It is difficult to ignore the multi-medium, multi-level marketing campaign surrounding the release of the movie Barbie. From pink fireworks graphics on the Google search page, to a long list of collaborations with brands like GAP, ALDO, Crocs, Fossil and NYX Cosmetics, everything seems to be soaked in Barbie pink at the moment.
However, behind this marketing exercise lies the complex yet vital legal construct of character merchandising. Character merchandising is a technique to promote goods and services by using famous fictional or non-fictional characters to draw the attention of customers. It is considered a medium through which a famous personality or a creator of a fictional character can commercially exploit or authorize someone else through third party agreements to exploit the features of the character or personality like name, image, appearance, sound etc. For example, T-shirts with Mickey Mouse print, Barbie inspired shoes and bags by ALDO, etc.
According to WIPO, character merchandising is defined as “the adaptation or secondary exploitation, by the creator of a fictional character or by a real person or by one or several authorized third parties, of the essential personality features (such as name, image and appearance) of a character in relation to various goods and/or services with a view to creating in prospective customers as desire to acquire those goods and/or to use those services because of the customer’s affinity with that character.”
Mattel Inc owns the intellectual and commercial rights in the brand Barbie. A license from Mattel is required before intellectual property associated with Barbie may be exploited for commercial purposes by another entity. As a result, these licensing agreements are carefully drafted to protect Mattel’s intellectual property rights in the Barbie brand. Mattel, by means of these agreements, grants other brands the authority to use the Barbie image, the pink hue color (Barbie pink) and the word Barbie on their products. Such agreements act as a strategic tool to protect unique intellectual property assets and creativity.
There are mainly three different types of character merchandising: a) fictional character merchandising; b) personality merchandising; c) image merchandising.
Fictional character merchandising is the oldest and the most common form of character merchandising. It involves the use of essential features of fictional characters for the marketing or advertising of goods and services. For example, cartoon characters like Mickey Mouse on a T-shirt, Game of Thrones memorabilia, etc.
Personality merchandising uses the identity of a famous person in marketing of goods and services. When famous celebrities from fields such as sports, movie, politics, music, etc allow a unique trait of their personality to be used in association with products and services, it forms part of personality merchandising. It is also known as ‘reputation merchandising’ as such people whose personality traits are used are generally well-known among large sections of society. This kind of merchandising helps in promotion of a product in two ways. Firstly, the consumers instantly recognise the product endorsed by their favourite personalities (hence awareness/popularity of the product increases). Secondly, consumers tend to buy such products as they also wish to have the product which supposedly forms a part of the celebrity’s lifestyle. For example, Aishwarya Rai Bachchan advertising for L’oreal brand products, Virat Kohli endorsing Manyavar, Dhoni advertising for Boost.
Image merchandising, is a mixture of the first two types. Here, the fictional characters created under a literary work and later played by a particular actor in a movie is identified with the real-life person in combination with the signature traits of that character. The public is able to easily connect the image of their favourite actor dressed or portrayed in a particular manner to a particular character. Some of the popular examples include, Captain Jack Sparrow played by Johnny Depp, Hannah Montana played by Miley Cyrus, Harry Potter by Daniel Radcliffe or Barbie played by Margot Robbie.
It is to be noted that at present, no country has enacted sui generis legislation on the protection of characters from unauthorized merchandising. The rights of characters are generally protected under the realm of different intellectual property laws and privacy laws. Legislation on copyright, trademarks and industrial designs, together with the protection against unfair competition (including passing-off), are generally relied upon in the context of protection of characters under fictional merchandising and of image merchandising. With respect to personality merchandising, other areas of laws such as privacy rights, personality or publicity rights are relied upon. Although this technique of marketing has gained popularity in the last 15-20 years, the massive promotional campaign by Mattel around the release of Barbie movie has once again brought the issue of character merchandising to the limelight.
To safeguard Barbie’s identity, Mattel holds multiple trademark registrations for her name and iconic logo. Interestingly, Mattel does not possess trademark registration for any pink hues and Barbie has been seen dressed in different pink hues for decades, Pantone 219C (a combination of magenta and pink) being the most prominent among them. Even though there is no registration for colour, Mattel makes consistent use of the colour, almost in a trademark capacity and carries on activity of routinely policing what it perceives as infringing use of its pink. It will not be incorrect to say that even though Mattel does not have trademark registered in the “Barbie Pink” colour, it surely has acquired distinctiveness in the use of this color and hence, makes efforts to protect the same from unauthorized use.
Further, the magical world of Barbie is shielded behind a powerful cloak of copyright protection. It covers the artistic designs of all the Barbie dresses, the artistic work of the doll and various cinematographic works such as animated movies, TV shows etc. Design law protects the unique aesthetic elements of Barbie-themed products such as toys, bags, etc.
In India, the rights of a fictional character and personality rights of celebrities are protected under the Copyright Act, 1957, Trademark Act, 1999, etc. In a recent case before the Delhi High Court, Amitabh Bachchan sought protection of his personality rights against the fake Kaun Banega Crorepati (KBC) lottery scam wherein his name, images, voice and other personality attributes were being used to deceive the public. The High Court granted an interim injunction while interpreting publicity rights as an extension of the right to privacy. The Court observed that the defendants were misusing the celebrity status of Bachchan to promote their own goods and services, without his permission or authorization. It relied on its earlier decision in Titan Industries Ltd v. M/s Ramkumar Jewellers, where it had recognized publicity rights of a celebrity as follows:
“When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity."
Further, in the case of Disney Enterprises & Anr v. Santosh Kumar & Anr, the Delhi High Court held the defendant liable for copyright and trademark infringement as they were selling products which had images of characters such as Winnie the Pooh, Donald Duck, Mickey Mouse, etc. The Court held that since the characters are very popular and well-known for having intense association with the plaintiff, any reference to these characters reminds the public exclusively of the plaintiff. The Court observed,
“Plaintiffs have also established that the degree of association of the DEI materials, such as Character Names, Character Devices or Characters with the Plaintiffs is so intense that any reference to them lead a substantial part of the relevant public to recognize, acknowledge and associate the same exclusively with the Plaintiffs and the Plaintiffs alone.”
Character merchandising has recently become famous in India because of its commercial nature and the amount of revenue it brings to the business. Since the scope of character merchandising is very large, the existing intellectual property regime may not be sufficient to protect the entire set of rights of a character. Although trademark law provides protection for the name or a particular image and copyright law protects the creativity of an individual, they fall short in protecting the reputation of a person or a fictional character from unauthorized commercial exploitation.
Further, due to the limitations of copyright law with respect to the tenure of protection, businesses eventually have to seek protection under trademark law for their character, which can be granted such protection only if it has gained distinctive identity to be registered as a trademark. Considering the growing market for commercial exploitation of characters, there is a dire need for having a specific legislation for character merchandising to protect the rights of the owners.
The next time you see a product themed on a particular character, remember the critical role played by due diligence and licensing agreements in the realm of IP law. It shows the power of IP law in shaping the fashion industry, protecting a brand’s reputation and enabling creativity.
Krutika Gaur is an Associate at Samvad Partners.