In Memoriam Albert Uderzo – How Asterix's Father Shaped IP Law

Albert Uderzo, born Alberto Aleandro Uderzo, passed away on 24 March 2020 at age 92. 

Uderzo's name is best known to the world as the illustrator, and later (after the death of his co-author René Goscinny), scriptwriter of the Asterix comic books. The comic series, which recently turned 60, is one of the most successful French export products. The books have been translated into more than 100 languages (among which is Latin, as should be expected for a storyline taking place during Julius Caesar's rule), have been adapted to the cinema multiple times (both as animated and as live-action movies) and the franchise even has its own theme park near Paris. 

Uderzo was not only highly successful in creating copyrighted works, but also keen on defending them in court. The "small village of indomitable Gauls" (as the village of Asterix is referred to in every book of the series) has made important contributions to European IP law, inter alia, on parody in copyright law and risk of confusion in trade mark law. 

Obelix is definitely not a cat person

Does Parody Need to Make Fun of the Underlying Work?

The Asterix comic series relies, among other things, on many clichés about people, nationalities and celebrities (a character, allegedly based on former French Formula One driver Alain Prost, in "Asterix and the Chariot Race", recently gained increased media attention for being named "Coronavirus"). While Uderzo often relied on parody in his writing and drawings, he was clearly not amused when others drew inspiration from his brainchild's fame. 

For the 30th anniversary of the series (that is, in 1989), several comics writers created two "tribute" books to Asterix. 

The first one, "The Hysterical Adventures of Isterix", was a collective work featuring fifteen independent stories by as many authors. Some of them read as ordinary Asterix stories, though with unlikely storylines (such as "Asterix and the Nuclear Power Plant"), while others were entirely unrelated comics where Asterix characters were merely used as a reference ("Asterix Gone Astray", where a group of children sets up an Asterix-themed theatre play with many puns below the belt in front of their horrified parents). 

Copyright infringement

The second one, "Foul Play with Alcolix", features a story that makes fun of many well-known cartoon characters in addition to Asterix. Ironically enough, an unsympathetic IP attorney keeps bursting into the story and insists on copyright protection of the various characters. 

Uderzo and his publishing house unsuccessfully sued "Alcolix"'s publisher in France (this Kat was unable to locate the decision, other than a short press excerpt in the magazine Der Spiegel in 1989 – Kat readers who know of an online source are encouraged to comment). They were more successful in Germany, where enforcement efforts yielded two leading cases of the Bundesgerichtshof related to parody in copyright. 

In "Isterix", the German Federal Court of Justice (Bundesgerichtshof) defined "parody" as a derivative work that deals with, and makes fun of, characteristics of the original work. Using Asterix to make fun of Asterix is fine. Using Asterix to make fun of something else (say nuclear energy or German politicians of the late 1980s) is not. 

In the latter situation, the new work can only be considered "free use" (i.e. not a copyright infringement) if "the new work develops an inner distance to the borrowed personal traits of the original work through independent creative effort" and, as a result, the features of the original work "fade away". This was ruled not to be the case for most of the published comics in "Isterix". 

In "Alcolix", the Bundesgerichtshof additionally set out the rule that whether a derivative work constitutes "free use" must be judged from the point of view of an observer who is familiar with the original (i.e. an average Asterix reader), but who also has the intellectual understanding required for the new work (i.e. not an average Asterix reader). This Kat is not sure whether he should be offended.

The rules set out in these cases (especially "Isterix") were clarified and partly overruled in a 2003 case (Gies-Adler). Still, they have contributed not only to the development of German copyright law, but no doubt to the debate around the boundaries of copyright and artistic freedom. 

The Alcolix book

Obelix is Too Famous to be Confused

Unsurprisingly for the most famous Gaul of modern times, Asterix and his co-characters are also surrounded by a series of trade marks claiming protection for various goods and services. In the early 2000s, the Editions Albert René, Uderzo's publishing house, opposed "Mobilix", a trade mark filed by the telecom company Orange, based on the publisher's "OBELIX" trade mark. The opposition was unsuccessful for most of the goods and services. 

On appeal by Obelix the publishing house, the Court of Justice of the EU confirmed that the counteraction theory is applicable in EU trademark law. 

The global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately.

In the case at hand, Obelix was so well-known that the relevant public was understood to attach a clear and specific meaning to him, which counteracts aural and visual similarities between his name and the mark "Mobilix". At the time, IPKat very much agreed, but the counteraction theory remains a tricky topic until today, as recently set out in this Katpost. 

Asterix Is Not Dead

Uderzo may be gone, but the series continues as the collaborative child of Jean-Yves Ferri and Didier Conrad. The latest episode, "Asterix and the Chieftain's Daughter", was released in October 2019 in 20 languages with an initial run of five million copies. This Kat is looking forward to the next comic books (and next developments of IP law?) that Albert Uderzo's legacy will no doubt continue to trigger.