Author – Keerthana S.

Abstract

A fictional character generally means an imaginary person depicted or represented in a work of fiction i.e. film or play or story. The importance of giving copyright protection to fictional characters arises from the fact that, they have descended from their original fiction (eg: a movie) and have attained a separate identity. They became a part of our day today lives through movies, comic strips, cartoons, video games, toys and so on. Nowadays fictional characters are abundantly used in character merchandising due to their unique ability to serve as entertainment and expressive function and advertising, promotional and recognition functions. This makes the protection of fictional characters vital. The study traces the copyright protection granted to fictional characters to the US regime as early as 1930. There are not many instances in India where the courts have formulated a uniform test or approach towards copyright protection of fictional characters. Hence a comparative study between US and India is made to analyse the tests put forth by the courts to see which test holds good for the protection of fictional characters. The jurisprudence of granting copyright protection to fictional characters in India is still in its developing stage.

Keywords: Fictional characters, Copyright protection, India, Graphical characters, Literary characters.

Introduction

A fictional character generally means an imaginary person depicted or represented in a work of fiction i.e. film or play or story. The sources of fictional character as recognized by WIPO are: 1) literary works eg: Sherlock Holmes by Arthur Conan Doyle; 2) artistic works eg: Leonardo da Vinci’s Mona Lisa painting; 3) strip cartoons eg: Herge’s Tintin; 4) cinematographic films eg: King Kong, Chiti Robot. In case of cinematographic films, the characters might also be derived from the literary works or strip cartoons in which they originated eg: Batman. Generally fictional characters are recognized by the essential personality features like their image, name, appearance or voice of characters’ identity and so on. Eg: Superman is recognized as a man dressed in red and blue with a cape with a unique symbol in his chest and the one who saves the world from the villains with his super powers. The commercial value of fictional characters has increased a lot as they are a part of our day today lives through movies, comic strips, cartoons, video games, toys and so on. Nowadays fictional characters are abundantly used in character merchandising due to their unique ability to serve as entertainment and expressive function and advertising, promotional and recognition functions. This makes the protection of fictional characters vital. Due to these aspects fictional characters can be protected under various IPRs like copyright, trademark and industrial designs. This study discusses about the availability of copyright protection for fictional characters by the analyses of various cases regarding the same in US and India. Also brings out the various tests formulated by the courts to grant copyright protection for fictional characters.

Copyrightability of Fictional Characters

Section 13 of the Copyright Act 1957 gives the set of works that can be protected under copyright such as Original literary, dramatic and artistic works, Cinematographic films and Sound recordings. There exists no sui generis legislation or provision in India or anywhere else that protects fictional characters. Copyright protection provides authors with a legal mechanism to control the use and exploitation of the characters they create. According to Berne Convention ideas are not copyrightable whereas only the expression of the idea is copyrightable. The copyright protection for fictional characters permits the creators to receive their rewards of their creative work, influence the advancement of their characters in resulting works, and restrict others from misusing their protected creation, the fictional characters. Yet, underlying this concept of copyright protection for fictional characters is the assumption that a fictional character deserves copyright protection separate from the original work in which the character first appears. While from the outset it might seem unnecessary duplicative to give separate copyright to fictional characters, a more intensive look uncovers that a separate protection is important both to ensure the fundamental work, and to secure the character—itself a unique work of initiation because of the commercial nature and value of the characters. The best example for the need of copyright protection for fictional characters is the Marvel characters like Iron Man, Captain America, etc., where these characters have achieved an extreme fan base and the fame and money the author has earned out of them (eg: the sequels, character merchandising, etc.) are enormous which makes it a unique subject matter for protection.  When we study the copyright-ability of fictional characters the important question is whether a fictional character is an idea or an expression as it is always a part of the already copyrightable works like literary, artistic and cinematographic works. If a fictional character is granted copyright protection independently of the work within which it is created, then it restricts even an original work to make use of the character. Eg: If the Batman movie is copyrighted along with the fictional characters in the movie then the movies which were later released with Joker (the villain of Batman movie which hit the box office) as the main character would have amounted to copyright infringement. ‘

USA and India – A Comparative Study

US position

The history of copyright-ability of fictional characters in US can be traced from as early as 1930. From 1930 till today the courts have formulated various tests and followed various methods to grant copyright protection. Two such tests which are widely used are 1) Character delineation test 2) Story being told test.

Character Delineation Test

The first case that dealt with the question of copyright-abilty of fictional characters was Nicholas v. Universal Pictures Corp.  The plaintiff alleged that the film by Universal, The Cohens and the Kelleys infringed the character and the plot of the play Abie’s Irish Rose. Judge Learned Hand for the first time established that fictional characters can be protected under copyright independently of the plot. Though he recognized copyright protection for fictional characters he was very careful in emphasizing the limited nature of protection available by stating, “If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s ‘ideas’ in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

This shows that Judge Hand was of the strong opinion that the idea of the character should not be copyrighted and only the expression of the character which stands delineated is subjected to copyright. The assumption was that the more developed the character is the more it embraces expression than a mere general idea. It was held that the characters of Abie’s Irish Rose were not sufficiently delineated and hence it was not subjected to copyright.

In Detective Comics Inc v. Bruns Publications, DC alleged that the fictional character Wonderman by Bruns Publications infringed the copyright of the fictional character Superman due to its similarity. The court held that the Superman character was well delineated from the benevolent Hercules and embraces an expression which is original from the author. Hence the copyright subsists in the fictional character of Superman. Since there was similarity in the characters of Wonderman and Superman the defendants were held liable. The court was clearly of the view that even if a fictional character is a subject matter of copyright only the original expression of the author should be protected rather than the ideas underlying the character that should be available in the public domain.

Story Being Told Test

In Warner Brothers v. Columbia Broadcasting Systems, the copyright in the writings of The Maltese Falcon was assigned to Warner Brothers by the author Hammett. He then assigned the rights in the characters of The Maltese Falcon like Detective Sam Spade to Columbia Broadcasting Systems. WB alleged that the use of characters by CBS amounted to infringement as the exclusive rights in the writings include the rights in the character too. While reasoning the issue whether fictional characters are subject matter of copyright protection, the court found it “conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by copyright.” It was held that the character Detective Sam Spade did not constitute the story being told, and it was merely a vehicle for the story told and hence the use if the character by CBS did not amount to an infringement.

In Walt Disney Productions v. Air Pirates Walt Disney alleged that the use of its Disney characters by Air Pirates in underground counter cultures magazine amounted to infringement of copyright. The court acknowledged both the character delineation test and story being told test and came to a conclusion that if the characters are visually depicted, it is sufficient to be distinctly delineated and hence there is no need for the story being told test. Hence it was held that the fictional characters are subjected to copyright protection. 

In DC Comics v. Towle the plaintiff alleged that the defendant’s sale of cars which was an imitation of the Batmobile in the Batman series amounted to copyright infringement. The court while reasoning came up with a three-pronged test to determine the copyright-ability of fictional characters. 

1. “The characters must have physical as well as conceptual qualities; 
2.  They must be sufficiently delineated; 
3.  They must be especially distinctive and contain some unique elements of expression.”

India

In India the cases regarding the copyright-ability of fictional characters are very few. Some notable cases are;

The first case in India where the copyright-ability of fictional characters was recognized is V.T. Thomas v. Malayala Manorama. The court didn’t actually deal with the details regarding the criteria that are to be satisfied for fictional characters to be eligible for copyright protection. The issue in this case was who owned the copyright of the characters. Arriving at the decision to this issue the court impliedly recognized that fictional characters can be copyrighted by deciding that the characters were created by Thomas not in the course of employment and hence he has copyright over his creation.

In Raja Pocket Books v. Radha Pocket Books the plaintiff alleged that the character Nagesh by the defendant was similar to the character Nagraj in the comic series Nagraj created by him. The court awarded an injunction against the publication of the Nagesh comic series by the defendant. The court while reasoning again didn’t deal with the question whether characters are copyrighted and directly dealt with the question whether infringement has been made by comparative analysis of the two characters. The court has assumed that copyright subsists in fictional characters. 

In Star India v. Leo Burnett the plaintiff alleged that the characters in their serial Kyunki Saas Bhi Kabhi Bahu Thi  were used as a basis for tide detergent advertisement which amounted to copyright infringement of the characters. Here too the court was of the opinion that copyright subsisted in fictional characters and didn’t delve into question of copyright-ability if the characters to identify the threshold.

Arbaz Khan v. North Star Entertainment Pvt. Ltd. The plaintiff alleged that the character Chulbul Pandey in their Dabbang movies was copied by the defendant in their Gabbar Singh movie. The court while reasoning the copyright-ability of the characters stated that the Chulbul Pandey character was unique and the portrayal of that character, and also the “writing up” of that character in an underlying literary work is capable of copyright protection. It is not merely a character but was uniquely depicted and fully developed which made it capable for protection. 

In Disney Enterprises v. Pankaj Agarwal, the plaintiff alleged that the defendant made use of the character Lightning McQueen’s image in their chocolates which amounted to copyright infringement.  While reasoning, the Court stated that “it is well settled that characters can acquire the status of trademarks and can also be protected under copyright law.” They further opined, “The importance of preventing well-known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires a great amount of creativity and an innovative mind. Characters such as Lightning McQueen have transcended the movie in which they are featured, as children recognize the said characters and treat them like living humans.”

Protection of Graphical and Literary Characters

Fictional characters can be broadly differentiated into two: 1) Graphical characters 2) Literary characters. This differentiation is made because courts have applied different standards of tests for the protection of these characters. 

Graphical Characters

Graphical characters are the ones that are depicted visually by way of cartoons or any other graphical representation. In other words, visually depicted characters. The characterization and the physical appearance of the fictional characters are visually evident to the readers. Although the visually depicted character seems as an artistic work it cannot be protected as an artistic work. This is because artistic work in copyright implies a painting, drawing, sculpture, photograph etc. and the copyright law protects only the visual expression of the characters and not the character of the fictional character that has to be understood by reading or by watching the movies. Eg: if Superman character is protected as an artistic work his graphical representation like the physic of him dressed in red and blue with a cape is only capable of protection. Whereas, his characters such as an alien from Krypton who saves the world with his unique super powers and so on is not protected. Therefore, the personalities and moods of the fictional characters are not protected as an artistic work. From the above discussed cases it is apparent that courts have been lenient in granting protection for graphical characters compared to literary characters as they are distinctly delineated and can be easily visually perceived by the people. 

Literary characters 

A literary work is a subject matter of copyright protection according to section 13 of Copyright Act, 1957. Section 2(n) gives an inclusive definition and makes the subject matter wide open to fit relevant matters. Now the question arises whether the fictional characters within the literary works can be granted copyright protection independently. Only the content which is written down can be granted copyright as literary work. Whereas, the characteristics of the fictional character, remains in the mind of the readers. So it can’t fit into literary work. If copyright protection is granted, then it will restrict even an original work to make use of the fictional character. In situations where the characters are a part of literary works the analysis part is much more complicated. This is because the abstractions or deliberations created in the minds of readers are difficult to evaluate than concrete visual pictures. 

The court in Walt Disney Production v. Air Pirates opined that story being told test can be considered for protection of literary characters where the plot of the story should revolve around the fictional character. But said it is not essential for graphical characters.

In Burroughs v. Metro-Goldwyn-Mayer, Inc., while evaluating whether the Tarzan character in Burrough’s book was sufficiently delineated to receive copyright protection, the trial court did little more than describe the attributes of the character: “Tarzan is the ape-man. He is an individual closely in tune with his jungle environment, able to communicate with animals yet able to experience human emotions. He is athletic, innocent, youthful gentle and strong. He is Tarzan.” This superficial analysis illustrates the difficulty of pinpointing precisely what is required for a literary character’s delineation to meet the elusive copyrightable distinction. Although the evidence noted in the opinion does not seem unduly persuasive, the trial court concluded that Tarzan was “sufficiently delineated by the author to be copyrightable.” 

The literary characters being intangible will always make the legal analysis part a challenging process for the courts. 

Conclusion and Suggestions

Overall the concerned law in India is quite underdeveloped and courts are yet to decide clearly upon the manner in which fictional characters are granted copyright protection. Though there have been a vague and tangential references to the especially distinctive test, courts in India haven’t yet developed the law beyond the overarching and abstract concept of idea and expression. Another grave issue would be the fact that the courts in India are of the opinion that fictional characters are copyrighted per se and straight away jump into the second stage of analysis (whether infringement has been made) instead of first dealing with the question whether the fictional character deserves copyright protection.  

It is evident from the above discussed cases that the approach towards the copyright-ability of fictional characters is not the same in US and in India. US courts have first dealt with the question of copyright-ability of characters before the infringement analysis. History of cases in India regarding the copyright-ability of fictional characters gives us the idea that copyright subsists in fictional characters without any criteria or rationale whereas recent cases have concentrated in the development of the characters to grant them protection. The traces of the especially distinctive test can be seen in India recently. It should be noted that both the cases in US and in India don’t seem to have created a clear standard for the protection of literary characters although many tests were formulated which suits graphical characters. 

The category under which fictional characters are granted copyright protection is still a mystery. So far it is granted copyright protection since it is regarded as a form of expression. Let’s say fictional characters are included as a separate subject matter of protection in the legislation. This confirms the copyright protection available to characters yet again it leaves the question of standards of protection to the courts to decide because if all the characters are granted copyright protection it simply provides over protection even for mere stock characters (Eg: The character Raju from Chota Bheem cartoon series is made use in another cartoon series called Mighty Raju. If all the characters are copyrighted, then this would have been an infringement). A uniform standard should be followed by the courts to grant copyright protection to fictional characters. I would personally recommend the three-pronged test put forth by the court in DC Comics v. Towle case.   

Bibliography

BIBLIOGRAPHY

Primary Sources

1. Copyright Act, 1957
2. Berne Convention for the Protection of Literary and Artistic Works

Secondary Sources

1. Gregory S. Schienke, The Spawn of Learned Hand-A Reexamination of Copyright Protection and Fictional Characters: How Distinctly Delineated Must the Story Be Told?, 9 Intellectual Property L. Rev. 63 (2005).

  Available at: http://scholarship.law.marquette.edu/iplr/vol9/iss1/3

2. David B. Feldmant, Finding a Home for Fictional Characters: A Proposal for Change in Copyright Protection
3. JELIS SUBHAN, THE PROTECTION OF FICTIONAL CHARACTERS (2014) SSRN Electronic Journal DOI: 10.2139/ssrn.2973715
4. Foley, Kathryn M., “Protecting Fictional Characters: Defining the Elusive Trademark-    Copyright Divide Note” (2009). Connecticut Law Review 20.
5. Sourav Kanti De Biswas, “Copyrightability of characters,” Journal of Intellectual Property Rights Vol. 9, March 2004, pp 148-156.
6. Leslie A. Kurtz, The Independent Legal Lives of Fictional Characters, 1986 WIS. L. REV. 429, 438 (1986).
7. Jasmina Zecevic, Distinctly Delineated Fictional Characters that Constitute the Story Being Told: Who are They and Do They Deserve Independent Copyright Protection, 8 VAND. J. ENT. L. & PRAC. 365, 370 (2006).
8. Mark Bartholomew, Protecting the Performers: Setting a New Standard for Character Copyrightability, 41 SANTA CLARA L. REV. 341, 347 (2001).

Leslie A. Kurtz, The Methuselah Factor: When Characters Outlive Their Copyrights, 11 U. MIAMI ENT. & SPORTS L. REV. 437, 438–39 (1994).