India: The Burgeoning Saga Of Character Merchandising Instances And Legalities

Last Updated: 22 June 2016
Article by Vikrant Rana
Most Read Contributor in India, September 2018

Indian Daily, the Times of India has recently reported that senior and famous comic-artist of India, Narayan Debnath who has created some popular cartoon characters like "Handa Bhonda", "Batul", "Nonte Phonte", detective Koushik Roy etc. has sought copyright protection of the cartoon characters created by him. Reportedly several platforms have misused the artist's characters thereby infringing copyright vesting in these characters originally created by Debnath.i

Aggrieved by the continuous copy and misuse of his creations, the artist has now decided to secure copyright protection over three of his characters namely "Handa Bhonda", "Batul", and "Nonte Phonte". The Times of India quotes the artist who states that "I always knew these were my creations, but now there will be a legal stamp on it."

This is not the first instance when characters or comic characters have been misused by third parties for their own benefit. We often come across bags, lunch boxes, gift items, stationery, apparels, utensils, balloons and toys decorated with cartoon characters like Mickey Mouse, Donald Duck, Disney Princess, Chacha Choudhary and Chotta Bheem which are not flaunted by kids alone but even the elder ones love wearing t-shirts showcasing comic characters. However, while purchasing these items and merrily using them it never strikes us that the use of these comic characters without the creator's permission is infringing the creator's IP rights. This commercialization of characters, whether real or fictional is also termed as "character merchandising".

What constitutes "character merchandising"?

In the case of Star India Pvt. Limited v. Leo Brunette (India) Privateii, the Bombay High Court observed that character merchandising involved exploitation of fictional characters or fame of celebrities by licensing such famous fictional characters to others. The Court further remarked that for character merchandising it was necessary that to be merchandised the character must have gained some public recognition and achieved a form of independent life and public recognition for itself and only then can such character be moved into the area of character merchandising.

Character Merchandising and Trademark Law

Comic characters can be protected as "trademark" under the Trademark Act, 1999 as the scope of a trademark under the Act is wide enough and entails that anything which is capable of being graphically represented and able of distinguishing goods and services of different person can be registered as a trademark.iii Hence, comic characters even in two- dimensional and three-dimensional forms can be covered under the Act.

Moreover, the names of comic characters can also be protected under the Act. Hence, to prevent misuse by third parties the original authors or creators have the option of protecting their creation under the Trademark Act as well. (if any no. of trademarks or examples of marks bearing character names can be retrieved from Trademark search, then please incorporate them here).

Character Merchandising and Copyright Law

Relevant provisions for protection of comic characters under the Copyright Act, 1957 are reproduced herein below.

Section 2(a)(iii) of the Act provides that in relation to a literary or dramatic work, any abridgement of the work or any version of the work in which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book, or in a newspaper, magazine or similar periodical;

Section 2(c)(i)- a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

Section 13 of the Act provides that copyright subsists in "original literary work"

Section 51 of the Act provides for the infringement of copyright and entails that a copyright is infringed when any person does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright.

As per the Copyright Law, copyright vests in a person the moment a work is created. Thus, prima facie copyright registration is not mandatory and an action against any infringement can be initiated even without registration. However, registration of work under the Act is deemed advisable as the Certificate of Registration serves as a proof in a Court of Law.

Here it would be relevant to discuss the case of Raja Pocket Books v. Radha Pocket Booksiv, wherein the Plaintiff sought temporary injunction against Defendant for manufacturing apparels bearing the Plaintiff's character "Nagraj" under the name "Nagesh". The Plaintiff contended that copyright in the comic series Nagraj vested in it and the Defendant's act of introducing a comic series bearing a closely resembling character as well as title phonetically similar to "Nagraj" amounted to infringement.

The Court while making an order in favour of Plaintiff and referring the Apex Court's decision in the case of R.G. Anand v. M/s Delux Films & Ors.v opined that:

  • There could be no copyright in an idea, subject matter, themes or plot of legendry facts;
  • Copyright will be confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work;
  • Where same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur;
  • Test of similarity- whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright;

In cases of copyright, the term of right assumes significant consideration as a copyright in a work is not for an indefinite period but does come with a stipulated duration i.e. within the lifetime of the author until 60 years from the beginning of the calendar year next following the year in which the author diesvi, which implies that pursuant to death of the creator and after 60 years from the date of death the characters will be in the public domain open to use without the author's permission or license.

Licensing of Fictional Characters

The licensing of fictional or comic characters has emerged as one of the most sought after strategy to commercially exploit a creation and a profitable way for licensees to market their products. Reportedly, the famous Marvel Comics has leveraged the commercial value of its superheroes through a series of profitable licensing agreements.vii The business of character merchandising, has become very well known in our present times and everyone who has a character, whether real or fictional, to exploit, does so by the grant of licences to people who wish to use the name of the real or fictional character.viii

For example, in India Bonjour Retail has secured license of fictional/comic characters like Doraemon, Hot wheels, Hello Kitty, Barbie and Ben 10 and is manufacturing socks with the images of said characters. Raj Kumar Jain, the MD of Bonjour Retail with reference to licensing states that licensing of fictional characters from the IP holders gives it an edge over others.ix

Conclusion

It cannot be denied that comic characters and IP rights are intrinsically woven together and to reap the best benefits of creation it's advisable for the creators to register their ideas under the relevant IP laws. The markets today are flooded with items bearing characters, celebrity or comic, hence it is essential that IP rights are safely secured so that this burgeoning misuse of characters by wrongful perpetrators are avoided.

Footnotes

i http://timesofindia.indiatimes.com/city/kolkata/cartoon-legend-pushes-copyright/articleshow/52701041.cms

ii 2003 (2) BomCR 655

iii Section 2(zb) of Trademark Act, 1999

iv [1997(40) DRJ 791]

v AIR 1978 SC 1613

vi Section 22 of the Act

vii http://www.wipo.int/wipo_magazine/en/2012/03/article_0005.html

viii Tavener Rutledge Limited v. Trexapalm Limited (1975)FSR 479

ix http://retail.franchiseindia.com/interview/retail-people/profiles/Bonjour-plans-to-increase-manufacturing-capacity.i474/  

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