Cannabis Branding and Marketing: Risks of Using Fictional Characters

Last week I attended the International Trademark Association’s Annual Meeting, where one of the somewhat obscure topics discussed is something I’ve actually seen crop up recently in practice. The question is at what point the use of a fictional character in branding or advertising constitutes either trademark or copyright infringement. And the answer is not always entirely clear.

Copyright law in the United States provides exclusive rights for creative works, including fictional characters, that are both original and fixed in a tangible medium. In order for a work to be considered “original,” courts have held that it must possess a “modicum of creativity.” Trademark law, on the other hand, provides protection for any word, name, symbol, or device that is used to identify the source of the owner’s goods or services.

Fictional characters represent a point at which trademark and copyright law can converge. To the extent that a fictional character serves as a source-identifier for a product or service, that character may be entitled to trademark protection. The fictional character Mickey Mouse is a great example of this. Disney has utilized its Mickey and Minnie Mouse characters as a source-identifier for a wide range of goods and services and has obtained federal trademark protection for multiple variations of the character. One registration for the Mickey Mouse character, for example, covers goods including “card games; mechanical toys; parlor games; party games; toy mobiles.”

But not all fictional characters enjoy the same extensive protection, and to be sure, Disney Enterprises is extremely aggressive about protection its characters and its trademarks. The Sherlock Holmes character, owned by the Conan Doyle Estate, has been the subject of extensive intellectual property disputes. From a copyright perspective, courts have held that Sherlock Holmes is considered to be mostly in the public domain (with some limited exceptions for later works). But the Estate has also alleged trademark infringement, claiming that it had developed common law protection for SHERLOCK HOLMES for goods and services including motion picture and television series.

But what about companies that adopt the Sherlock Holmes character to indicate the source of other, different goods and services? Things that a consumer would not be likely to confuse with the Sherlock Holmes motion pictures and television series? A search of the United States Patent and Trademark Office’s database shows a number of registered trademarks that incorporate SHERLOCK HOLMES, including one for the following goods and services, among others:

“Computers, computer hardware; computer games software; interactive multimedia computer games programs; video games software; computer game software downloadable from a global computer network; computer software publications in the nature of magazines, newsletters and e-zines downloaded via the Internet in the field of computer software information and computer games information; pre-recorded sound and video recordings, namely, discs, tapes, CD-ROMs and other magnetic or optical media, all bearing games software or video games; virtual reality systems, namely, virtual reality game software; electronic amusement apparatus adapted for use with television receivers or with video display units; electronic amusement apparatus adapted for use with external displays, screens or monitors.”

With the goal of trademark law being to protect the purchasing public from confusing one product with another, similarly named, branded, or labeled product, it would be difficult to imagine disallowing the above trademark for SHERLOCK HOLMES from registering. It seems unlikely that a reader or viewer of Sherlock Holmes content generated or endorsed by the Conan Doyle Estate would believe computer hardware bearing the name of the character was related.

However, the extent of protection afforded any fictional character will vary dramatically depending on a number of factors. And in addition to trademark infringement, a rights holder may try to allege things like dilution or tarnishment against a cannabis company utilizing a character’s name based on the nature of the goods involved – we’ve seen this before. So, if you are considering using a fictional character’s name or likeness, or even a reference to a fictional character’s name or likeness, in your branding or advertising, consult with your IP attorney first so you don’t find yourself on the receiving end of a cease and desist letter.