By You Yunting
About one month before, the IPR Committee of Shanghai Bar Association invited the police officer from the Economic Investigating Squadron of Shanghai Police Department to deliver a speech on the criminal protection over IPR issues. And in the communication after the seminar, the police officer raised a question to the acceded lawyers, “The Shanghai Disney Land will be constructed several years later, and it’s foreseeable that there could be stores selling Mickey Mouse or other figures articles with no license thereby granted around the park. Yet, by then, the copyright protection term on Mickey could be expired, and so what measures could be taken to strike the unlicensed using or selling?”
As the member of IPR committee, I gave my answer: Mickey Mouse as a corporate work created in 1928, which by Chinese Copyright Law shall be protected within 50 years thereafter in China. That is to say, the figure has been in the public domain; however, to use such a figure shall also be alerted for the following two issues:
First, Disney has applied the trademark protection over the Mickey figure, thus makes any using of Mickey as a brand be an infringement; second, the existing appearance or design of Mickey has been apparently different from the original portray created in 1920’s. That means Disney has been adapting the figure, and once such adaption is made during the recent 50 years, then the recreated or developed part shall be protected by Chinese Copyright Law. And nearly all the articles sold concerning Mickey are basing on the latest design.
However, not to use a work in the public domain but with a vast value shall make public feel a pity, and the only available solution to the dilemma is a proper and legal using. Today I gonna share my opinions on the issue. Surely, any suggestions or comments are welcome.
I. How to legally use Mickey Mouse Brand?
As discussed before, Disney has applied Mickey as a trademark in nearly all the classes, then any company would like to use the brand shall first make the trademark retrieval through a professional lawyer, to determine whether the targeted class has been registered. May some readers would raise the question: since Mickey is with a all-class registration, does that mean all the products have been covered by that application? The answer shall be “impossible”, the all-class registration could hardly cover all the products or services. For the unregistered products or services, the application by a third party is feasible.
Then what could we else to do when the intended product or service has been covered by Disney’s registration by the retrieval? In my opinion, in addition to the stationery, clothing, film or game, which is the main business of Disney, for most other situation, the Mickey brand could be hardly used. Therefore, the application of trademark cancellation for continuous 3-year no use, through trademark agent to the administration, with the reference to Chinese Trademark Law and its Implementing Regulations is possible.
Although Disney would argue that application, to our understanding, the untrue could not be true. By the international classes, there’re over 10 thousand products or services could be registered, even a big company like Disney could not cover all that scope. Even with some solid argument, the concealing could not last long, and once it is decided no access to proof or a improper proof, the trademark office may revoke the trademark registration.
II. How to legally use the figure of Mickey Mouse?
As said before, despite it has been in the public domain in China, Mickey has been repeatedly adapted in the past 50 years, which could be a new work in Copyright Law. Therefore, to properly use the figure of Mickey Mouse, no copy shall be thereby made, and an independent design is suggested. May be someone would ask, why shall I develop Mickey, for a brand new figure design is more applicable. But to a normal company, to create a known figure is not easy, then why not to stand on a giant’s shoulder?
The best case for that is the industry of cartoon and game. For those companies in the industry could foresee the prospect of the work, especially those big companies. As recalled, Shanda (NASDAQ:GAME) and NetDragon (HKEX:00777) cooperated with Disney to develop a Mickey theme online game, and then I was working in Shanda. Why shall a big company pay royalty to a public domain figure?
Two reasons as far as I could say: I. Disney could express the figure to what it shall be and has been, so as to earn the market gains; II. Both Shanda and NetDragon are overseas listed companies, and the cooperation with Disney could promote their share prices. But it has to point out that, the license fee to the figure use is too high to be afforded by normal companies. So why don’t those confident entities to try the development on the figures in the public domain?
At last, Disney is a company valuing the copyright protection, especially considering USA once prolonged the copyright protection on Mickey with a special legislature. Therefore, any unlicensed use of Mickey, even it has been in the public domain by local laws, could also be warned through lawyer’s letter or a lawsuit. For these reasons, the company intending to use the cartoon figure shall consult the lawyers first, in order to avoid the risks.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
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