registration.