[Patent Talk] Trademark and Design Rights for Protecting a Character Business

Kakao's Niniz character series (Source: Kakao website)

The copyright in Walt Disney's "Mickey Mouse" character is set to expire in 2024. Will this expiry mean that anyone can freely use Mickey Mouse? Most observers are skeptical. They expect Walt Disney to rely on the copyrights in the many derivative works that modified the original character, together with its trademark and design rights, to effectively prevent imitation by third parties.

As a creative work, a character is fundamentally protected under the Copyright Act. Copyright arises automatically upon creation, so registration is not a requirement for it to take effect. Even so, it is advisable to register with an organization such as the Korea Copyright Commission to make proof easier. Because copyright requires only originality, with no restrictions such as being tied to an article, its scope of protection is broad, and its term is very long, lasting until 70 years after the author's death. Enforcing copyright, however, can be somewhat difficult, because the right holder must prove that the copyright exists and must also prove the subjective element that the third party knew of the copyright and infringed it anyway.

Trademark and design rights, on the other hand, arise only upon registration, but they are relatively easier to enforce: once a trademark is registered, the infringer's intent is presumed, and once a design is registered, the infringer's negligence is presumed. Of course, unlike copyright, they carry the limitation that goods must be designated, since a trademark can be registered only where the character itself or its name serves to indicate the source of goods or services, and a design can be registered only where the character is embodied in a product.

Kakao protects the various characters used in KakaoTalk and its other services with trademark and design rights. The table above shows the trademark and design rights Kakao has registered for "Scarpy," a character in Kakao's Niniz series. Kakao has, across a total of 22 classes...