Article by Martand Nemana & Rahul Gupta*
The information age has made traditional IP protection for literary characters inadequate. Creators now find their characters dominating the cultural space as never before, faced with the challenge of protecting their work from infringement and controlling the depiction of their creations, the regular copy right regime seems inadequate to give these creators their due. This lacuna is partly filled by the expansion of trademark law and as a subset of that, the common law remedy of passing off.
This note will deal with a few distinct questions in the context of the IP regime in India. The first, whether a copyright can subsist in character by itself, outside the bounds of the form it's depicted, the answer to which and second, what is the extent of the protection one can expect when faced with a third-party's unlawful depiction of a character. And finally a proposed way forward.
Copyrights subsist in the original work of any author. It is of note to remember that a copyright does not exist in the idea per se but rather the mode of expression of that particular idea. Further copyrights cannot be said to exist in ideas which are common place or generic. With this in mind, reference should be made to the "modicum of creativity doctrine" and the "sweat of the brow doctrine" these tests postulate that a copyright would exist in work which involves conscious effort on part of the creator. It follows that a simple depiction a character that exists in the public mind would by itself not in the regular course be eligible for copyright protection.
Reference may also be made to the Scène à faire doctrine. This doctrine posits that any genre specific trope, theme or character cannot be made a subject matter of a copyright. In the context of literary characters this doctrine would suggest a vague collection of qualities, such as a character that drinks too much or a character that shows integrity would in absence of any other factors not be subject to any copyright protection. This doctrine disqualifies stock characters from copyright protection.
A character can be defined as an aggregation of qualities specified by the creator. It seems reasonable to assert as the court in DC v. Bruns Publication Inc (1940) did that characters which have greater elements of unique expression have a higher likelihood to receive copyright protection, in as much as they have physical as well as conceptual features.
It follows as was held in Nichols v. Universal (1930) "The less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinctly."
The standard that emerges on the collective analysis of these authorities is whether or not the character is sufficiently delineated or rather sufficiently unique in its essence. It could be argued as was that Nichols v. Universal (Supra) that a story which involves characters which are simple stereotypes such as Jew's and Irishmen are not worthy of copyright protection as they do not distinguish themselves sufficiently.
STORY BEING TOLD TEST
The above test had a few inherent limitations the uniqueness of a character is highly subjective and would depend greatly person to person. This lacuna was filled by the story being told test.
It was first stated in WB v. Columbia Broadcasting System (1954) The test postulates that a character may copyrightable if it in a meaningful way constitutes the "vehicle of the story" as opposed to a simple "chessman" a chessman refers simply to the pieces on the chess board. This implies that the story must be centered on the character in order for it to be copyrightable.
A recent interpretation of this test in DC v. Towel (2015) alluded to in this regard the court found that the "Bat-mobile" from the Batman comics was a sufficiently distinct element from the original works and accordingly a copyrightable interest lay in it. The court reasoned that the existence of persistent qualities and traits had given the Bat mobile a distinctive and iconic identity so as to warrant copyright protection.
The judicial recognition of copyright existing in literary characters was highlighted in Arbaaz Khan v. North Star entertainment Pvt. ltd (2016) by the Bombay HC. The court while examining whether a copyright would subsist in one "Chulbul Pandey" from the Dhabang franchise opined "As to the general principal 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"
The 2016 Bombay HC decision examines WB v. Columbia Broadcasting systems (supra), in a sense importing the essential distinctiveness standard.
The question of what makes a character capable of protection under the copyright regime was discussed in Start India Pvt. Ltd v. Leo Burnett (2002) the court opined "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"
From the above discussion it seems sufficient to note that copyrights can subsist in characters outside the scope of the story if the characters are in a sense unique. Though the exact parameters required in conclusively determining whether a character deserves copyright protection or not is not clear, an amalgamation of both tests would seem appropriate to establish the copyrightability.
PROTECTION FROM PASSING OFF
Moving to the second leg of analysis, what is the extent of protection that can be given to such works against a third party who is passing off his products under the guise of the literary character? This can also be called unlawful character merchandising.
Recently the Delhi HC in WWE v. Savio Fernandes (2016) granted a permanent injunction to the plaintiffs where the defendant was found to not only be infringing in the WWE trademark but also was found to be using the likeness of the wrestlers themselves in their products. The court found the defendant guilty of passing off. The court found that the goods were bound to cause confusion in the mind of the public
The court held "The misrepresentation by the defendants is done in a manner that in all probability any visitor to the defendant's web page or stores will be induced to believe that the defendants have a direct nexus or affiliation with the plaintiff; and/or the plaintiff has licensed its trademark "WWE" to the defendants... (Words omitted) In view thereof the defendants are passing off their goods as those of the plaintiff."
The court also specifically recognized the copyright subsisting in the wrestlers, the personas of whom can be perhaps akin to literary character
"7. All the wrestling events of the plaintiff feature professional wrestlers having distinctive appearances and carrying fictitious and unique names which are evocative of the same image sought to be projected by the characters. The combination of both name and image, have the effect of making an indelible impression in the mind of the viewer. Thus, for instance, there are wrestlers with names such as JOHN CENA, RANDY ORTON, THE ROCK, CM PUNK, UNDERTAKER, SHAWN MICHAELS, THE GREAT KHALI, REY MYSTERIO, HHH, and EDGE... (Words omitted). Plaintiff being the creator of the said characters holds United States copyright registrations in the talent images of these characters.
8.... (Words omitted) Some of the fictitious names of the wrestlers have also been registered as trademarks by the plaintiff in relation to various goods in different classes in the USA and India."
In Chorion Rights Ltd v. Ishan Apparel (2010) while examining a case where the defendants were producing and selling Noddy apparel despite Chorion holding the worldwide trademark to the name and character. The defendants contested that they had been using the mark since earlier than the defendant. The court noted that the despite the copyright persisting in character sufficient material to prove prior use by the plaintiffs was not got on record.
"It is settled law in India, that when contesting parties hold trademark registrations, their rights are to be determined on the basis of principles applicable for passing off, the most important component of which is establishing prior use of the mark. The plaintiff has not adduced any evidence to show prior user in India, it is even not the prior registered owner of the said trademark in India....(words omitted) .In this case the defendant has not only established prior user, at least from 1995, but also prior registration of the mark. ... (words omitted) the Court is not unmindful of the fact that there is not even a shred of evidence disclosing sales figures, as to importation of such books, authorized stock lists, periodicity of such sales, advertisements, areas where such sales took place, and their volume,....(words omitted) NODDY could be copyrightable, yet the plaintiff has desisted from claiming copyright infringement. In these circumstances, the Court's subjective perceptions - in the absence of objective materials, or even pleadings, cannot metamorphosis into "judicial notice"; such inferences would be dangerous, and undermine the process of judicial decision making".
This decision serves to highlight one of the things creators should be mindful of while pursuing an action of passing off.
THE WAY FORWARD
These recent cases on character merchandising are a litmus test to the extent of protection one can expect when faced with the issue of unlawful usage by a third party. These decisions while showcasing the existence of protection are tied down by the conventional standards and tests for a regular action of passing off. These standards are stringent are liable to not be met due to technical considerations as evidenced b the case above. The right of publicity, a unique strain of IP, in this author's opinion shows the way forward.
It is proposed that in a very direct sense literary characters have attained celebrity status. This argument takes up special relevance in a world where "The Avengers" and its hosts of characters are not only one of the biggest films of all time but the characters enjoy a unprecedented popularity .The owners of those characters should be afforded the same degree of protections which are made available to celebrities.
If the character is unique and distinct both within the context of the story and outside of it, either by virtue of repeated depictions or iconic status , then it is safe to presume that such a character would be eligible for copyright protection.
Trademarks can subsist in characters and are eligible to bring suits of passing off where there likeness has been unlawfully appropriated.
The current regime though not perfect does afford some protection to the creators of literary characters but the development of this protection is by no means complete. Finally, the right of publicity given to prominent performers perhaps illuminates the way forward for the development of a strong IP protection regime for both creators and characters.
* Law Intern studying in final year, Symbiosis Law School, Pune
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