How to “catch all” of your video game characters’ IP, Aaron Trebble, Nick Allan

A number of recent articles have compared the appearance of the characters in Pocketpair’s newly launched Palworld title with certain characters in the well-known Pokémon franchise. By way of example, the image below has been widely circulated:

It is not clear at this stage whether any IP dispute is expected to result from this story or what the specific issues would be in such a potential dispute, nor do we propose to venture an opinion on these matters at this stage. However, the press attention acts as a valuable reminder to games companies that it is important to: (1) take all available steps to protect the IP in the appearance of key characters; and (2) be aware of the risk of IP infringement when taking inspiration from others at the development stage.

We consider these interesting issues in general terms in this article, including the less commonly used registered rights available to protect character likenesses. We do so from the perspective of UK law, but it should be noted that the particular IP rights available, the grounds for infringement and available defences may vary in other jurisdictions.

For the avoidance of doubt, where we comment in this article on protecting or infringing the rights in a character’s likeness, we are referring to fictional characters in games and not (for example) to the appearance of real world people, for which other legal considerations would apply.

Rights available to protect game character likenesses

Broadly speaking, the key IP rights which can be used to protect the appearance of characters are copyright, registered designs and registered trade marks. Whilst the unregistered protection offered by copyright is an important, and probably the best-known, means to protect character likenesses, it is advisable to consider all the available options, particularly for key original characters.

Copyright

If a relevant, original work has been created, copyright protection arises automatically. It can generally be expected that the design drawings and 3D models relating to original in-game characters will be protectable. The fact that no steps need to be taken to register the copyright in the UK, or to pay applicable fees, means that this is a very useful form of protection for all of the artwork across a game, including less significant characters, non-player-characters and so on for which it may be more difficult to justify the costs of individual registration. In addition, artistic copyright lasts for a very long time, generally for the life of the author plus 70 years, with no need to pay renewal fees.

We consider how copyright in a character may be infringed further below, but one point worth mentioning at this stage is that it is necessary to prove that the alleged infringer both had access to and copied the original work in order to make out a claim for copyright infringement. This is not necessary to establish a claim for registered trade mark infringement or registered design infringement.

Registered trade marks

Why register a trade mark?

Trade marks can be a valuable means of protecting the exclusive right to use key characters and preserving their reputation and image for use in sequels, merchandise and other marketing.
Trade marks can potentially last indefinitely, i.e. even longer than copyright in the images, if they are renewed (for a fee) when due. However, if a UK or EU trade mark is not actively used for a period of 5 continuous years, then it may become vulnerable to removal from the register.

What can be registered?

A broad range of signs (words, images and other things) can be registered as a trade mark, so long as they are capable of being recognised by consumers as a brand. This includes character names and character likenesses in 2D and 3D and, in principle, may also include distinctive moving images depicting those characters or other items in-game.
For example, a UK trade mark registration covers the appearance of the well-known Lara Croft character. That character’s name is also registered (details of these trade marks can be found here and here).
When a trade mark is registered, the applicant needs to choose which goods/services it will cover. For a character, this is likely to include at least video games and complementary goods such as clothing and toys. The mark needs to be distinctive for the goods/services it claims (see further below).
In the UK it is also possible to register a “series” trade mark. This could be used to register a series of images in one mark, portraying the same character in different poses, provided that the fundamental appearance of the character remains unchanged in each pose.

Points to note about registration

The proposed trade mark should be distinctive and capable of functioning as a trade mark. Original invented characters are often likely to be capable of meeting this test and functioning as a trade mark, although there are some points to bear in mind.
The character should not, for example, be a commonplace portrayal of a widely used fictional/mythical character or creature (whereas a unique portrayal of that character could be registrable). Commonplace characters are unlikely to be distinctive.
Further, the representation of a trade mark must be “clear and precise”. It is likely to be preferable to use a single 3D or 2D image of the character rather than a moving image. That might mean multiple registrations are needed to protect fully a character, e.g. if its likeness varies significantly throughout the course of the game or across the franchise.
Caution may also be needed when claiming a character likeness for certain goods. That is because a sign may be refused if it is does not vary sufficiently from the norm for the goods claimed. A simple animal character may be difficult to protect for soft toys for this reason, because customers may not recognise it as an indicator of origin.
A trade mark could also be refused protection if it consists exclusively of a shape or other characteristic of the goods for which it is to be registered, which is necessary to obtain a technical result, or which gives substantial value to the goods.
For example, if the character likeness risks being perceived solely as a visually striking and aesthetically pleasing shape for the goods (which might be risk if certain toys or accessories are to be shaped like the character), then it could be refused protection in respect of those goods.
In light of these potential challenges, it is a good idea to seek legal advice in relation to the best use of trade mark protection, and potentially to consider the use of registered designs (for which the registrability criteria differ) in tandem where appropriate.

How is a trade mark infringed?

Trade marks prevent others from using the same or similar signs for similar or identical goods/services. For example, a registration might be used to prevent a similar character from being used in a competitor video game.
However, where a similar character is being used, infringement would generally require that the relevant consumer is likely to be confused. This may present a challenge in the case of similar characters used in rival games if the reality is that customers are unlikely to be confused as to the commercial origin of each title.
When an identical character is being used in relation to identical goods, it is not necessary to prove likelihood of confusion, but one of the essential “functions” of the trade mark must still be affected in order for it be infringed. These functions include, for example, the use of the trade mark for sales promotion, or as a guarantee of quality.
The precise manner in which a replica character is used in-game would be very important to determining whether one of these functions is in fact affected, so establishing infringement would not necessarily be straightforward even when the replica is identical to the trade mark.
Once a trade mark has acquired a reputation, e.g. as a result of the commercial success of the game, it benefits from enhanced legal protection. Such registered marks can potentially be infringed even if customers are not confused, if the use of the similar character is likely to result in harm to the reputation of the trade mark or takes unfair advantage of that reputation. However, this type of infringement claim can be difficult to establish.

Protection for unregistered trade marks

It is worth briefly noting that a character with a reputation (even one which has not been registered) might also benefit from protection under the law of passing off. However, for a passing off claim to succeed, it is necessary to show that customers are likely to be deceived as to the trade origin of the relevant goods. So, again, this type of unregistered trade mark claim could be tricky to pursue in respect of a rival game which clearly originates from a different supplier.

Registered designs

Registered designs are an often-overlooked, but very important option, for protecting characters in the UK or EU. We would encourage all game companies to consider whether it is appropriate to protect their visual in-game elements using designs. They are a relatively quick and straightforward right to obtain, and can last for up to 25 years provided that the registration is renewed as needed.

Unlike for trade marks, there is no requirement to use a design once registered or to designate it for particular goods. However, a UK or EU registered design needs to be filed within 12 months of its first being made available to the public.

A registered design can protect the appearance of the whole or part of a character’s likeness (and other visual elements shown on screen). It is necessary that the design in question is “new” and has “individual character”, which means that it is different to any prior designs made available to the public. This requirement will be met by new original characters, but it is vital to get the registration application filed within the 12 month period referred to above.

As can be seen here, Lara Croft’s appearance has also been registered as a UK design to supplement the trade mark protection covering her name and likeness.

A registered design protects against the use by others of any design which does not produce, on the notional “informed user”, a different “overall impression”. In other words, if a rival character is not sufficiently different, its use in a competitor game may infringe the design. Unlike for trade mark infringement, there is no requirement to show confusion, which could be a valuable advantage of using this right in cases involving rival games where there is no confusion, but visually similar characters have been used.

Further, as described in our earlier blog post here, upcoming changes to EU design law may potentially make EU registered designs more attractive as a means of protecting digital items.

Being alive to infringement risks

Video game lawyers are often asked to assist with the tricky question of whether inspiration can safely be taken from an existing work. Overarching themes, commonplace elements and mechanics at a generalised level can be tricky to protect (certainly through copyright), and it is not unusual to see similarities between rival titles at this level. Nonetheless, it is very important always to be mindful of relevant rights which might protect the existing work, and to seek appropriate legal advice before using an existing product as inspiration.

Developers should be aware that copyright is likely to subsist automatically in the appearance of any relatively recent original characters (or, indeed, less recent characters given the long term of copyright protection). We would typically also recommend carrying out clearance searches on the relevant registers, which will reveal whether potentially concerning registered trade marks and/or designs have been granted or applied for.

Where taking an earlier original character as inspiration, i.e. where that earlier work has been used as a reference when creating the new work, some degree of copyright infringement risk at least must often be accepted, unless the new work bears no visual similarity at all to the original character.

Copyright can be infringed by the reproduction of the whole or a “substantial part” of the original work. Copying a small part (in percentage terms) of the original image could still infringe the copyright if that small part is sufficiently important to the original work. Equally, copyright can be infringed by taking a series of small parts from a work where those parts together which are sufficiently numerous or extensive to justify an inference of copying.

In other words, an approach of changing or tweaking one or two aspects of the old character is unlikely to help if significant parts of the original work can still be seen in the new character. That will be the case even if those parts which have been copied form only a small part of the new character’s overall appearance.

Of course, rather than seeking to navigate the potential risks in this area, an alternative option (where appropriate) may be to consider approaching the owner of the relevant IP for a licence and avoid facing the possibility of negative publicity and/or legal action later down the line.

Summary

Copyright arises automatically and will protect original character likenesses from unauthorised reproduction.
If an existing character is used as inspiration when creating a new game, copyright may be infringed if a “substantial part” of the copyright work has been copied.
It is recommended that games companies also consider using a combination of registered trade marks and registered designs to protect their key characters.
Registered trade marks are an important way of protecting the exclusive right to use distinctive character likenesses.
The trade mark should use a clear and precise depiction of the character in order to be registrable. This might make fixed 2D or 3D images preferable.
Characters which could embody the shapes of the goods (e.g. merchandise) for which they will be registered may also be more difficult to register.
It is necessary to prove that consumers are likely to be confused in order to establish trade mark infringement. This can be tricky in cases involving similar characters used in rival games.
Registered designs are an often overlooked but very important additional means of protecting character likenesses. They are relatively quick and straightforward to register.
To be registrable, a design must be sufficiently different to any prior designs already made available to the public.
There is no need to prove customer confusion when relying on registered designs. They may be infringed if the rival character is not sufficiently different to the registration.

For further information, please contact Aaron Trebble (Legal Director), Nick Allan (Partner), Jemma Costin (Trainee Solicitor) and Adrian Aronsson-Storrier (Practice Development Lawyer) in the Lewis Silkin Interactive Entertainment team.