Trademark issues with naming characters

Trapper Zoid · 2007-02-22T04:45:26

Hello everyone. I have a problem that has been plaguing me over the last few days, and I'm looking for some advice on an IP issue about naming fictional characters with respect to trademark law. Over the last few days I have been working on developing out some cartoon styled characters that I am developing for use in games and/or a gaming related webcomic. The challenge that has been vexing me for the last little while is coming up with good viable names for the lead characters. The first hurdle is coming up with good, punchy names that suit the characters - but that's standard for the course (coming up with good names isn't easy!). I am not looking for any magic techniques for creativity name finding just yet, especially not on the business forum. The second part is the IP issues revolving around the names. I have a shortlist of good names for my main characters, but when I do a test for their previous use (usually by using Google or Wikipedia on their names or close derivatives) invariably I find that every name I think of already has a namesake out there in fiction, which is very frustrating when I think of a great new name that perfectly captures the essence of a character. My question is when, under trademark law, it is considered acceptable to use the same name as an already existing character without it being an infringement? Additionally: to what lengths must you go to ensure that your character names are unique? From reading online about trademarks I understand that this might be a very grey issue depending on how well known the name is to the general public. Ideally I would prefer to use a totally original name and I will continue to brainstorm for ones, but I am getting frustrated with my great suggestions being found in internet searches. Just to make sure I have not made a misunderstanding of the relevant issues, I will try to explain my current perspection of the problem in more detail. If I have made a mistake in my understanding of IP law I would be grateful if you would point it out. There is a lot of conflicting information on the web and I may have inadvertantly learnt incorrect information. My understanding is that this is mainly a trademark issue, not copyright. Copyright offers protection for creative and intellectual works and offers their owner rights as to who gets to make copies or derivative works. While you can claim copyright on a character (name, appearance, personality etc.), the name by itself is not covered by copyright. Trademarks however protect marks that link a business to a particular product in order to protect its brand, and can and do apply to character names if they have a strong identity to a particular brand. The confusion I have is to how well a character name acts as a trademark. My current understanding is that the strength of a trademark can only be ultimately decided by a judge if it is ever disputed in trial, but that is not much comfort if you certainly do not want to be put in that position! I am also unclear as to how much strength a trademark has if it is not registered (obviously registered trademarks have much more strength). I am going to avoid using a reigstered trademark as a character name if I can help it. From what I gather unregistered trademarks pick up strength from their association in the general public of the mark to a particular product. So in this case, even if "Batman" was not registered to DC Comics it would be foolish for me to make a historical themed comic book about John Batman, one of the founders of Melbourne, Australia, and call it "The Advetures of Batman". Even though that was his name, the association between Batman in the field of comics to the Dark Knight character of DC Comics is too strong. For characters like Batman which everyone has heard of then it is obvious to avoid using those names. However there are lots of less well known characters out there who I have not heard of that I cannot instictively avoid. In these cases I don't know how strongly protected they could be. My other confusion is to which parts of a creative product trademark would apply to. I am assuming that trademark was designed to protect a business brand from being diluted by bad copies, and by extension the consumer to get the product that they paid for. In this case a name would only apply as a trademark if it was used as a strong identifying mark for the product - true for gaming mascots such as Mario and Sonic, for example. However I do not know if you were to use these names for characters in your game it would be acceptable as long as they weren't used as identifying marks. For example, a boxing game with an Italian boxer named Mario would be okay as long as the name "Mario" was not used to promote the game by being in the title or prominent on the box art. After typing all this up I realise that I do not really have a firm grasp as to what trademark protects. My gut feeling is that it would be totally unfeasible to expect authors to search all forms of creative works to ensure they are not using the same names for characters, but gut feelings do not sound very well founded in legal basis. Thus I would like to know: how far must you go, under trademark law, to ensure that your character's names are unique; and when is it acceptable to use a name already used for another character? Thanks for your time!

Games Business and Law Business

Started by Trapper Zoid February 20, 2007 10:10 PM

12 comments, last by Obscure 17 years, 11 months ago

Obscure

175

February 21, 2007 07:14 PM

Being local isn't really necessary when you can use the phone/fax/email. I would suggest you go for a lawyer with Game industry experience rather than just IP law experience.

Dan Marchant - Business Development Consultant
www.obscure.co.uk

Trapper Zoid

Author

1,370

February 21, 2007 08:35 PM

For specialist lawyers, such as those with an interest in the game industry, I would still need one with knowledge of local Australian laws, right? Or do the legal issues for a game industry specialist transcend local legal issues and is more of a global area of expertise?

Obscure

175

February 22, 2007 04:45 AM

The vast majority of publishers are either US or European and as such any contract would be under their local laws not Australian law.

Dan Marchant - Business Development Consultant
www.obscure.co.uk

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