Use of film and TV character names

'Is it legal', 'can I do this' type questions and discussions.
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JamesR
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Use of film and TV character names

Post by JamesR » Tue Jun 12, 2018 1:04 pm

OK, I've been through loads of posts here and got lots of very useful info, so thank you!

My query is a little different to some of the character costume type queries I've seen. I'm UK based and have for a while sold articles of clothing similar to those worn by TV and film characters, for example a bow tie similar to that worn by Dr Who or a black tie like those in Men in Black. For the most part the products are massed produced by a factory somewhere and I buy them, or they're made in small quantities for me, and although I haven't called it a Dr Who bow tie, I have mentioned in the description that it's a Dr Who style bow tie or a Men in Black style tie.

I intend to increase the range of items on offer, but it's unlikely I'll ever sell whole costumes, they'll more likely be things like the scarf someone wore, or their socks, or a hat. So my questions are, and I do apologise for the detail but hopefully it provides more relevance:

1) Where do I stand using the character's name (e.g. Dr Who, James Bond etc) in the product name or decription (e.g. Dr Who Bow Tie), or for that matter in the product category, e.g. The 11th Doctor or Batman? From previous posts it seems this is likely to infringe trademarks rather than copyright, and either way I just shouldn't do it, even though I'm not selling the whole costume, just odd accessories. Am I right?

2) If I am right about number 1, is there any issue to me using descriptives rather than the character's name, for example The Time Travelling Doctor, or The British Spy? I can't see why there would, but thought I'd check!

3) Can you see any issue in me selling products like I've described that bear a close similarity to products seen on TV and on film?

4) I'm often sent images of people wearing costumes, sometimes with my product but not always. With their permission I usually put these up on social media and my website. I can't see any issue with that, but can I use their character name with the image?

Thank you very much for your help!

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AndyJ
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Re: Use of film and TV character names

Post by AndyJ » Wed Jun 13, 2018 3:37 pm

Hi James,

As you have already deduced, copyright is less of an issue here than trade mark infringement. If you do use the name of the character or the film/TV programme, make sure you include a prominent disclaimer that your product(s) is not official merchandise. However where you are aware that existing official merchandising is already going on, say as with Dr Who or some of the Hollywood franchise films, it's best to avoid using the name altogether because although you may ultinately be found not to be infringing their registered trade marks, initially, the brand owners will put a lot of pressure on you to cease and desist, because they will wish to prevent any dilution of their brand's appeal and thus its value to third parties who license the rights. In many cases expensive lawyers are retained just for this purpose and they will not hesitate to bully you if they think this will achieve their aim. A routine method is to use Ebay's VeRo system or DMCA takedown notices to disrupt your sales outlets.

Using alternative ways of referring to the character you wish to invoke should blunt a claim of trade mark infringement, but it could still result in a claim of passing off, where the subject of 'misrepresentation' is not specifically tied to a registered word or words, but to the goodwill which surrounds a brand. So again, putting a disclaimer on you adverts and packaging (if any), would be highly advisible.
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

JamesR
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Re: Use of film and TV character names

Post by JamesR » Thu Jun 14, 2018 11:07 am

Thanks very much Andy, that's really helpful. I'm amazed at how many fancy dress shops online are using the names and images - I guess they're either getting away with it or are under the radar so haven't attracted anyone's attention yet.

Thanks again for your time and assistance, much appreciated :)

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