The character of a work as an independent result of IP

Experts note [1] that the income of authors and rights holders from the use of characters from their works has significantly increased recently, with the market filled with products based on existing characters, enhancing their commercial appeal. For example, characters from popular works are widely used in advertising and the production of consumer goods (souvenirs, accessories, household items, toys, clothing), and more.

According to License Global magazine, which compiles an annual ranking of global retail sales of licensed consumer goods, the leading global brands generated a combined income of $278 billion from licensing sales last year. The top-ranked company is The Walt Disney Company, whose animated characters are immensely popular and used not only in consumer goods production but also in the entertainment industry (theme parks, costume shows, etc.).

Among Russian consumers, products featuring characters from domestic works, such as "Prostokvashino," "Cheburashka," and "Fixies," are equally popular.

However, along with the increased use of characters in the production and advertising of consumer goods and services, the number of legal disputes has also risen. Rights holders are seeking compensation for the unauthorized use of a character as an independent result of intellectual activity. In such disputes, rights holders typically seek compensation for each instance of unauthorized character use as a separate infringement. Courts often deem the rights holders' calculation methods inappropriate and reduce the compensation amounts accordingly.

The fact is that the Civil Code of the Russian Federation [2] allows the extension of copyright not only to the work as a whole, but also to any parts of it, which, among other things, include the character of the work (clause 7 of Art. 1259 of the Civil Code). But for a part of a work to be recognized as an independent status, it must meet certain requirements.

What it means for a character to have independent status

As explained by the Supreme Court of the Russian Federation [3], copyright protection of a character in a work presupposes, in particular, that only the author or other copyright holder has the exclusive right to use the character in any way, including reproduction or adaptation.

In addition, the status of a character as an independent result of intellectual activity provides the copyright holder with a number of other advantages, in particular:

• the copyright holder can specifically dispose of such a character by concluding licensing agreements on the use of the character in ways that take into account the specifics of the object - in advertising, in the production of goods, etc.;
• whether a character has an independent status affects the calculation procedure and, as a consequence, the amount of compensation in legal disputes about the illegal use of the result of intellectual activity. Thus, according to the general approach of the Supreme Court of the Russian Federation [4], the illegal use of part of a work, including its characters, is a violation of the exclusive right to the work as a whole, unless it is proven that part of the work is an independent object of legal protection. If the character is an independent result of intellectual activity, then the copyright holder will be able to recover compensation for each fact of illegal use of the character itself.

However, it must be taken into account that not every character in a work is protectable as a character. To do this, the latter must meet certain requirements.

When a character in a work is recognized as protectable

The general criteria for the protection of parts of a work, which include its characters, follow from clause 7 of Art. 1259 of the Civil Code of the Russian Federation and the corresponding explanations of the Supreme Court of the Russian Federation [5].

Thus, a character can be recognized as protectable if the following conditions are met:

• By its nature, the character is an independent result of the author’s creative work and is expressed in an objective form. In other words, a character is a set of descriptions and (or) images of a particular character in a work in the form (forms) inherent in the work: in written, oral form, in the form of an image, in the form of a sound or video recording, in volumetric-spatial form, etc.;
• A character retains its recognition as part of a specific work when used separately from the work as a whole.

Moreover, if the recognition of a character is proven, the fact that he is the result of a creative nature and his legal capacity is presumed until the contrary is proven. This means that to protect the rights to a character, it is enough to prove that it is perceived as part of a specific work when used separately from the work as a whole.

Who shall prove the recognition of the character in the work?

According to the explanations of the Supreme Court of the Russian Federation [6], the burden of proving the recognition of a character rests with the person who applies to the court with a claim to protect the rights to the character as part of the work.

Thus, it is the plaintiff (copyright holder) who must prove that such a character exists as an independent result of intellectual activity.

In this case, it is taken into account whether a specific protagonist of the work (character) has sufficient characteristics that individualize him: in particular, whether his appearance, character, distinctive features (for example, movements, voice, facial expressions, speech features) or other features due to which the character is recognizable even when used separately from the work as a whole.

As the Intellectual Rights Court indicated in the relevant information note, it is necessary to confirm that a character has the appropriate characteristics so that the defendant can challenge, and the court can assess, the recognition of a specific part of the work (in this case, the recognition of its specific character).

In addition, it should be noted that, as a rule, special (expert) knowledge is not required to confirm recognition. The court has the right to independently establish the recognition of the character as part of the work, based on the totality of the evidence presented.

Is external similarity between a character and its disputed image necessary?

It is evident that external similarity is not a fundamental factor when a dispute concerns the unauthorized reproduction of characteristics that individualize a character. For instance, specific details of the character's appearance, personality, or traits that define and make them recognizable.

To establish that the disputed image used by the defendant is a reproduction of the rights holder’s character, it is not necessary for there to be a complete match of the original characteristics or for minor details to remain unchanged (e.g., alterations in clothing details that do not affect the character’s recognizability). The main criterion is the preservation of the character’s recognizability as part of a specific work.

Additionally, as noted by the Supreme Court of the Russian Federation in the aforementioned clarifications, the concept of similarity to the point of confusion is not applied to characters of a work. The presence of external similarity between the plaintiff's character and the disputed image used by the defendant is only one of the factors considered by the court in determining the reproduction of the used work (or its character).

Sources:

1. Abrosimova E.A., Zaika D.A. Commercial use of characters in works: features and protection // Law and Economics. 2022. N 9. P. 45 - 51.
2. Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ (as amended on January 30, 2024)
3. Clause 82 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation”
4. Clause 10 of the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual rights, approved. Presidium of the Supreme Court of the Russian Federation 09.23.2015
5. Clause 81 and clause 82 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation”
6. Clause 9 of the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual rights, approved. Presidium of the Supreme Court of the Russian Federation 09/23/2015, paragraph 82 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 04/23/2019 N 10 “On the application of part four of the Civil Code of the Russian Federation”