Can a fictional character be copyrighted: India and the US (Part 1 of 2)

Can Superman be used by Marvel? Can anyone write Sherlock Holmes stories or produce a film on James Bond? These questions are answered by this detailed two-part article which aims to cover the protection of fictional characters in the United States and India. It also delves into concepts such as character merchandising, characters in the public domain as well as the intersection between Copyright and Trademark laws regarding these characters. Part 1 of this article deals with the recognition of fictional characters in the US. Initiating from the coverage (or non-coverage) of fictional characters in the US Copyright Act, this part highlights various theories and tests which forms the basis of protection of these characters as copyrights.

Copyright Protection is governed by the principle of territoriality. This means the existence, content and expiry of copyright are subject to the laws of the country in which the use and/or infringement of the copyright occurs. Since copyright protection is territory specific, copyright infringement cases are to be dealt with under the legal systems of all countries from which the work can be accessed. This article covers the legal aspects of copyright protection for fictional characters in two territories: India and the US. In both the nations the copyright legislation does not provide direct protection to fictional characters, since as per strict interpretation, characters do not fall independently under any categories of “Work” as defined under the Copyright Legislations prevalent in both the nations. However, such protection is available through judgments.

Recognition as per the US Laws and Precedents

No explicit mention of ‘Fictional Characters’ has been made as a subject matter of copyright under the US Copyright Act, 1976.  Copyright protection is only available to characters as parts of the larger protected work and not as independent creations. A few tests and theories have been developed through judgments in the US for determining whether fictional characters are copyrightable.

Mickey Mouse Protection Act, 1998

The copyright term of the Walt Disney created character “Mickey Mouse” was further extended until 2023, owing to Copyright Term Extension Act (CTEA) of 1998 (also called Mickey Mouse Protection Act) that made the term of copyright for corporate works 95 years from the year of first publication or 120 years from the year of first creation, whichever expires first. The Act is so called, as it was enacted with the vision of preventing the character ‘Mickey Mouse’ from entering the public domain for a further duration, by way of extending the copyright protection enjoyed by the said fictional character.

It is pertinent to note that even after expiry of the duration of the copyright protection, said work does not cease to receive protection under the relevant trademark laws if the copyrighted work (including fictional characters) are so registered under the relevant trademark laws applicable in the country of origin of the said work. While copyright protection prevents creative works from being used without the permission of the rights holder, a trademark “protects words, phrases and symbols used to identify the source of the products or services”. So long as a company can assert that their trademarked image has obtained ‘Secondary Meaning’, that trademark will prevent its use from being exploited by the public or other corporate competitors. When Mickey Mouse’s copyright protection finally expires in 2023, Disney will still own no fewer than 19 trademarks for ‘Mickey Mouse’. 

Basis of Recognition in US: two theories and tests

Delineated Characters Test:

Nichols vs. Universal Pictures, 45 F.2d 119 (2d Cir. 1930)

The Plaintiff was the author of the play, ‘Abie’s Irish Rose’ (‘Plaintiff’s work’) and the Defendant had publicly produced a motion picture play ‘The Cohens and the Kellys’ (‘Defendant’s work’) which was the subject matter of the alleged copyright infringement in the Defendant’s work. The court had upheld the contentions of the Defendants that both the plays had four common characters, two lovers and two fathers, and the characters of the lovers in the Plaintiff’s work were founded on minimal and generic attributes, thus the same was not eligible for copyright protection due to lack of any exclusive features that would have stood out. Similarly, the Plaintiff’s Jewish Father character was quite unlike the Defendant’s Jewish Father character. Although both of these characters had certain attributes in common. Both of the characters were grotesque, extravagant, quarrelsome and fond of display, these few common attributes only contributed to making up a small part of their characterization and did not suffice to constitute and/or to display a stark imitation of the said character of the Plaintiff’s work. The Characters of the Irish Father in both of the plays were in all possible interpretations, completely different from each other. On one hand, the Irish Father character in the Plaintiff’s work was a religious fanatic amongst other such attributes, and on the other hand, the aforementioned character in the Defendant’s work has been described as a grotesque hobbledehoy throughout the work, with certain attributes such as his pride in his progeny etc. none of which can be associated even remotely with the Irish Father character as comprised in the Plaintiff’s work.         

The following three-step procedure is adopted for carrying out this test:

  1. Physical and conceptual attributes (‘characterization’)

Based on the above-mentioned case, the following can be derived so as to set out a concluding test for copyright infringement in characters forming part of the literary works created by both parties in the said case. 

Neither of the characters in the said case, were so completely developed as to bear any specific physical or conceptual attributes that were exclusive to the said characters, as also the generality and conventional approach taken in the creation of all the said characters foils the success of the delineated characters test to determine the copyrightability of fictional characters.

  1. Recognised as the same character over cross-border territories

In BBC Worldwide Ltd. and Anr. v. Patty Screen Printing Ltd. and Ors., 1998 FSR 665, the action for passing off was of the Television Series “Teletubbies”, on the grounds that the Plaintiffs had built up a reputation in relation to the merchandising of the Teletubby characters and that the goods of the Defendants would lead to deception of the public or, alternatively, it would amount to putting instruments of deception into the hands of the other Defendants which would, in turn, lead to the deception of the public into believing that the products of which complaint has been made in the action are products of, or associated with, or put out with the authority of the plaintiffs. The question the Court answered was as under: 

It seems to me that it inevitably must be a question of fact whether or not members of the public seeing the T-shirts in issue will be deceived. To succeed on this part of the case the plaintiffs will need to show that they have built up the necessary reputation so that members of the public would look at this type of artwork and consider it to represent the plaintiffs or products made with the plaintiffs’ approval”. 

Thus, it is imperative for the fictional character to be reviewed in the light of its undisputed recognition as such, over cross-border territories, in order to determine whether a fictional character can be eligible to enjoy copyright protection.   

  1. Must contain unique elements of expression

In order to grant copyright protection to fictional character/s it is necessary that the said characters must have gained some public recognition, that is, such characters must have achieved a form of independent life and public recognition for itself independently of the original work in which it appears or independently of the milieu/area in which it appears, so as to establish that the character possesses unique elements of expression as recognised by the target audience. This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears. It is only when this is established on evidence as a fact, that the claimant may be able to claim a right to prevent anyone else from using such a character for other purposes.

Few popular examples of characters becoming so unique that they take a ‘life of its own’ that is independent of the story in which it appears are as follows:

  1. The fictional character ‘Joey’ from the Popular American Television Series “Friends” became so unique and took an independent life of its own that a separate Television series by the name “Joey” was created and broadcast which revolved around the same character “Joey” from the former Television Series.
  2. The same was the case with respect to the character “Sheldon” that was a part of another American Television Series “The Big Bang Theory” where the said character grew so popular and gained an independent identity different from the said Television Series on account of its explicitly unique characteristics that a separate Television Series was created and broadcast showcasing the early life of the said character.
  3. There are many such other examples where fictional characters having unique and distinct features, gain a life of their own and subsequent works are created and broadcast revolving around the said characters, such as the characters of “Lizzie Mcquire”, “Hannah Montana” etc. 

Storytelling Test:

  1. Warner Bros. v. Columbia Broadcast Systems, 216 F.2d 945 (9th Cir. 1954) held that a character should be central to the plot and should have the ability to carry out the entire story, in order to be eligible for copyright protection. E.g. Character of James Bond. A background character is not copyrightable.

The court held in this case that the decisive test to be applied for the determination as to whether the said fictional character is eligible for copyright protection was changed from the ‘distinctively delineated characters’ test to the ‘storytelling’ test. It was stated that no character is protectable under copyright law by merely being a ‘chess man in the game of telling the story’, it is imperative that the story has to revolve around the particular character which is sought to be protected under the copyright law. It was further stated that in this present case, even though the owners assigned their complete rights in the copyright to the ‘Maltese Falcon’(work constituting the subject matter of dispute of copyright infringement), the said assignment did not prevent the author from using the characters used therein in other stories. The characters were merely vehicles for the story told, and did not result in the story revolving around the said characters throughout the plot.

  1. Universal City Studios vs. Kamar Industries, 217 U.S.P.Q. 1163 (S.D. Tex. 1982)

In this case, the use of the phrases ‘E.T. Phone Home’ and ‘I love E.T.’ on drinking mugs, pencil sharpeners, and another merchandise was held to be an infringement with respect to the character merchandising rights associated with the character ‘E.T.’.

One of the two premises upon which the district court based its holding was that the inscriptions on the Defendant’s products would be “readily recognizable to the lay observer as key lines of dialogue from the copyrighted cinematograph film.” The court determined that the Plaintiff would have prevailed on its copyright claim simply by reason of the Defendant’s unauthorized use of the ‘E.T.’ character and name.

It was held that the copyright of the movie extends to the character name because it is central to the story. “The name ‘E.T.’ itself is highly distinctive and is inseparable from the identity of the character. The use of the name ‘E.T.’ conjures up the image and appeal of the ‘E.T.’ character.

It is sensible to protect a phrase attached to a protected character. Certain verbal tags also conjure up, by association, the idea of specific characters. The phrase ‘Phone Home,’ severed from the character name, is unprotectable as a common idiom of language. When it is attached to the name, however, the copyright of the motion picture stretches, not only to protect the character but to protect the character-phrase association.   

The second part of this article deals with the recognition of fictional characters under the sphere of Indian copyright regime, along with concepts of Character Merchandising and Characters in Public Domain.

DISCLAIMER: The information provided in this article is for educational purposes only. The same cannot be construed as legal advice.

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