Copyright protection for fictional characters

Copyright protection is available to the creators of a range of works including literary, musical, dramatic and artistic works. Recognition of fictional characters as works eligible for copyright protection has come about with the understanding that characters can be separated from the original works they were embodied in and acquire a new life by featuring in subsequent works.[1]

Main article: Copyright

United States
Main article: Copyright law of the United States

In the United States, in order to avail of copyright protection, a work must be original that is, it must involve an element of creativity,[2] and must be fixed in a tangible medium.[3] Further, there can be no copyright in mere ideas and facts, but only in the unique expression of the same.[4] US Copyright Statute of 1976 does not explicitly mention fictional characters as subject matter of copyright, and their copyrightability is a product of common law. Historically, the Courts granted copyright protection to characters as parts of larger protected work and not as independent creations. They were regarded as ‘components in a copyrighted works’ and eligible for protection as thus.[5] Recognition of characters as independent works distinct to the plot in which they were embodied came about only in 1930 in the case of Nichols v. Universal Pictures.[6] Following Nichols, the American judiciary has evolved two main tests to determine whether a character in a work can be eligible for copyright protection.

Well-delineated test

In Nichols, the United States Court of Appeals for the Second Circuit denied protection to the plaintiff's characters on the grounds that they were not “distinctly delineated”, but poorly developed. The plaintiff's characters of the Jewish gentleman and the poor Irish catholic girl he loved were regarded to be no more than mere ‘prototypes’. Judge Hand held that the less developed the character, the less the copyrightability of the same. Copyright protection shall therefore be enjoyed by a character provided it is well delineated. By applying this test, copyright protection was held to subsist in the character of Tarzan because it was found to be “sufficiently delineated.”[7] Similarly, the character of Superman was held to found to be well delineated by virtue of embodying original literary expressions and incidents, and therefore deserving of copyright.[8]

Under this approach, a three-step test is required to be followed. Firstly, the character must possess physical and conceptual attributes. Secondly, the character must be “sufficiently delineated” to be identified as the same character across multiple occasions. He must therefore show consistent traits. Lastly, the character must be “especially distinctive” and “contain some unique elements of expression.[9] The consistency of a character's traits and attributes is considered as the key factor for whether the character qualifies for copyright protection.[10]

Story being told test

The second approach was propounded by the United States Court of Appeals for the Ninth Circuit in Warner Bros. v. Columbia Broadcast Systems.[11] The Ninth Circuit court ruled that a character can avail of copyright protection only if it “constitutes the story being told”. In this case, the character in question, Sam Spade of the Maltese Falcon detective novel, was held to be a “mere vehicle” for carrying the story forward. Accordingly, copyright protection did not prevail. The holding in Warner Bros. case came to be known as the Sam Spade Test, this approach does not allow for copyright protection if the character is a “mere chessman in the game of storytelling.”

On the other hand, if the character is central to the story, then it will be copyrightable. In the case of Universal City Studios v. Kamar Industries[12] this test was applied to hold that E.T was a distinctive character around whom the story in the movie E.T the Extra Terrestrial revolved. Therefore, the copyright in E.T was held to be enjoyed by Universal Studios, and the defendants were held liable for a violation of the Studios’ copyright by the manufacturing and sale of goods under the title ‘E.T Home Phones’.

The American judiciary has followed both these tests. There have also been a number of instances where the Court has used both the tests in its analysis. For instance, in Anderson v Stallone,[13] it was held that the character Rocky played by movie star Sylvester Stallone in the eponymous movie franchise had come to be identified with certain physical traits and mannerisms that qualified as a well delineated character. Further, this ‘highly developed’ character was held to constitute the story being told. Similarly, the character of James Bond was awarded copyright protection on the grounds of being both sufficiently delineated as well as central to the story being told.[14] The fact that the character had been played by multiple actors was not held to be relevant since the characteristics associated with Bond had remain consistent across sixteen films.

Visual and literary characters

Copyright protection is available to both characters that have been solely described in writing, as well as characters depicted in a visual or graphic form.[15] What is required is that the character in question possesses original or a set of distinctive traits, and visual representation is not an essential. For example, simple representation of anthropomorphic versions of human emotions by color is not sufficient for copyright without unique characterization traits.[16] If the literary character is not depicted in a visual form, and has only been described in writing in a few lines, then the character cannot enjoy copyright.[17] On the other hand, where the characters, like Sherlock Holmes and Dr. Watson are found to be distinctive enough, they are held to be subject matter of copyright, even if they are merely in written form.[18] Copyright protection may be granted to comic characters where the physical and conceptual characteristics find unique expression in graphic form.[19]

Components of character’s identity

Copyright protection may also be afforded to the individual components of a character's identity. For instance, copyrightability was granted to the glove worn by the protagonist in the movie A Nightmare on Elm Street on the grounds that it helped identify the character, and therefore enjoyed a distinct protection separate from the character.[20] Similarly, the superhero Batman’s car the Batmobile was held to be protectable by copyright on account of the fact that firstly it had a set of distinctive traits, and secondly these traits could be separated from the utilitarian functions of the car and be represented in pictorial, sculptural and graphic form.[21]

Stock characters

The scenes a faire doctrine holds that those scenes or aspects that are indispensable to the story or are standard expressions cannot be copyrighted.[22] This limitation also applies to fictional characters.[23] Therefore, stock characters or archetypical and hackneyed elements are disqualified from protection by virtue of the fact that they are not unique in their expression.[24]

Infringement

In cases of copyright infringement of a fictional character, a two-step test developed by the American Courts has to be satisfied.[25] Firstly, it must be established that the character in question is capable of being copyrighted. Secondly, it must be demonstrated that there has been an infringement of this unique expression.[26] The delineation test and the story being told tests as explained above are used to determine the copyrightability of the character, and the Court must check whether the same is precluded from being afforded protection by virtue of applicability of the scenes a faire doctrine. Following this, the actual infringement is to be decided by comparing the original and allegedly infringing work for “substantial similarities” in appearance, as well as in personality traits.[27]

Other sources of protection

Protection of fictional characters may also be derived from certain alternative sources in American law.

Trademark Law: Trademark rights may be enjoyed in a fictional character and can be enforced as such. To determine the infringement of the trademark it must be shown that the fictional character has acquired a “secondary meaning”, and that there is a likelihood of confusion to be caused to the public by the defendant's mark which is deceptively similar to the original.[28] Characters such as Mickey Mouse have been held to have acquired such a secondary meaning and protected under trademark law.[29]

Right to Publicity: This right traces its origins in the tort of privacy and is the right to prevent others from commercially exploiting one's name and likeness. The portrayal of the Marx brothers as characters in a play was held to be an infringement of their right to publicity.[30]

Dilution: Yet another remedy with its roots in trademark law is that of dilution. Under the doctrine of dilution, the plaintiff can seek relief for whittling away of the value of character. This doctrine has been applied for protection of fictional characters including that of Superman. In DC Comics v. Unlimited Monkey Business,[31] the defendants’ costumes were found to present a likelihood of dilution of the plaintiff's trademark in the Superman character.

Misappropriation: In order to argue for misappropriation of fictional characters, the plaintiff must demonstrate that firstly, there has been an investment of substantial amount of time and effort by him, secondly, the defendant has appropriated the product of such investment, and thirdly, such appropriation has caused loss to the plaintiff.[32] The action of taking the plaintiff's news bulletins and selling to its competitors was held to be a case of misappropriation.[33]

India
Main article: Copyright law of India

Section 13 of the Indian Copyright Act, 1957 allows for copyright in original literary, artistic, musical and dramatic works, as well as in sound recordings and cinematography films. The statute does not recognise fictional characters as subject matter of copyright, and protection for the same is derived from judge-made law.

The first instance where this issue was brought into light was in the case of Malayala Manorama v VT Thomas.[34] The Kerala High Court held that the defendant owned the copyright in his cartoon characters that he had created before entering into the plaintiff's employment.

Subsequently, the Delhi High Court in Raja Pocket Books v Radha Pocket Books[35] found that the plaintiff's copyright in his comic character the herpetologist ‘Nagraj’ had been infringed by the defendant's character ‘Nagesh’ based on the semantic and phonetic similarities in their respective characters’ names, as well as in their visual representations and conceptual characteristics.

However, the Court in VT Thomas did not discuss independent copyright in characters as this case was concerned with the issue of ownership of copyright.[36] Further, the comparative analysis in Raja Pocket Books to arrive at a conclusion of infringement was undertaken by the Court without firstly stating that copyright subsisted in the plaintiff's character.[37]

Therefore, in India, it can be implied that copyright protection is available to fictional characters, but the judiciary is yet to lay down any criteria for availing this protection.[38]

Alternate protection

In India, recourse can be had to trademark law which recognises that fictional characters enjoy goodwill, and provides relief for cases of ‘character merchandising’. Character merchandising has been defined as involving the exploitation of fictional characters by licensing these fictional characters in the case of Star India Private Limited vs Leo Burnett (India) Private Ltd.[39] A prerequisite for character merchandising is that the character to be merchandised must have gained some public recognition, independently of the original product in which it appears. In this case, the characters in the plaintiff's were found not have acquired an independent recognition as a commodity, and therefore the suit for character merchandising by the defendants failed.

See also

References
  1. Paul Goldstein, Copyright: Principles, Law And Practice (OUP 1989)158.
  2. Feist Publications, Inc. v. Rural Telephone Services Co., 499 U.S. 340, 361 (1991).
  3. 17 U.S.C. § 102.
  4. Mannion v. Coors Brewing Co., 377 F.Supp.2d 444 (S.D.N.Y. 2006).
  5. Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 754 (9th Cir. 1978).
  6. 45 F.2d 119, 121, 7 USPQ 84 (2d Cir. 1930).
  7. Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610 (2d Cir. 1982).
  8. Detective Comics, Inc. v. Burns Publications, 111 F.2d 432; 434 (2d Cir. 1940)
  9. Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir.2008).
  10. DC Comics v. Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013).
  11. 216 F.2d 945, 950 (9th Cir. 1954).
  12. 217 U.S.P.Q. (BNA) 1162 (S.D. Tex. 1982).
  13. 11 USPQ2D 1161 (C.D. Cal. 1989).
  14. Metro-Goldwyn-Mayer v. American Honda, 900 F. Supp. 1287 (C.D. Cal. 1995).
  15. Amanda Schreyer, 'An Overview Of Legal Protection For Fictional Characters', 6 CYBARIS IP L. Rev. Vol. 51 (2015) available at http://open.mitchellhamline.edu/cgi/viewcontent.cgi?article=1043&context=cybaris
  16. Maddaus, Gene (March 16, 2020). "'Inside Out' Copyright Lawsuit Rejected by Appeals Court". Variety. Retrieved March 16, 2020.
  17. Olson v. Nat’l Broad. Co., 855 F. 2d 1446, 1452–53 (9th Cir. 1988).
  18. Klinger v. Conan Doyle Estate Ltd., 755 F.3d 496, 503 (7th Cir. 2014).
  19. Walt Disney Productions v. Air Pirates, F.2d 751 (9th Cir. 1978).
  20. New Line Cinema v. Russ Berrie, 161 F. Supp. 2d 293, 302 (S.D.N.Y. 2001).
  21. DC Comics Supra 10.
  22. Alexander v. Haley, 460 F.Supp 40 (S.D.N.Y. 1978).
  23. Gaiman v. McFarlane, 360 F.3d 644, 659 (7th Cir. 2004).
  24. Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001).
  25. Kenneth E. Spahn, 'The Legal Protection of Fictional Characters', 9 U. MIAMI ENT. & SPORTS L. REV. 331 (1992) available at: http://repository.law.miami.edu/umeslr/vol9/iss2/6.
  26. Zambito v. Paramount Pictures, 613 F.Supp. 1107, 1111-12 (E.D.N.Y. 1985), aff'd, 788 F.2d 2 (2d Cir. 1985).
  27. United Artists v. Ford Motor Co., 483 F. Supp. 89, 91 (S.D.N.Y. 1977).
  28. Universal City Studios, Inc. v. Nintendo Co., Ltd.., 746 F.2d 112, 115 (2d Cir. 1984).
  29. Walt Disney Supra 18
  30. Groucho Marx Prods. v. Day and Night Co., 523 F.Supp. 485, 492-3 (S.D.N.Y.), rev'd on other grounds, 689 F.2d 278, 287 (2d Cir. 1981).
  31. 598 F.Supp. 110 (N.D. Ga. 1984).
  32. Spahn Supra 24
  33. International News Service v. Associated Press, 248 U.S. 215 (1918).
  34. AIR 1989 Ker 49.
  35. 1997 (40) DRJ 791.
  36. Shan Kohli, 'Can Literary Characters Be Copyrighted?: Criticism Of The “Story Being Told” Test And The Indian Status –II' SPICY IP (April 14, 2016) available at https://spicyip.com/2016/04/can-literary-characters-be-copyrighted-a-reformulation-of-the-especially-distinctive-test-ii.html.
  37. Id.
  38. Inika Charles, 'Copyright-ing Fictional Characters: Bombay HC Permits Release of ‘Rangoon’'SPICY IP (March 6, 2017) https://spicyip.com/2017/03/copyright-ing-fictional-characters-bombay-hc-permits-release-of-rangoon.html.
  39. 2003 (2) BomCR 655.
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