Mexico's Unique IP Protection For Fictional Characters

Every year, countless films, television series, and other entertainment content are released to consumers worldwide. But how can companies turn that content into theme parks, clothing, toys, videogames, and other profitable products and services? The answer is intellectual property rights. The title of a series may be registered as a Class 25 trademark to cover apparel products or Class 28 to cover toys. The characters and other relevant elements of the content are protected through copyright, and the owner of the copyright may choose to authorize derivative works, such as videogames.

Yet, Mexico also offers another unique form of protection specifically for characters. This protection can apply to both characters interpreted by human beings or purely fictional or symbolic characters. This form of protection is a reservation of rights, and it is granted by the Mexican Copyright Office (INDAUTOR). If granted, the reservation of rights confers exclusivity over the name and both the visual depiction of the character and their psychological characteristics, such as the way that the character behaves. 

This form of protection offers important advantages in respect to more traditional forms of protection, such as trademarks and copyright. A trademark may cover the name and/or visual depiction of a fictional character. For example, a film studio may choose to register the shape of a character as a Class 30 trademark for candy to keep third parties from exploiting the character in such products. However, a trademark application will not normally mention the character’s background story or how the character behaves. A reservation of rights, in contrast, allows the studio to submit a detailed explanation of a character’s psychological characteristics and confers exclusivity over them as well. In this way, the owner of the reservation of rights is entitled to protection not only over how the character looks but what the character does.

Copyright may protect a character as a part of a work. Yet, the appearance and characteristics of a character may vary over time. Through the years, fictional heroes may become fictional villains, fictional children may become fictional grown-ups, and it may become difficult to pinpoint for the Mexican Institute of Industrial Property or a judge the exact characteristics a character might have and that an infringer might be copying. A reservation of rights resolves this issue by allowing the applicant to provide an image of the character and detail the characteristics of the character in writing.

Requirements and Timeframe

Obtaining a reservation of rights is a quick and simple process that may be worth looking at from the perspective of businesses in the entertainment industry and other businesses seeking to exploit their characters.

To obtain a reservation of rights, an application needs to be filed with INDAUTOR, indicating basic information on the applicant, as well as containing an image of the character, its name, and its characteristics. While, obviously, a single character may be depicted in many different ways and it may have many different characteristics over time, the suggestion is to pick an image that contains the most recognizable visual characteristics of the character and to describe these and their most iconic characteristics. For example, an applicant describing a typical superhero may want to outline the most recognizable superpowers of the character, their psychological traits, and perhaps briefly mention the main elements of the tragic background story that caused them.

For a reservation of rights filed by legal entities, it is necessary to submit a notarized and apostilled Power of Attorney along with a copy of the IDs of their signing individuals (passports for nationals of other countries) and some apostilled proof that the company exists (a certificate of good standing, for example). 

Once the documents are filed, INDAUTOR will take approximately four to six weeks to reply. If the documents submitted are not correct in their view, an office action will be issued to request a correction. If INDAUTOR believes that it has already granted a reservation of rights for an identical or confusingly similar character or that there are other substantive reasons to refuse the application, such as trying to depict a celebrity without consent, they will communicate the refusal in writing. The applicant may then appeal with the courts or submit a recourse with the hierarchical superior of the examiner that refused to grant the reservation of rights. Otherwise, a reservation of rights certificate will be issued.

The reservation of rights will last for five years, and it is renewable for subsequent five-year terms. To renew, specimens of use of the character must be provided and these must match the image of the character submitted to obtain the reservation of rights. If the character has changed, a new application for obtaining a new reservation of rights can be filed instead.

INDAUTOR permits searches to determine if a character can obtain a reservation of rights. However, unlike the Mexican Trademark Office, INDAUTOR does not have a searchable database that can be accessed online. Instead, it is necessary to submit a search request with the name, image, and characteristics of the character. This can be filed online. Once filed, INDAUTOR will take around two weeks to communicate the search results in writing.

Enforcement

To use a character identical or confusingly similar to another one protected by a reservation of rights constitutes infringement under Article 231 of the Federal Copyright Law. This infringement is not confined to specific categories of products or services, and any depiction of the character made for profit could be potentially illegal, regardless of the medium or product in which it is depicted.

As with other forms of intellectual property infringement in Mexico, the Mexican Institute of Industrial Property would handle the infringement proceeding, potentially issue injunctions and impose fines. Regardless, it would also be possible for the owner of an infringed reservation of rights to pursue a claim for damages before a civil judge.

Finally, it is worth mentioning that characters are not the only creations that can be protected through a reservation of rights. Advertising promotions, along with the titles of printed or electronic periodical publications and television shows, can also be protected in this way. Reservations of rights are thus an interesting supplement to traditional intellectual property rights.