Joined: 29 Jan 2010
|Posted: Sat Feb 27, 2016 7:44 pm Post subject:
Copyright. It is less likely that copyright will be the major problem, because although these designs are undoubtedly artistic works, it is open to question whether they exhibit sufficient originality to qualify for copyright on their own. The Deathly Hallows symbol is very generic although the mockingjay brooch would seem to have a stronger claim.
I would suggest starting with your suppliers. If they are based outside the EU, then there is a chance that they either don't know or don't care about any Intellectual property rights associated with these charms. However if they are based within the EU, they should be able tell you the exact status of these items. If they re-assure you (in writing) that the charms have either been produced under licence, or that no licence is required, you may rely on that assurance to protect you, because you would be importing and /or dealing in, not copying, the charms, and so there is a defence that you believed that these were not infringing copies:
|22 Secondary infringement: importing infringing copy.
The copyright in a work is infringed by a person who, without the licence of the copyright owner, imports into the United Kingdom, otherwise than for his private and domestic use, an article which is, and which he knows or has reason to believe is, an infringing copy of the work.
23 Secondary infringement: possessing or dealing with infringing copy.
The copyright in a work is infringed by a person who, without the licence of the copyright owner—
(a) possesses in the course of a business,
an article which is, and which he knows or has reason to believe is, an infringing copy of the work.
(b) sells or lets for hire, or offers or exposes for sale or hire,
(c) in the course of a business exhibits in public or distributes, or
(d) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,
As well as copyright, there is a possibility that the designs used in these charms might be registered designs, and / or registered trade marks. Because both these subjects fall outside the purpose of this forum, I will only briefly explain how you can find out, and what you can do if you find some or all are registered.
Designs. You need to check on the IPO website under the heading of designs. This is complicated because you need to use either the type of goods (in your case - class 11, sub class 1 - jewellery) or the likely owner of the rights, who in the case of Harry Potter related items, is Warner Bros Entertainment Inc. If you don't find a registered design which is the same as or similar to the design of your charms, then you should be OK to proceed. If a design is registered then your charms may well infringe, unless your supplier can provide proof that they have been manufactured under licence.
There is another category, known as unregistered designs, but other than using a general search engine or your knowledge of the jewellery business, there's no easy way to discover if this might apply.
Trade Marks. You need to go through a similar process using the IPO's trade mark search tool. This is easier, as you can do a word search on the name of the item and see if there is a graphical representation registered under that name. I have done a quick search on Deathly Hallows, and although the word mark has been registered (by Warner Bros. Entertainment Inc.) the symbol itself doesn't appear. (It is mind boggling how many words associated with HP have been registered eg scabbers). Once again, if no graphic shows up when you search, there are unlikely to be any trade mark implications as long as you don't use any registered words (such as Deathly Hallows) to advertise or name your product. If you find a registered graphic mark which is very similar to your charm in shape, then you need to check the class(es) for which the graphic is registered. Taking the example shown above of 'Deathly Hallows" this word mark has been registered in classes 9, 16 and 25. You can see what these classes cover in the link. If class 14 (jewellery) appears along with a registered graphic mark then just selling the charm representing that symbol is likely to infringe the trade mark, unless of course the charm has been made under licence. If a graphic mark is registered, but not for Class 14, then selling your charms can still infringe, but only it is clear that a customer would be confused into thinking yours was official merchandise of the IP owner. To counter this, you would need to place prominent disclaimers on the advertising and any packaging or paperwork, such as invoice. If you have any doubts about this, I would treat this situation as the same as a trade mark registered in class 14, that is to say, infringing unless there is a licence.
Endnote In situations like your question I generally conclude by saying that the above is, in brief, what the law says. However large American corporations like Warner Bros tend to be very proactive in the way that they protect their IP, and if they object to what you plan to do, they will let you know about it in a fairly robust way. However much the law may be on your side, you may need to give in to their pressure or face a long and possibly costly battle before eventually seeing them off. It may not seem fair, but that is a fact of life when you play poker with these guys.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007