It is well known that currently there is no uniform global system in place that protects merchandising rights, to say nothing of mature international legislation, but exploration is underway. China has neither put in place a complete system for the merchandising rights nor recognized the rights in legislation. At present the rights are not fully covered through the protection methods set forth copyright, trademark right and patent right law. In judicial practice, the protection of the merchandising rights mainly lies in copyright protection. Some judges have also taken a comprehensive approach to merchandising rights by combining copyright as the core with general principles of the civil law, the trademark law and the anti-unfair competition law, but this approach has its inadequacies.
Inadequacies of the civil law
The civil law protection approach has some positive aspects, but the mode has some problems when it comes to the merchandising rights.
IP counsel Liu Shijie explained that the merchandising rights originated from the right to protect personal privacy and the traditional merchandising rights arose more out of the core rights to one’s name and portrait. Therefore, the rights are first protected by the civil law which is used as a last but reasonable resort. However, this approach has problematic limitations.
Firstly, in terms of the source of rights, the traditional personality right is a basic right, while the merchandising rights are not limited to the basic rights of human beings.
Secondly, in terms of the protection scope, the traditional personality right is restricted to factors such as the use of a real person’s name and likeness and provides for a limited range of damages arising out of infringement. The right does not include protection for sounds, virtual images and non-image objects. Therefore, it provides little to no protection for the merchandising rights.
Thirdly, in terms of the nature of rights, the traditional personality right lays emphasis on the right to exclusivity. It is an inherently individual right which can not be inherited, abandoned, transferred, nor licensed. What’s more, since all personalities are considered equal, use of the civil law to protect merchandising rights leads to a series of questions. For example: since the merchandising rights are mainly rights to property, if the rights cannot be inherited, transferred or licensed, then how can the civil law be used to fully protect the rights? In addition, well-known characters or well-known virtual images have much greater value than ordinary people and unknown virtual images. In this case, if we resort to the personality right for protection, shouldn’t all damages be the same? If all personalities are equal, what on earth is the reason that yours has greater value than mine? Can we award greater damages where there is greater financial harm? Would we have to tell them, “sorry, under the principle of equality of personality all damages are identical?” This does not make sense.
Fourthly, in terms of the period of protection, the personality right only exists while the person is alive. The merchandising rights require a longer period of protection, just like a work of art. The work of art is not generally worth much while an artist is alive and commonly increases in value after the artist dies. This also occurs when it comes to the merchandising rights.
Inadequacies of the copyright law
The copyright law protects intellectual achievements which are original and replicable in some tangible forms in literary, artistic and scientific fields. As regards some types of the merchandising rights, such as virtual characters, resorting to copyright protection does not pose any problem.
According to Dr. Lin Hua, an IP expert with years of experience, virtual characters were born out of cartoon works as objects under the copyright law and thus natural protection from copyright was needed. It has been widely acknowledged in legal theory and judicial practice that virtual characters, as part of cartoon works though, may be deemed as independent works of art capable of being distinguished and separated from the entire works of art and protected by the copyright law. The fact that cartoons are protected as a whole by copyright does not disqualify individual virtual characters contained in cartoon works from copyright protection.
Originality is the necessary condition for a work of art to be an object of copyright protection. But in real life, virtual characters depicted in works often cannot meet the requirements of constituent elements of works, and cannot become the object of copyright protection, thus making copyright law powerless in the protection of such rights.
IP attorney Niu Shijie also pointed out that in many cases it is difficult for the copyright law to protect the merchandising rights. The purpose of copyright protection is to encourage creation, and promote cultural transmission, but the actual purpose of merchandising rights protection lies in protection against infringement upon rights and the commercial value associated with those rights. The copyright law emphasizes a series of protection principles such as “the idea-expression dichotomy” and originality, but even if carriers of the merchandising rights have been transformed into works, they cannot easily fall within the scope of protection for such works. The copyright law protects works, while the merchandising rights protect factors which are either identifiable or intangible but share common tendencies. Moreover, use of the merchandising rights is not the use from the perspective of copyright. Therefore, the copyright law has inadequacies in the protection of the merchandising rights.
