How to protect anime images in China?
Speaking of anime images, several famous images might jump out of your minds, such as One Piece, Crayon Shin-chan, Pleasant Goat and Big Big Wolf. If an anime image becomes popular, it might be pirated, (Note: normally the rights holder could claim for copyright infringement, due to space limitations, this article will not go further on this aspect.), and its constituent elements might be pirated as well. The elements mainly include the image, name, title of the work, catchphrases, props and etc. For example, a company produces children’s clothes, on which the image of Big Big Wolf and its catchphrase “I will be back!” are embroidered, and the tag also marks “Pleasant Goat and Big Big Wolf Series”.
If you are the rights holder, how to protect your rights and interests?
In China, the current laws and regulations have not defined the concept of “commercialization rights”, in general, a rights holder could take the following two fundamental rights as the legal base for claim.
First, if the constituent elements of an anime work, such as the image of “Crayon Shin-chan”, meet the requirements of the “Copyright Law” for “originality”, then from the perspective of copyright protection, it is possible for the rights holder to require the infringer to stop infringement, and claim for damages, etc.
Second, the rest constituent elements, such as names, catchphrases, typical props, and etc., may not meet the requirement of “originality”, which may be difficult to be protected from the prospective of copyright. Then the rights holder could choose to register such elements as a trademark. If these constituent elements do not belong to prohibited registration circumstances as stipulated in the “Trademark Law”, and there are no identical or similar prior registered trademarks after searching, the rights holder may register such elements in the fields, goods, services which related to rights holder’s business. The fields that are usually considered include entertainment, stationery, toys, clothing, food, etc. After the rights holder has registered relevant trademarks, it could raise objection or apply for invalidation against the identical or similar trademarks, or claim for compensation against the use of the identical or similar trademarks by others.
However, when conducting trademark searches, it often happens that relevant trademarks have been registered by other parties. Regarding such circumstance, the rights holder of anime work could raise objections or apply for the declaration of validation against such registered trademarks. The legal basis is Article 22 of the “Rules of the Supreme People’s Court on Issues Relating to the Hearing of Administrative Cases Involving Granting or Affirming Trademark Rights”, which stipulates that for a work within the term of copyright protection, of which the name, roles etc. are of relatively high popularity, if the name or roles are used as trademark on relevant goods, which is likely to have relevant public misunderstand that such use is permitted by the right owner or has a specific connection with the right owner, the party concerned therefor claims prior right, the People’s Court shall uphold the claim.
It should be noted that, in view of the published judgements, despite the title of the work and the character, other constituent elements normally would not be defined as prior rights. In addition, in such cases, the court would focus on the “prominence” and “possibility of confusion”. For example, in the case of (2020) Jing Xing Zhong No. 1133 “机动战姬”, Company X registered “机动战姬” on several commodities such as computer game software in the 9th trademark international category, the rights holder of the anime image “机动战士高达” (Mobile Suit Gundam) applied for invalidation, but the Trademark Review and Adjudication Board rejected the application. In the administrative litigation, the court held that: “…the anime work and the characters’ names in “Mobile Suit Gundam” are different from the goods as approved for the registered trademark. …There are huge difference between the two on the perspective of the production sector, function, sales’ channels and target consumers, so the disputed trademark which is used on the above goods would not misleading the relevant public to confuse the source of goods.”
Finally, in individual cases, the rights holder could also take the following two measures into consideration case by case.
The rights holder could claim based on both the trademark infringement and unfair competition. The basis for claiming unfair competition is Article 6 and Article 2 of the “Anti-Unfair Competition Law”. Article 6 is about the acts which mislead others to misidentify their goods as others’ goods or to associate their goods with others. Article 2 is about the acts which breach good faith, and disrupts market competition order, or harms the legitimate rights and interests of other business operators or consumers.
If a party obtains a design patent for an anime image or related constituent elements, the rights holder could apply for invalidation regarding such patent. The two main reasons are, ①the design is not a new one, which could be requested to be invalidated in accordance with Article 2, paragraph 4, of the “Patent Law”; and ②the design patent conflicts with prior legal rights, which could be requested to be invalidated in accordance with Article 23(3) of the “Patent Law”.