This article has been written by Samridhi Prakash from Symbiosis Law School, Noida.
We have all heard of Spiderman, Archibald, Phineas & Ferb, Donald Duck, Tom & Jerry, Oswald, Doraemon and other internationally known cartoon characters, as well as our own local indigenously created fictitious characters like Chota Bheem and Jaggu, Tenali Raman, Suppandi, Kalia the Crow, Mowgli, Motu Patlu and others. Graphic characters and fictional characters are the two types of characters that can be distinguished. A graphic character can be represented by a cartoon or other graphic image. Readers can see the physical look and characterization of the characters. A fictitious figure, on the other hand, is a word picture whose physical form and characterization are created in the reader’s mind. Reading about a character through the pages of a book, rather than just a single paragraph or sentence, inspires such imagination. As a result, the reader has no concrete physical sense of who the character is. Because the courts have provided varying levels of protection by laying down distinct tests to evaluate if a character can be granted copyright protection, it is necessary to distinguish them and deal with them independently.
EXPLOITATION OF CARTOON CHARACTERS
Characters may easily transition from one medium to another and even take on new dimensions. For instance, a cartoon character who first appeared in a comic book and then became popular may be widely commercialized in conjunction with a wide range of products and services, resulting in numerous revenue-generating opportunities as can be seen with the Avenger series. Online clothing apparel, packaging items, school bags, lunch boxes, footballs, hand wash, etc.- almost everything today is advertised with the cartoon character as the brand ambassador to lure the attention of the masses.
PROTECTION OF GRAPHIC CARTOON CHARACTERS
As an ‘artistic work,’ a graphic character cannot be granted copyright protection (artistic work includes a drawing, painting, photograph, sculpture, and so on) Courts have been more indulgent in preserving characters with tangible visual characteristics than in defending literary characters whose image is completely based on human mental abstractions. The copyright law can only preserve the creature’s visual expression as shown in drawings, but its character and personality develop over time as the creator creates new episodes. Because it can only be understood by the human mind, it lacks visual expression. As a result, the character’s moods and personalities are not protected under copyright law as ‘artistic work’.
PROTECTION OF FICTIONAL CARTOON CHARACTERS
David B Feldman simply wrote:
“A fictional character has three identifiable and legally significant components: its name, its physical or visual appearance, and its physical attributes and personality traits or “Characterization.”
In terms of intellectual property, a literary work is entitled to protection. It’s unclear if this protection should be extended to the work’s fictional characters in addition to the work itself. If protection is granted, even a unique literary work would be prohibited from using the same character in its plot.
PROTECTION UNDER INDIAN LAWS
Copyright Act, 1957
Only original literary, artistic, musical, dramatic works, sound recordings, and cinematographic films are protected under Section 13 of the Copyright Act of 1957. Because the Act only protects an original work, not a concept, a cartoon character cannot automatically be protected as an ‘artistic creation.’ In India, copyright registration is not required for the enforcement of rights. If the work was made in India, however, copyright registration is encouraged because it provides proof of ownership for rights enforcement. In addition, if the work was created in a country other than India that is a signatory to the Berne Convention or the Universal Copyright Convention, the registration of copyright in any of these countries will help establish ownership of copyright works.
Trademark Act, 1999
Section 2 of this Act provides protection to cartoon characters, logos, marks etc. as a mark. While a cartoon character’s copyright would ultimately expire (60 years after the creator’s death) and pass into the public domain, a trademark does not have an expiration date and can last perpetually. In contrast to copyright protection, trademark law protects not just the cartoon character, but also the character’s name and likeness. In India, just as it is not required to register a copyright, neither is it required to register a trademark. Registration is said to be advisable as having a registration gives the owner of the mark more protection and decreases the burden of proving repute.
TESTS DEVELOPED BY THE COURTS
The Federal Circuit established a two-step approach for determining copyright infringement in characters in Walt Disney vs. Air Pirates, 1979. The first stage is to compare the aesthetic similarities, followed by a comparison of the characters’ personalities. Following the “Character Delineation Test” established in Nicole vs. Universal Pictures Corporation, 1930, and the “The Story Being Told Test” established in Warner Bros. Pictures Inc. vs. Columbia Broadcasting System,1954, such infringement tests shall be employed. Based on precedents, the court established a “three-part test” for assessing whether a character in a comic book, television show, or movie picture is eligible to copyright protection in DC Comics vs. Towle, 2015.
IMPORTANT INDIAN CASE LAWS
The High Court of Kerala concluded in Malayala Manorama vs. V T Thomas, 1988 that the cartoon character ‘Boban and Molly’ was conceived before Mr. Thomas started working for the publishing business, and so was not developed in the course of employment. As a result, the creator would retain ownership of the character. The copyright (ownership) would be with the publishing house if the character was created by Mr. Thomas in the course of employment or under a contract of service.
In Raja Pocket Books vs. Radha Pocket Books, 1997, the Hon’ble Delhi High Court established that the principles of comparison to be used in determining the resemblance would be- an unequivocal impression that the later work seems to be a copy of the original. Similarly, the subject of visual, phonetic resemblance, and general impression of the works is likely to mislead or confuse such a man, causing him to mistake the defendant’s goods for those of the plaintiff.
In Disney Enterprises Inc. & Anr. vs. Gurcharan Batra & Ors., 2006, the Delhi High Court ordered the Defendants to stop selling counterfeit school bags with the names and likenesses of the Plaintiffs’ characters- Mickey Mouse, Goofy, Pluto, and Daisy Duck, Minnie Mouse.
The court held in the case of Disney Enterprises Inc. & Anr. vs. Santosh Kumar & Anr., 2011 that the degree of association between the Plaintiff and the Plaintiff’s materials is so strong that any mention of them causes a significant portion of the material public to recognise and associate them with the Plaintiffs alone. As a result, the Delhi High Court issued a permanent injunction prohibiting the Defendant from selling Plaintiff’s stationery.
Based on a review of case law, it appears that courts are tolerant in awarding protection to graphic characters due to their visual influence on readers’ minds. The courts are wary when it comes to fictional characters. Only when the court is convinced beyond a reasonable doubt that the characters are well defined is protection granted. Globalization, coupled with rapid technology improvement and digitization, has contributed to the simple and quick accessibility to fictional characters around the world. As a result, numerous cases of improper use of protected characters continue to surface. As a result, it is critical for owners and designers to remain vigilant and make copyright and trademark protection a top priority for their specific characters.
The Copyright Act, 1957, Section 2(c)
Feldman David B: Finding a Home for Fictional Characters: A Proposal for Change in Copyright Protection, 78 California Law Review, 687 (1930)
Walt Disney vs. Air Pirates, 581 F.2d 751 (9th Cir. 1978): 439 U.S. 1132 (1979)
Nicols vs. Universal Pictures Corporation, [45 F.2d 119 (2d Cir.1930)]
Warner Bros. Pictures Inc. vs. Columbia Broadcasting System, [216 F.2d 945 (9th Cir. 1954)]
Malayala Manorama v. V T Thomas, AIR 1989 Ker 49
Raja Pocket Books vs. Radha Pocket Books, 1997 (40) DRJ 791
Disney Enterprises Inc & Anr vs. Gurcharan Batra & Ors, C.S.(OS) No.607/2006
Disney Enterprises Inc. & Anr. vs. Santosh Kumar & Anr., CS(OS) No.3032/2011
Edited by Shivanshika Samaddar of National Law University, Delhi.