CHARACTER MERCHANDISING UNDER THE COPYRIGHT AND REGISTERED DESIGNS LAWS OF SINGAPORE
| Published date | 01 December 1996 |
| Author | MARY WONG WAI SAN |
| Date | 01 December 1996 |
In recent years, one feature of commercial activity that has become increasingly common has been the use of character merchandising1 in the advertising and marketing of different products. It is no longer unusual for the opening date of a film to be preceded by a launch of associated products, nor is it uncommon to find famous persons, local and foreign, appearing in print and television advertisements endorsing or promoting various products, services, businesses or organisations. The common thread linking many of these diverse actions appears to be the prompting, in the consumer’s mind, of the desirability of the product, service, business or organisation in question, based on the consumer’s perceived connection between the product, service, business or institution and the celebrity, character or event that is being used to create such an association2.
The reason for the success of such a marketing strategy may lie in the familiarity of the Singapore public with such characters as the pink Duracell bunny, the cartoon characters of Batman and the Mighty Morphin’ Power Rangers, personalities such as soccer star Fandi Ahmad, television personas like the cast of Singapore’s first English-language television comedy series “Under One Roof”, and events such as the Olympic Games3.
Along with the proliferation of legitimate character merchandising (in the sense that the use of the name or image of the celebrity, character or event is with the permission of the person or whoever has the rights to exploit the character or event), there has been the inevitable growth of non-legitimate character merchandising (in the sense that the use is no longer with the permission of the person or rights owner in question). Thus, it is possible to find cakes made and sold in the shape and likeness of Disney figures such as Mickey Mouse but done without the permission of the Walt Disney Company, or tee-shirts printed with photographs of famous pop stars or cartoon characters for which permission to reproduce was not sought beforehand.
The motives for imitation are fairly obvious: it can be extremely lucrative in attracting custom and there is little effort involved in taking and using the name, photograph or image of a popular person or character4. In addition, it is often possible for imitators to make their product or service
available to the public at a lower price than the original person, creator or any of their licensees as they need not advertise or promote the person or character which they are exploiting — such creation of public awareness will usually be or have been done by the originators themselves5. Although there may be differences in the nature and quality of the product or service offered by the originator and the imitator, the increase in consumer choice may have to be balanced against the challenge which such imitations, if unchecked, may pose to the originator’s rights, including his ability to license and exploit his persona or creation.
With this background, this article seeks to examine the extent to which Singapore copyright and registered design laws offer protection to persons, creators and other rights owners against such unlicensed use of their names, images and creations6. In Part I, the nature and scope of character merchandising will be outlined, while Part II will examine the different means by which legal protection under copyright and registered design laws can be obtained.
Character merchandising has been defined in various ways, including
the marketing of goods and services that embody or are connected to actual or fictional characters, or the marketing of things whose association with any of such goods and services is likely to enhance their popularity and saleability7.
Additionally,
Many purchasers are prepared to pay more for goods simply because they bear the name of, or some symbol or drawing associated with, a popular character (who may be real or fictitious) or a well-known institution or event8.
From these definitions, it would be apparent that the term “character merchandising” embraces several types and methods of licensing activity. Essentially, character merchandising would include any of the following activities:
This category would include virtually anyone whose name, image or public reputation is commercially valuable. This would include not only celebrities, such as sports and notable business figures, movie stars and entertainers, but could conceivably also embrace ordinary individual members of the general public, e.g., the aim could be to cause the average consumer to identify with the non-famous person in the advertisement, a common practice in advertisements for weight loss programmes or other products and services requiring the use of the “man in the street”. Interestingly enough, there appears to be little attempt on the part of the marketing industry to utilise political figures9.
Commonly, this category would comprise characters portrayed by real actors or other persons, possibly in a film or television production, e.g., “Crocodile Dundee”10, “Kojak”11. In the local context, the most notable example would be the cast of “Under One Roof”, who are seen as their characters in television and print advertisements for banks, department stores and consumer products.
The most common type of characters under this category would be cartoon or comic strip characters, such as the Walt Disney figures, Batman, Calvin and Hobbes. Film characters such as Darth Vader from the “Star Wars” movies or puppets like the Muppets would also be included. In the local context, one notable example would be the comic strip character “Mr Kiasu”.
Under this category would be found instances of use and association which are usually not strictly considered “character merchandising”, such as the use of slogans, songs and titles, or association with events and particular institutions such as major festivals (e.g. the Olympic Games or the Singapore Festival of Arts) or organisations (e.g. commercial bodies such as a major hotel chain). A distinction can, however, be made between the first and
second types of use, in that the first makes use of the actual content and subject (which itself may be protected by intellectual property laws) rather than simply the identity or persona12, whereas the second rather more closely approximates the previous categories of character merchandising in that it does depend on association with, or use of, the name, image or identity of the institution concerned.
In any of the categories, the use of the person or character could be through various ways, ranging from use of the name to the use of photographs of celebrities to the reproduction of the whole cartoon figure. The wide range of activities and methods of use covered by the term “character merchandising” can give rise to different levels of protection for different acts.13
In discussing the extent of protection available, an inevitable question is that of justification: why protect character merchandising? Arguments in favour of freedom of competition and increased consumer choice could also, logically, be arguments for not awarding protection. Such arguments can be particularly strong when the essence of protecting character merchandising is seen to lie in the awarding of control to the original person or creator of the character, as strong legal protection would mean that the person or creator would determine how far he is prepared to allow the use of the name or character on what products and services, or the extent to which he will permit association with the name or character.
The practice in most character merchandising situations is for the originator to license to particular persons the right to use the name or character — in return for a monetary sum, the licensee will then have the exclusive right to use the character on his particular product or service. This practice resembles franchising, with the notable difference that where in franchising the exclusivity is primarily territorial, in licensing character merchandising, the exclusivity lies in the end product or service offered14. This being the case, allowing the originator or creator to dictate to whom and on what the character is to be used can be seen to restrict freedom of choice on the consumers’ part, at least in relation to the range and variety of products which they may wish to purchase bearing the character’s name or likeness.
Furthermore, the control thus exercised by the originator or creator would result in a lack of freedom for traders to use the character on their products without prior permission, thus restricting competition.
However, it may be possible to argue that protection ought to be available simply because a substantial amount of effort and industry may have been expended in the creation of any image or character, and that therefore any rights of commercialisation, licensing or exploitation should thus be given to the originator/creator rather than permit his efforts to be freely available to anyone who wishes to use it. This kind of argument is similar to likening character merchandising rights to some sort of moral right in calling for proprietary protection based on recognition of the underlying effort, or, as Ricketson terms it, a “natural law approach”15. However, this approach has seldom been the one adopted by the common law tradition, as the following statement by Dixon J in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor16 demonstrates:
[The courts] have not in British jurisdictions thrown the protection of an injunction around all the intangible elements of value…which may flow from the exercise by an individual of his powers or resources whether in the organisation...
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