Characters: Unique Copyrights

Mickey Mouse, Batman, Sherlock Holmes, and Charlie Chaplin- we have all grown up surrounded by characters, animated as well as fictional. But have we considered the immense intellectual property value that these characters carry with them? These characters carry brand value and are strong assets for the companies and production houses that own the rights in them. Needless to say therefore that copyright protection is essential for such characters and thus they can be categorized as unique copyrights, per se.

Section 13 of the Indian Copyright Act, 1957 categorizes the types of “works” which can claim copyright protection. This includes “literary works”, “dramatic works”, “artistic works” and “cinematographic films” and most of the times scripts and performances by characters are protected under this section through one of these categories. However, what about the unique character traits and elements that build upon a character? What about characters that continue to exist beyond a single film or series? Sometimes, new attributes are attached to a character after every book or film. As characters develop over series or sequels, it becomes necessary to recognize them as independently copyrightable works.

The Indian Scenario

In 2013, Viacom18 sought to claim ownership of a character from their show by issuing a public notice of the same when the artist was exiting the show to start a new show of his own. Therefore, it seems common practice for studios and producers to claim ownership over characters. And why should they not? With so much commercial value attached, it is almost essential for intellectual property law to encompass such elements.

The issue of copyrightability of characters arose in the case of Star India Private Limited v. Leo Burnett[1] where the Court observed what amounts to “character merchandising” and held 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.”

In the case of Arbaaz Khan v. North Star Entertainment Pvt. Ltd.[2], the question of the copyrightability of a character arose and the Court stated that, “…as to the general principle that the character is unique and the portrayal of that character, as also the “writing up” of that character in an underlying literary work is capable of protection is something that I think I can safely accept. It would be, I think, stretching it too far to say that such a fully developed and uniquely depicted character because it is ‘merely a character’, falls wholly outside the realm of all protection.” Therefore, from this decision, the willingness of Indian Courts to recognize the copyrightability of unique characters can be inferred. With that being said, what the Indian scenario lacks now is a comprehensive test to conduct an analysis as to whether a character is unique enough to obtain copyright protection. It is also worth noting that it is common knowledge that stock characters such as vampires or aliens cannot be copyrightable.

United States’ Approach

In the United States, it has been established through case law that a collection of characteristics and character traits may make a fictional character an independently copyrightable element. The courts have come up with two tests; “the story being told test” and “distinctive delineation test” in this regard.

In the case of MGM v. Honda[3], it was established that the collection of characteristics that add up to make the James Bond character are copyrightable, thus establishing that the James Bond character is an independently copyrightable element. In this case, it was observed that the fact that a lot of different actors have played the role of James Bond shows that James Bond is a unique character with special characteristics. For instance, James Bond always wears a tuxedo and has a certain aura of suave and sophistication about him. He is also known for his strength and agility and these characteristics about him have been consistently identifiable through different James Bond films and even actors.

As per the “story being told test” which was introduced in the case of Warner Bros. v. CBS[4], the Court held that if the character is the story being told and the character has something independently identifiable about it, then it can be copyrightable. Furthermore, the “distinctive delineation test” was introduced in the case of Nichols v. Universal Pictures[5] where the Court held that a character can be independently copyrightable, and this will depend on the continuum of how developed the character is. In the case of Warner Bros. v. ABC[6], the Court elaborated on the distinctive delineation test and it was held that the Greatest American Hero character was created by the Defendants to evoke the same feelings as that of Superman, the character owned by the Plaintiff.

Finally, in the case of DC Comics v. Towle[7], the Court applied a three-part test to analyze whether a character is copyrightable and stated that it should be noted whether there are any (1) physical and conceptual similarities, (2) consistently identifiable character traits and attributes, making the character sufficiently delineated and (3) any special and unique elements.

The road ahead:

Given the fact that fictional characters can take many forms, such as graphic animated characters and literary characters who are created in novels or books, there is a need for Indian Courts to come up with a comprehensive test in this area of the law. With the advent of technology and the changing times, the traditional notions of “works” that could fall within the different categories in order to claim protection are now evolving and the law needs to be updated to reflect upon this change as well.

In India, as per the idea versus expression doctrine, until and unless an idea is not expressed, it shall not be copyrightable. In the case of Raja Pocket Books v. Radha Pocket Books[8], the Plaintiff alleged that the comic character “Nagraj” was copied by the Defendants who created a similar character “Nagesh”. The Court held in favor of the Plaintiff because not only the idea but also the expression (that is the way the character was depicted) was copied. Therefore, it can be seen that although courts seem willing to grant some degree of protection to characters, there is still some uncertainty in this area. Characters do not fall within any of the categories of “works” under section 13 and there is a need to have some more clarity on these categories.

Conclusion

In conclusion, while reform on the law in this area is needed, given the current scenario, it seems as though the best approach to take would be to obtain licenses from the owners of such copyrights prior to use. Apart from claiming rights in a copyrightable work, a plaintiff must also prove infringement and in order to do so, it must be proved that the expression and not just the idea has been copied. It should be noted that infringement can be established by proving “substantial similarities” between both the works. While it is understandable that courts may be apprehensive towards providing protection to such unique “works”, if a work is sufficiently distinctive and has unique recognizable characteristics, it will be granted protection even under the current position. The economic importance of character merchandising has also been recognized by the Indian courts and it seems only a matter of time that a comprehensive test to establish copyrightability of characters will also be introduced following the approach taken by the United States.

For any queries, please write to the author, Ms. Vrinda Sehgal at vrinda@iprattorneys.com.

[1] Star India Private Limited v. Leo Burnett 2003 (2) BomCR 655 [2] Arbaaz Khan v. Northstar Entertainment Pvt. Ltd. (Suit (L) No. 301 of 2016) [3] MGM v. Honda (C.D. Cal. 1995) [4] Warner Bros. v. CBS (9th Cir. 1954) [5] Nichols v. Universal Pictures (2nd Cir. 1930) [6] Warner Bros. v. ABC (2d Cir. 1983) [7] DC Comics v. Towle (9th Cir. 2015) [8] Raja Pocket Books v. Radha Pocket Books 1997 (40) DRJ 791)