Brands need to be more aware of who owns their image rights

Moulinsart SA, the Belgian company responsible for promoting Hergé’s character Tintin, was dealt an unexpected blow recently when it attempted to take legal action against a Tintin fan club for allegedly infringing Moulinsart’s copyright.

The case took a surprising turn when a document emerged showing that the author of the Tintin comic series had signed the publishing rights for the books over to his publisher prior to his death.

In light of the discovery that Moulinsart did not own the publishing rights for Tintin, the Court ruled that Moulinsart was not in a position to stipulate who could use material from the books.

The case will have significant practical ramifications, particularly where the payment of royalties is concerned. If it can be established that Moulinsart collected royalties that it was not entitled to receive, these royalties may either have to be reimbursed or passed to the publisher.

This case serves as the latest lesson in a series of decisions that have hinged on whether the claimant actually owns the intellectual property (IP) they are trying to enforce at all.

Who owns your business’s IP?

Often the estates of deceased personalities struggle to establish that the IP right they are seeking to exploit in fact exists, or continues to exist.

In a 2012 US case concerning the estate of Marilyn Monroe, a Federal court held that, although Marilyn died in California, she was still a domiciliary of New York at the time of her death.

This ruling was undoubtedly a bombshell for the Monroe estate. Californian law provides for a posthumous right of publicity, protecting notable personalities’ names, likeness, images and other notable aspects of identity after their death.

Under New York law, however, that right dies with the person. This has meant that the considerable revenue enjoyed by Monroe’s estate by virtue of her enduring iconic status has been thrown into serious jeopardy.

It is essential to establish whether a particular right you want to enforce exists at the outset. If it does not, parties must then consider how best to secure some form of alternative IP protection, for example, by registering relevant trade marks, before seeking to gain any commercial benefit.

When singer Katy Perry attempted to assert copyright ownership over Left Shark, a back-up dancer dressed as a shark made famous by his dance moves, it appears that due consideration had not been given to whether the copyright could even exist, considering that US copyright law does not apply to the protection of costumes (or disguises, something that Tintin would no doubt benefit from). How to copyright a logo UK

Perry’s lawyers were issued with a robust response to the cease-and-desist letter which they had hastily issued to an alleged infringer.

Rightful owner and assigning copyright

If parties can establish that an IP right for a particular work does exist, they need to ascertain whether they are the rightful owner or not.

In a recent UK case concerning the Innocent Smoothies logo, the company behind the famous smoothies, Fresh Trading Limited, was unable to demonstrate that the copyright in the logo, which they had been using for fifteen years, had ever been assigned from the design agency, the original copyright owner.

The particular facts of the case led the Court to hold that Fresh was in fact entitled to the copyright.

However, this decision serves as a cautionary tale for brand owners, who often assume that the copyright in a particular logo has been assigned to them from the relevant design agency without any formal assignment document being executed.

This can lead to complex copyright ownership disputes at a later date, particularly if the original design agency changes ownership or the brand itself becomes well known or lucrative.

All too often, parties are eager to reap the benefits of exploiting their supposed rights without taking time to establish whether the rights in fact exist and whether they legally own the rights.

Recent cases have demonstrated that it can be many years before questions of ownership are raised. When these questions are eventually asked, the economic and commercial consequences for the parties concerned could go the same way as one of Tintin’s foes.

Sonia Hill is a registered trade mark attorney for Marks and Clerk.

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