Copyright protection for Fictional Characters (Part 2 of 2)

In the first part, Pranjali delved into the coverage of fictional characters under US Copyright sphere along with the theories as well as tests of their protection. In this part, she discusses how these characters get protection in the Indian Copyright sphere. She covers all bases as she does an analysis of the concept of character merchandising and how characters in the public domain are dealt with.

Recognition in India

In the Indian context, the Copyright Act, 1957 read along with the Copyright (Amendment) Act, 2012, neither allows direct interpretation for character copyright protection nor prima facie specifically eliminate the possibility of a grant of such protection. Reliance on precedents is the only way. As opposed to copyright protection for fictional characters there is more focus on trade mark protection for exploitation of merchandising rights associated with the said characters in the Indian scenario.
 

As per certain tests set out by the Courts for the purpose of determining whether a fictional character is copyrightable is that whether the fictional character loses distinctive impact when the said fictional character is removed from its original setting and carried forward as a vehicle of new/different story/creation/act.
 

The 2002 case of Star India vs. Leo Burnett, 2003 (27) PTC 81 Bom is important for the purpose of analysing the position of copyrightability of fictional characters in the Indian context. Here the Plaintiffs were the producers and proprietors of the television serial ‘Kyun Ki Saas Bhi Kabhi Bahu Thi’ which consisted of certain distinctive characters having wide-reaching popularity and goodwill among television viewers in India and abroad. The Defendants had subsequently, telecasted/broadcasted a commercial advertisement film with the title ‘ Kyun Ki Bahu Bhi Kabhi Saas Banegi’ with identical characters having the same physical and emotional characteristics and carrying the same names as of the well-known characters in the Plaintiffs’ television serial, viz. ‘Tulsi’,‘Savita’, ‘JD Uncle’ without taking prior consent of the Plaintiffs. The Plaintiffs had claimed this to be a case of copyright infringement and passing off and had further claimed specifically that on account of the goodwill that was enjoyed by the characters in the said television serial, the Plaintiffs were entitled to a copyright in the characters of the television serial and that they were in fact in a position to exploit merchandising rights with respect to the said characters and it was claimed further that the Defendants had sought to trade upon and misrepresent to the members of the public at large with an attempt to strike a false connection between their product and the characters in the Plaintiff’s serial.
 

The court had dismissed the motion for a grant of relief, based on the material on record, and contentions of parties, and had further penned down certain important aspects with respect to character merchandising rights which are as follows:

  1. Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous characters to others.
  1. It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears.
  1. Only then can such character be moved into the area of character merchandising. 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.
  1. For taking an action based on character merchandising there must be in fact, character merchandising and that mere potential for merchandising the character by itself is not sufficient. However, it is not possible to rule out the proposition that the mere potential for merchandising is not sufficient to maintain an action.  A character may have grown out beyond the film when the people would identify and, therefore, there is a probability of it being potentially merchandised.

Character Merchandising Rights

As explained above, character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others. The fictional characters are generally drawings in which copyright subsists, e.g., cartoon and celebrities are living beings who are otherwise very famous in any particular field, e.g.; film stars, sportsmen.  Based on judicial pronouncements for decades the fictional characters can be classified into four distinct categories in accordance with their potential of getting copyright protection.
 

These categories are as follows:

  1. Pure Characters

These are such characters that do not appear in an incorporated work and thus have been awarded little or no protection at all by the courts.

  1.  Literary Characters

These are the characters which arise out of novels or scripts with description and action and thus creating the character. Copyright Protection is granted more frequently to characters that have some kind of tangible visual elements as opposed to literary characters whose image relies solely on abstractions of the human mind.
 

  1. Visual Characters

These are the kind of fictional characters that can be found in motion pictures and maybe an adaption of certain literary characters as well. These include human fictional characters and may be eligible for personality merchandising and/or image merchandising. For ease of correlation, the following are a few examples of both types of merchandising rights associated with human fictional characters:

  1. Image Merchandising: The human fictional character Shaktiman, shall be eligible for image merchandising. Image merchandising rights with respect to the character Shaktiman can only be carried out when the artist  executing the portrayal of the said character poses in such a manner so as to showcase an undisputed connection between the character Shaktiman and the items and/or content that is produced using such images name, logo etc pertaining to the copyrighted work comprising of the character Shaktiman.
  1. Personality Merchandising: The BatMobile (Batman’s car) or  Batman’s mask or his cape are all on standalone basis eligible for copyright protection and carry personality merchandising rights by virtue of the fictional character of Batman since these are the articles that form an indispensable element of the personality of the Batman Character.
  1. Cartoon/ Animated Characters

These characters are the cartoon or animated characters that may be a subset of any literary characters and/or visual characters derived from any copyrighted work or otherwise. Since, graphic images are more identifiable such characters tend to receive more protection than literary or pure characters, due to their visual impact on the minds of viewers. Such types of characters can exploit graphic merchandising rights with respect to the animated fictional character that enjoys copyright protection.           

Adaptation of characters in the Public Domain


Pannonia Farms Inc. v. USA Cable, 2004 WL 1276842

The subject matter of copyright infringement as per the facts of this case was a TV movie called ‘Case of Evil’ broadcast over USA Cable’s television network. The principal character in the movie is a young Sherlock Holmes who meets Dr. Watson for the first time and the two of them solve a crime. USA Cable acknowledges that the film is based on the characters created by the British author Sir Arthur Conan Doyle. 

It was the Plaintiff’s case that USA Cable could not broadcast the said movie unless it first paid Plaintiff a license fee for exploitation of the work, as it claimed to be the owner of the copyrights in Sir Arthur Doyle’s writings and the common trademarks in the characters of Holmes and Watson.     
 

The Court rejected the theory of the Plaintiff that copyrights in the nine original Sherlock Holmes stories gave the Plaintiff the exclusive right to make derivative works featuring the Holmes and Dr. Watson characters considering especially that fifty-plus earlier stories already had reached the public domain, thus there was no scope of copyright infringement in the present case.

Conclusion
Two distinctive bodies of law namely; Copyright law and Trademark law provide overlapping protection for a fictional character. Copyright law will only protect the characterization of a fictional character if the character is portrayed in a copyrighted work. One difficulty in protecting a fictional character under copyright law is that the Copyright Act does not expressly recognize a fictional character as a copyrightable ‘work’, neither identifies it as a subset of any of the copyrightable ‘works’ defined under the respective copyright laws. Thus, copyright protection to fictional characters is not a straight jacket right and can be determined by way of relying on judicial precedents and by evaluating each character’s uniqueness and its analysis based on various tests through such judicial precedents as set out hereinabove. Also, apart from the copyright law, the trademark laws also provide protection to fictional characters and such an overlap is generally witnessed in cases where graphics merchandising rights with respect to fictional characters are utilized which also happen to be registered trademarks under the trademark law. 

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

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