Flattery will get you nowhere - But don't stop trying

Probably all James Bond fans know this line from Miss Moneypenny. While she may never quite win James’ heart, her name has now earned a place in German trade mark case law. In a recent decision, the German Supreme Court (I ZR 219/24) had to decide whether the name ‘Miss Moneypenny’, or simply ‘Moneypenny’, qualifies for protection as a title of a work under German trade mark law.

Background 

The plaintiff owns the rights to the James Bond films. For readers less familiar with the franchise, the judges summarised James Bond’s history as follows:

25 James Bond films have been released since 1962. The first films were based on novels by Ian Fleming. James Bond is a secret agent working for the British secret service MI6. The character “M” is the head of MI6 and James Bond’s superior. The character “Moneypenny” or “Miss Moneypenn” is M’s secretary.

After the reboot of the James Bond films with Casino Royale in 2006, Moneypenny did not appear in the first two films. In Skyfall (2012), she reappeared as a younger Eve Moneypenny, initially as a field agent working alongside James Bond. After a failed rescue attempt in which James Bond is shot, she accepts a position in M’s anteroom.

The defendants are the company Moneypenny Verwaltungs GmbH (“MVG”) and its sole shareholder and managing director. The shareholder owns German trade marks for “MONEYPENNY” in classes 9, 35, 38, 41 and 42, as well as the domain names my-money-penny.de, my-moneypenny.com and moneypenny-werden.com. The defendants used “MONEYPENNY” primarily for secretarial and administrative support services for companies.

The plaintiff was not too happy about the defendant's use of “MONEYPENNY” and asserted claims based on unfair competition law as well as infringement of rights to an unregistered trade mark and to a title of a work. The action was unsuccessful before both the District Court and the Higher Regional Court of Hamburg. The plaintiff then filed an appeal limited to the claims based on a title of a work.

The German Supreme Court’s decision

The judges dismissed the appeal.

According to Sec. 5(3) German Trade Mark Act, titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works. The establishment of protection for a title of work requires use as a title in commerce within Germany. 

1. ‘Miss Moneypenny’ as a work

a. The concept of a “work”

The term “work” does not correspond to the concept of a work under copyright law. It encompasses all intangible results of creative effort that, according to the relevant public, can be named and are objects of legal and commercial transactions.

The Court held that fictional characters in novels, plays or films may qualify as works if their appearance and characters are sufficiently manifested.

In addition, a fictional character must exhibit a certain degree of independence and independent recognition vis-à-vis the work in which it appears. Only such independence allows for marketability, which is a prerequisite for the character to qualify as a marketable object in legal and commercial transactions.

Indications of such independence may include a distinctive visual design or particularly pronounced character traits, abilities and typical behaviours that individualise the character and its personality. In a series, for example, the regularly recurring and characteristic appearance of a character may indicate such independence. 

b. Lack of sufficient independence

The appeal court found that Miss Moneypenny lacked sufficient independence.

 
aa. Copyright protection

The plaintiff argued that Miss Moneypenny enjoys protection as a title of a work because the character itself is protected by copyright. The judges rejected this argument.

According to the decision, copyright protection of a fictional character requires that the author endowed the character with an unmistakable personality through a combination of pronounced character traits and distinctive physical features.

A mere description of a character’s physical appearance will generally not suffice. However, a detailed depiction of character traits may compensate for a less detailed physical description. In principle, copyright protection requires a combination of pronounced character traits and distinctive physical features.

Based on the findings of the Higher Regional Court, the judges held that Miss Moneypenny does not enjoy copyright protection because she lacks a sufficiently specific visual characterisation.

 
bb. “Perfect secretary” stereotype

The plaintiff’s argument that Miss Moneypenny embodies the perfect secretary and epitomises professionalism merely confirmed, in the Court’s view, that she lacks a sufficiently individualised character with a distinctive personality. 

cc. Survey evidence

The plaintiff also submitted a survey showing that Miss Moneypenny was perceived as being closely associated with the James Bond films. According to the judges, the survey demonstrated precisely the opposite of what was required: the character was not perceived as independent, but solely as part of the James Bond universe. 

dd. Licensing and derivative works

Licences for publications under the title “The Moneypenny Diaries” and for the use of “Moneypenny” for bags, suitcases and accessories were deemed irrelevant. These circumstances lay outside the “basic work” in which the character appears, namely the James Bond films.

The independence of a character must be established within the basic work itself, not through external circumstances. It is immaterial whether the character is described in more detail online, in advertising, or in merchandising. All characteristics of the fictional character must stem from the basic work and result in its independence from that work.

2. Use as a title of a work

Independently of rejecting Miss Moneypenny as a work in her own right, the judges also expressed serious doubts as to whether her name was used as a title of a work at all.

The mere fact that the character is named “Miss Moneypenny” in the films was not sufficient. This is merely the name of a fictional character, not the title of a work.

The use of “The Moneypenny Diaries” as a title for publications was also insufficient, as that title designates the publications themselves rather than the fictional character.

Comment

The German Supreme Court continues its strict line on titles of works, insisting that protection requires more than fame or audience recognition. What matters is whether the fictional character has achieved sufficient independence from the underlying work within that work itself. External factors - merchandising, derivative publications, surveys or licensing practices - are largely irrelevant.

From a practical perspective, the ruling highlights three important points:

1. Side characters face an uphill battle. While protagonists may more easily develop the necessary individuality and marketability, secondary characters — even iconic ones — often remain legally ‘attached’ to the main work. 
2. Copyright and title protection remain conceptually distinct. The Court emphasised that copyright standards cannot simply be transplanted into title-of-work protection. Even where copyright protection might be arguable, this does not automatically lead to protection as a title of work. Also, the protection of a character's appearance through copyright has limits, as illustrated by the German Supreme Court’s decision on Astrid Lindgren’s character Pippi Longstocking (IPKat here).
3. Enforcement gaps remain. Even if Miss Moneypenny had qualified as a protected title, enforcement would not have been straightforward. Titles of works are generally protected only against direct confusion between works. Using ‘Moneypenny’ for secretarial services is far removed from identifying a cinematic or literary work.

Trade mark protection is also a challenging endeavour because even if you apply for all goods and services, you are certainly not going to use the mark for all of them, which will make enforcing the mark difficult after the end of the five year grace period in the EU.