After a few months publishing thematic blog posts centred on IP in the Metaverse and IP in Horizon Europe, we have decided to take a detour through more artistic lands. Following up on last December, when we were discussing IP as applied to pictures of artworks, we will focus this month on another artsy topic: IP and jewellery.
Our Helpline team has indeed received a couple of interesting questions this year, regarding the possibility of pursuing a specific business idea: the creation of jewellery tailored to the interests of young clients, and in particular jewels reproducing known characters from cartoons, manga or popular movies. There is undoubtedly a real demand for such products (and already a large offer on Etsy, Amazon or Alibaba) and it could be tempting to give in to it, with the promise of boosting sales and business visibility, especially on social media where such products can trend easily.
The questions asked by our enquirers were quite straightforward and could be summed up as follows: jewellery reproducing known cartoon characters, YES or NO?
Here, it has to be reminded that famous characters (cartoon characters for example) are typically protected by two types of intellectual property rights, which can be cumulative:
- copyright. This right arises automatically, upon the creation of an artistic / creative work - it therefore has to be assumed that most famous characters are copyrighted. This means that their appearance (the way in which they are drawn up) is protected. Copyright grants its owner a set of exclusive economic rights, such as the right to reproduce the copyrighted work, to communicate it and distribute it to the public. Reproducing cartoon or anime characters on earrings or pendants is, accordingly, a prerogative of the copyright owner. Doing so without the owner's consent will therefore expose the jewellery artist to copyright infringement claims.
- trade marks. On top of copyright, it is important to know that a lot of cartoon characters (and anime characters, and comic book characters, etc.) are also protected as trade marks. The trade mark owner will then have the exclusive right to use the mark to commercialise the goods/services for which it was registered, using the character as a distinctive sign on the market. For example, a figurative trade mark representing Mickey Mouse is filed in many countries for many types of goods and services (including Class 14 - jewellery). Selling jewellery representing this character in those countries would therefore amount to trade mark infringement. The same for e.g. Pikachu, which Nintendo registered as a figurative EU trade mark covering inter alia jewellery goods.
To sum up, the answer to our enquirers’ question was a clear “NO” from us: famous characters are in principle copyrighted and can also be trademarked, including for jewellery goods. Therefore, it is unfortunately quite risky, from a legal standpoint, to simply go ahead and commercialise jewellery reproducing them - the risk of exposing oneself to IP infringement lawsuits would in that case be high. The fact that many people do already sell Pokémon- or Disney-inspired jewellery on craft websites does not mean that this is a safe business idea.
Where to go from there?
Knowing that the unauthorised reproduction of famous characters on your jewellery line is not a recommended business idea, there are two ways to go.
The first option – the ideal one – would be to seek a licence from the rightholders – in other words the authorisation to reproduce the copyrighted or trademarked characters for commercial purposes.
Such agreements are very common in trade when it comes to merchandising – see for instance, in the clothing sector, an example of t-shirt sold by H&M and bearing the Star Wars trade marks and characters: H&M can only do this because it has secured a licence from Disney or Lucasfilm, which own the Star Wars IP.
In the jewellery sector, NYC-based jewellery company RockLove is selling many products designed under collabs with Disney, Marvel, Star Wars or Pokémon. This means that they have obtained the right to reproduce the protected characters on their jewels (Pikachu necklace or Mandalorian ring, the choice is yours) but also to use the related brand names (e.g. movie names, many of which are registered trade marks too) to sell them.
However, such licences may be very difficult to get for small artisans or businesses. Realistically, the possibility of getting such authorisation from a global conglomerate, when you run your own online craft jewellery store, is not very high – not everyone has the weight, outreach and commercial power of H&M. Of course, licensing is always something to keep in mind, especially if the characters you are interested in are not derived from worldwide blockbusters – meaning, if your interlocutor is easier to reach out to and negotiate with.
The second option is to create your own designs and your own characters. Here, intellectual property can help you. In particular, remember that as a jewellery designer, you may protect your creations as industrial designs – registered or even unregistered. The process to register designs in the EU is rather straightforward, cost-efficient (protection starts at 350€) and all steps can be taken online via the EUIPO’s e-filing tool.
Many world-renowned jewellers register their designs as Community designs (covering all 27 member states at once) to protect their IP rights – see examples from Cartier or Tiffany & Co. As a small business, you can do the same – knowing that you can apply for a voucher from the SME Fund (managed by the EUIPO) to help cover your filing costs. Therefore, keep in mind that such means of protection are not only for large multinationals – you can benefit from design rights too.
By developing your own creations, not only will you stay safe from infringement claims, but you will also be able to leverage IP in your own interest – to secure the protection of your own original designs and make sure that you retain exclusivity over them.
Conclusion of this story: IP works both ways, and while in many cases third-party IPR will prevent you from using existing works or characters and deriving profits from them, you may do the same for your own work, and ensure that your original jewellery designs are protected.
Photo by kylefromthenorth on Unsplash
Details
- Publication date
- 22 September 2022