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May 06, 2014

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Fictional Characters And Copyright Law


- Anand Desai, Managing Partner [ DSK Legal ]
- Shruti Chopra, Associate [ DSK Legal ]

Anand Desai & Shruti Chopra.jpg

India has one of the largest film and television industries in the world today. With over 10001 feature films released annually and with over 8422 television channels airing fiction and nonfiction shows, many of them dailies in nature, fallouts between artistes and producers and replacement of artistes performing characters in such films and television shows is a regular phenomenon. Often, characters gain such popularity that the artiste reprising the character and the character itself become synonymous.

In such cases, the rights owner i.e. generally the producer of such film or television show exploits the character by way of character merchandising, licensing the characteristic features etc., while the artistes continue to perform in the garb of the character or with its mannerisms in other television shows, award functions, blurbs on the radio, in advertisements etc. Therefore, the rights of the producer and the artiste remain intertwined, blurring the lines between them.

While India boasts of a diverse, distinct and fast growing film and television industry, comparable to more developed countries of the world, Indian law relating to the characters, especially fictional characters, of a film or a television show, which are in essence responsible for taking the story forward or 'grabbing the eyeballs' of the viewer, remains untested.

Recently, a leading television channel which is also the producer of the television show in question, issued a public notice, when what seemed like a regular fallout between an actor who had come to play a popular character on a leading comedy show on Indian television and the production house took the turn of launching a debate on the ownership of the rights to a fictional character. The public notice categorically stated that the sole, exclusive, absolute and unlimited ownership rights on all the intellectual property rights of the artiste associated with the television show including the rights in the format of the show, any adaptation thereof, or of the script and all other versions of the television show including any subtitled, dubbed or altered/ amended versions or any characters or adaptations thereof including the character played by the artiste in question belong to the television channel/producers alone3. In return, the artiste claimed that the character and its mannerisms were all due to the inputs and portrayal by the artiste and hence he remained free to exploit it as well.

The legal protection of a fictional character is generally governed by name, appearance and physical attributes and personality traits i.e. the characterisation.4 The complexity of legal protection afforded to fictional characters and ownership of the rights that rest in fictional characters is examined under Indian copyright law, trademark law, and the right of publicity.

A. Copyright Law


Copyright protection subsists in original works of authorship, wherein no protection can be granted to an idea but only to the expression of the idea in a tangible medium.5 The owner is granted the exclusive right to reproduce the work in any material form, issue copies of the work to the public, perform or communicate the work to the public, make or include in a cinematograph film the work, and make a translation or adaptation of the work.6

Under the Copyright Act, 1957, a cinematograph film is defined as "any work of visual recording and includes a sound recording accompanying such visual recording".7 While the copyright in a cinematograph film i.e. a film or television show vests in the producer of the film or television show in question8, if the character is first developed as a literary or artistic work independent of such cinematograph film, outside the employment of the producer, and is adequately distinct so as to be granted copyright protection, it is the creator therein who is said to have the copyright protection over such characters.9 However, the copyright in the cinematograph film using such character i.e. film or television show as the case may be, would rest with the producer.10

However, whether a fictional character independent of the cinematograph film is granted copyright protection and, if so, who the owner of the copyright is, remains a grey area. With respect to fictional characters, the courts in the United States have continued to employ two tests for deciphering the copyrightability of fictional characters.

  • The "Especially Distinctive" or "Character Delineation" test

    This test states that when the character has been developed to such an extent that it can be delineated from the story itself, protection under copyright law may be granted. It is based on the premise that the less developed the characters, the less they can be copyrighted; and that is the penalty an author must bear for marking them too indistinctly.11 Further, where the character has come to be identified with specific character traits ranging from his speaking mannerisms to his physical characteristics, copyright protection is required to be granted to such characters.12
  • The "Story Being Told" test

    When the character is such an integral and central part of the story that it is the character itself which constitutes the story being told, copyright protection to the fictional character can be granted. However, if the character is merely a chessman in the game of telling the story he is not within the area of protection afforded by copyright law.13

While the courts in India have not had many occasions to decipher the extent of copyright protection afforded to fictional characters independent of the copyright in the cinematograph film, in context of the above, it can be inferred that if the character can be delineated from the cinematograph film by way of specific character traits that have come to be recognised, and/or the character itself is the basis of the story of the cinematograph film, then copyright protection to the fictional character may be granted.

The Delhi High Court in Star India (P) Ltd. v. Leo Burnett (India) (P), while discussing the protection granted to fictional characters and the right of exploiting the same by way of character merchandising stated that "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. 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. 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. 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."14

With respect to whether the artiste performing the character is granted any copyright ownership in relation to his performance of the character, the courts have held that “there is no 'work' in the cine artiste's performance which is protected by the Act. In the view that we have taken of the definition of "artistic work", "dramatic work" and "cinematograph film", it would appear that the Copyright Act, 1957, does not recognise the performance of an actor as 'work' which is protected by the Copyright Act".15 The law however acknowledges that it is the artiste who performs the role of the character in a cinematograph film and makes it identifiable to the public at large and therefore the Copyright Act, 1957 vests in the artiste certain rights known as moral rights of the performer which give him the right to claim to be identified as the performer of his performance and to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance which would be prejudicial to his reputation.16

Lastly, with respect to the ownership in the fictional character, it is important to note Section 38A (2) of the Copyright Act, 1957 which states that "Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film, he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer's right in the same film: Provided that, notwithstanding anything contained in this subsection, the performer shall be entitled for royalties in case of making of the performances for commercial use." Therefore, with respect to a fictional character in a cinematograph film, it is the producer who will be the owner of the copyright therein, if there is a written agreement to that effect. However, an artiste’s right to receive royalty for his portrayal of the character in the cinematograph film, cannot be assigned or waived by contract or otherwise.

B. Trademark Law and Passing Off


Trademark is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.17 Trademark law can be used to protect distinct names, identifiable traits, sounds, phrases associated with the character etc. of a fictional character, if the same are capable of being represented graphically and distinguishing goods and/or services being provided.

The owner of a trademark, under Indian law, has the exclusive ownership rights over the same, including the right to commercially exploit it, and to further license the trademark as a means of commercial exploitation. Where a fictional character has been granted such trademark protection and acquired such goodwill where the character has come to be identifiable in the minds of the public, and be associated with that particular character itself, the owner of the trademark has the exclusive right to benefit from the use of the character on goods and services.

For a fictional character to be granted this trademark protection, it is essential that the character acquire a secondary meaning, and acquire distinctiveness. Further, any claim of infringement must show that use of such fictional character, or its protected elements, if not restrained, would cause a likelihood of confusion, thereby diluting the commercial viability, reputation or brand equity of the trademark in question.

Indian courts have continuously upheld this right granted to characters, when a likelihood of confusion can be determined, especially where such trademark infringement is with respect to the use of the fictional character on goods or services. While discussing the use of "HariPuttar" as the name of cinematograph film, and whether the trademark protection granted to the character and name "Harry Potter" was enough to grant an injunction, holding that no likelihood of confusion existed it stated that “even assuming there is any structural or phonetic similarity in the words "Harry Potter" and "HariPuttar", what has to be borne in mind is that the Harry Potter films are targeted to meet the entertainment needs of an elite and exclusive audience - the cognoscenti - an audience able to discern the difference between a film based on a Harry Potter book on the one hand and a film which is a Punjabi comedy on the other, the chief protagonist of which is Hariprasad Dhoonda. It is not the case of a consumer good or product, which stands on an entirely different footing. Necessarily, the yardstick must also differ, bearing in mind the fact that a consumer product such as a soap or even a pharmaceutical product may be purchased by an unwary purchaser or even an illiterate one, but the possibility of an unlettered audience viewing a HARRY POTTER movie are remote, to say the least. To put it differently, an illiterate or semiliterate movie viewer, in case he ventures to see a film by the name of Hari Puttar, would never be able to relate the same with a Harry Potter film or book. Conversely, an educated person who has poured over or even browsed through a book on Harry Potter or viewed a Harry Potter film, is not likely to be misled."18

Therefore, it can be ascertained that when a fictional character has acquired such distinctiveness either by its name, characteristics or any other identifiable feature, trademark protection can be granted. Further, the protection can be upheld if a likelihood of confusion can be shown to exist or the defendant, as the case may be, is passing off the protected fictional character as his own.

C. Right of Publicity


The Right of Publicity, a term coined in Haelan Laboratories Inc. v. Topps Chewing Gum Inc.19 can be defined as the right to commercially exploit one’s characteristics, reputation and goodwill attached to a person’s image. Therefore, a claim of right to publicity can arise when one appropriates the commercial value of a person’s identity by using, without the consent of the person, his name, likeness or any other indices of identity for purposes of trade. One of the main requirements of protection under the doctrine of right of publicity is that of being identifiable. The misappropriation of a celebrity’s personality, characteristic mannerisms, or likeness should be identifiable by more than de minimis number of people.20

"The distinctive aspect of the common law right of publicity is that it recognises the commercial value of the picture or representation of a prominent person or performer, and protects his proprietary interest in the profitability of his public reputation or persona".21

While, as discussed above, the legal protection granted to a fictional character as expressed in a cinematograph film, is with the author of the cinematograph film i.e. the producer, certain times, it is the likeness of the artiste, which makes the character commercially viable and exploitable. When the artiste and the fictional character become indistinguishable i.e. in the minds of the public, the artiste is the character and the character is the artiste, the common law of right of publicity is recognised. In such cases while the artiste has no rights to the character, the artiste can argue that the exploitation of the character is such that the creative, the copyright protected elements of the characters is not being exploited but it is the physical likeness to the artiste that has commercial value to the copyright owner and the exploitation of the same can be pre-empted by the artistes right of publicity.22

Further, India is one of the few jurisdictions that allows the artise to waive/grant his right of publicity by contract. The contract can include clauses granting character merchandising rights and waiving one’s right of publicity explicitly by authorising the producer/copyright owner or any third person to make use of the artiste’s name, personality, likeness, voice etc. These rights are thus transferable and are generally used as an individual’s right to control and profit from the commercial use of his or her name, likeness and persona.

Conclusion


While there exist various provisions under law which allow for protection to fictional characters in cinematograph films, there is a lacuna in the law with regards to who owns the right to exploit the character. Under the Copyright Act, 1957, the ownership of the copyright in a cinematograph film vests with the producer along with the right to commercially exploit the cinematograph film, and any part therein. However, due to the lack of classification under the Copyright Act, 1957 of the work of an actor in a cinematograph film as literary, dramatic or artistic, there is a lack of clarity regarding how the courts would rule if the protection granted to a fictional character became contentious vis-à-vis an artiste’s right of publicity.

The courts while deciding the question of safeguarding the copyright protection afforded to a fictional character vis-à-vis an artiste’s right of publicity could examine (i) whether the exploitation of the fictional character by the producer is recalling the image, persona, likeness or identity of the artiste to such an extent that a reasonable person is unable to distinguish between the fictional character and the artiste who played the character in the cinematograph film and (ii) whether the exploitation of the character by the producer is adversely affecting the economic value that the artiste may have gained by playing the fictional character.

Footnote:
1 Central Board of Film Certification, Ministry of Information & Broadcasting,Annual Report 2011, available at http://cbfcindia.gov.in/html/uniquepage. aspx?unique_page_id=30; 2 IndianTelevision.com,India has 44.2 mn DTH subs, 825 channels: Trai dated April 14, 2012, available at http://www. indiantelevision.com/headlines/y2k12/apr/apr129.php; 3 The Indian Express, Don’t copy 'Gutthi', warn 'Comedy Nights With Kapil' producers dated November 20, 2013, available at http://www. indianexpress.com/news/dont-copy-gutthi-warn-comedy-nights-with-kapil-producers/1197206/; 4 David B Feldman, Finding a Home for Fictional Characters: A proposal for change in copyright protection, 78 California Law Review, 687 (1930); 5 R.G. Anand v. Delux Films, AIR 1978 SC 1613; 6 Section 14 of the Copyright Act, 1957; 7 Section 2(f) of the Copyright Act, 1957; 8 Section 2(d)(v) of the Copyright Act, 1957; 9 Malayala Manorama v. V T Thomas, AIR 1989 Ker 49; 10 Id.; 11 Nichols v. Universal Pictures Corporation, 45 F.(2d) 119 (1930) at Pg. 121; 12 Anderson v. Stallone, 11 USPQ2D 1161 (C.D. Cal. 1989); 13 Warner Bros. Pictures Inc. v. Columbia Broadcasting System, 216 F.2d 946 (9th Cir. 1954); 14 2003(27) PTC81(Bom); 15 Fortune Films v. Dev Anand, AIR 1979 Bom 17; 16 Section 38B of the Copyright Act, 1957; 17 Section 2(zb) of the Trade Marks Act, 1999 18 Warner Bros. Entertainment Inc. and Anr. vs. HarinderKohli and Ors.,2008(38)PTC185(Del); 19 202 F.2d 866 (2d Cir.); 20 Sandoval v. New Cinema Corp., 147 F.3d 215 (2nd Cir. 1998); 21 D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors, MANU/DE/2043/2010; 22 Wendt v. Host International, 125 F.3d 806

Disclaimer - The views expressed in this article are the personal views of the authors and are purely informative in nature..

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