The issue of protection of fictional characters under IP laws separate from the works which contain them has plagued IP law scholars since the late 20th century. The rise in popularity of fictional characters which gives them higher marketability makes this issue an attractive one. In the last few decades, due to the rise of character merchandising this issue has been taken up by the Courts in India as well. In this paper, the author will look into and analyze the different cases wherein the issue of copyright protection of fictional characters has been discussed and compare the analysis of Indian Courts with the tests which have been developed in the United States to deal with this issue.
COPYRIGHT PROTECTION OF FICTIONAL CHARACTERS IN INDIA:
STATUTORY PROTECTION IN INDIA:
In India, Section 13 of the Indian Copyright Act, 1957 which talks about ‘works in which Copyright subsists’ provides protection to “original literary, dramatic, musical and artistic works; cinematograph films and sound recordings”. A careful reading of this section may point out that fictional characters since part of the overall fictitious work may be protected in such a manner. However, issues arise when the same fictional character reprises their role in a different literary work subsequent to the original work. This issue becomes especially interesting when the original work in which the fictional character was introduced passes into the public domain after the expiry of its copyright term. These are some of the issues which have been discussed by the courts in the United States, however, in India, the Courts have majorly focused on the question of protect-ability of the fictional characters as featured in films and television shows.
PROTECTION TO FICTIONAL CHARACTERS PROVIDED BY COURTS:
Although the issue of character copyright was looked into as early as 1989 in India in V. T. Thomas v. Malayala Manorama Co. Ltd, the question of copyright-ability of fictional characters was first considered in Star India Pvt. Ltd. v. Leo Burnett. In this case, the plaintiff had an agreement with Balaji Telefilms to produce episodes of an Indian serial called Kyunki Saas Bhi Kabhi Bahu Thi. They brought a petition against the defendant alleging that their advertisement of Tide detergent used the characters from the show and therefore infringed upon the plaintiff’s copyright. One of the issues examined by the learned Court in this case was whether the defendants were guilty of defeating the character merchandising rights of the plaintiff. To answer this question, the Court went on to define the concept of ‘character merchandising’ which they then applied to the facts before them to determine whether there was any infringement. They defined it thus,
“Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others. The fictional characters are generally drawings in which copyright subsists, e.g., cartoons and celebrities are living beings who are otherwise very famous in any particular field, e.g.; film stars, sportsmen.”
The Court further clarified that for a character to be merchandised it is necessary that “…they had gained some public recognition i.e. achieved a form of an independent life and public recognition for itself independently of the original product or area in which it appears.”
In this way, the Court put forth a prerequisite which needed to be fulfilled before a character could be said to be merchandise-able. They further elaborated upon the independent appeal and reputation of the fictional character, as they stated that, the presumption herein would have to be that the reputation of the fictional character is so distinctive that it is capable of being marketable on its own. Although the Court went into some detail regarding the definition of character merchandising, unlike their US counterparts, they did not spend much time in discussing the various factors which are involved in the determination of the copyright-ability of the fictional characters themselves.
This question of protect-ability of characters simpliciter was tackled in Arbaz Khan v. North Star Entertainment Pvt. Ltd. In this case, the plaintiff alleged that the police officer portrayed in the defendant’s movie was an imitation of the plaintiff’s character- “Chulbul Pandey” from the Dabangg movies. One of the key questions which the Court looked at in this case was “whether the law in India recognizes copyright in a fictional character simpliciter?” The Courts had to examine this question through a two-pronged analysis. The first prong of enquiry was whether the character of Chulbul Pandey by itself was protectable under copyright and the second question was whether the defendants had then infringed the copyright protection of this character.
Regarding the protect-ability of the Chulbul Pandey’s character through Copyright, the Court stated, “But 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.”
Thus, the learned Court accepted the fact that the character of Chulbul Pandey was “unique and fully developed” and by virtue of this is deserving of copyright protection and by this pronouncement opened the doors of copyright protection to fictional characters by themselves.
With respect to the question of infringement, the Court accepted the arguments put forth by the counsel for the defendant, who had contended that the Gabbar Singh movie was a distinct work and the titular character in that movie was a distinctive character with a different name, different portrayal, different stylizations as well as mannerisms and core values. The defendant’s counsel argued that the adaptation developed distinctively and cannot be said to be a copy of the plaintiff’s work. The Court opined, “What seems to have, therefore, been brought forth, and I think Mr. Kadam is correct in saying this, is a wholly new work based on a wholly new underlying literary work with a quite distinctive character portrayed by another actor adapted from a pre-existing literary work.”
Therefore, although the Court accepted that Chulbul Pandey’s character was unique enough to warrant protection it refused to accept the plaintiff’s contention that there has been an infringement of their copyright in the present case since the defendant’s character Gabbar Singh was a distinctive portrayal of a “completely unique character for a totally different audience.”
A more recent case, which sheds more light on the issue of protection of fictional characters is Disney Enterprises v. Pankaj Agarwal. In this case, the plaintiffs had filed a suit for a permanent injunction against copyright infringement among other things of its character Lightning McQueen from its movie Cars. The defendants were selling chocolates called Choco cars which had the image of character which was the complete imitation of the plaintiff’s character Lightning McQueen on its wrapper. While discussing the factum of infringement, the learned Court stated that “it is well settled that characters can acquire the status of trademarks and can also be protected under copyright law.” They further opined, “The importance of preventing well-known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires a great amount of creativity and an innovative mind. Characters such as “Lightning McQueen” have transcended the movie in which they are featured, as children recognize the said characters and treat them like living humans.”
In light of the significant commercial value of these fictional characters, the Court held that any unlicensed or unauthorized use of the characters cannot be said to be legal. Accordingly, the Court held that such unauthorized use by the defendants of plaintiff’s character “Lightning McQueen” would be an infringement of their copyright and thus, granted a permanent injunction to the plaintiffs.
The analysis of above-discussed cases shows us that some strides have been taken for the protection of fictional characters on their own due to their increasing commercial value and marketability. The litigation in our courts is increasingly showing that issues regarding the protection of fictional characters are being seen in India, under both copyright law and trademark law. The number of cases being heard with respect to the protection of fictional characters is not substantial enough at this stage to make definitive assertions regarding the developing framework or the direction the law might take. However, it can be opined that there is significant scope for the development of this jurisprudence in India. The next section will delve into the cases and tests which are utilized in the United States for protecting fictional characters.
COPYRIGHT PROTECTION OF FICTIONAL CHARACTERS IN THE UNITED STATES:
Whether fictional characters deserve protection by themselves and the various ways such protection may be granted has been a topic of discussion in the United States for quite some time. In the past few decades, they have come up with different tests which determine the copyrightability of fictional characters. I will briefly discuss the salient features of these tests in this section.
DEVELOPMENT OF VARIOUS TESTS THROUGH CASE LAWS:
One of the most pivotal cases when it comes to the copyrightability of fictional characters is the Nichols v. Universal Corp case. The case was brought about by the author of the play ‘Abie’s Irish Rose who claimed that the film ‘The Cohens and the Kellys’ infringed her copyright by misappropriating the plays’ characters among other things. The play and the movie revolved around an interfaith Catholic Jewish couple whose fathers opposed their relationship on religious grounds. In this case, Judge Learned Hand gave the iconic ‘character delineation test.’
As per this test, “if an author imbued the character with sufficient original details, the character will be entitled to some level of protection.” Thus, the more highly developed and distinct the character the greater is the protection available to him. Applying this test to the facts before him Judge Learned Hand held that the characters of the Abie Irish Rose in question were “not sufficiently developed and thus not copyrightable because they were merely archetypal characters that often appeared in the literature.” To further elaborate Judge Learned Hand observed, “the less developed a character in a play is, the less it can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.” In the Nichols case, the Court found that the defendant’s work has not infringed the copyright of the plaintiff, but the test it set up then led other courts to decide the copyrightability of fictional characters.
Another test which was developed by the Courts was the Story being told test. This test was given by the second circuit in 1954 in the Warner Bros v. Columbia Broadcast Systems case. Herein the Court held that a fictional character would only be eligible for copyright protection if it constituted the “story being told.” The Court described it thus,“ It is conceivable that the character really constitutes the story being told, but if the character is the chessman in the game of telling the story he is not within the area of the protection afforded by copyright ….”
This case held up a stricter standard for granting copyright protection. Here, the Court took into account the interests of future authors and creators who would want to rely on the works to foster new creations. The Court stated thus,“…because “the characters of an author’s imagination and the art of his descriptive talent …are always limited and always fall into limited patterns,” allowing one author to claim a monopoly over that character would violate copyright law’s goal of promoting the useful arts unless the character constitutes the story.”
After this test was given by the Court, discussions ran rampant regarding the implications of this test on the larger question of protect-ability of fictional characters since the standard set forth was a strict one. For instance, the application of this test to cartoon characters was discussed in the case of Walt Disney Productions v. Air Pirates. Therein, owing to the strict standard presented by the Sam Spade test, the plaintiffs had argued that cartoon characters should be treated differently from literary characters for which this test was given in the Warner Bros. Case. Although the Court did not seem convinced with this argument, it did find even after the application of the Sam Spade standard that the plaintiff’s characters would qualify for protection.
Another interesting development in the field of tests has come through the case of DC Comics v. Towle. In this case, Towle (the defendant) had been accused of infringing the copyright of the Batmobile of the Batman series by selling cars which he advertised as Batmobiles. The Court found him guilty of copyright infringement of the Batmobile. The Ninth Circuit concluded that Batmobile as a fictional character part of a larger work of art is entitled to copyright protection. In reaching this decision, the Court applied a three-pronged test to determine whether it is appropriate to apply copyright protection to fictional characters appearing in books, movies, or television shows. As per this test: “The character must (1) have “physical as well as conceptual qualities,” (2) be “sufficiently delineated,” and (3) be “especially distinctive” and “contain some unique elements of expression.”
This test has faced certain criticisms for failing to simplify the current confused state of jurisprudence existing in the fictional character- as – work arena under American law. The interesting thing about these tests is that their application has not been uniform for all characters (literary, visual etc.) They also created confusion regarding their applicability. This problem was aptly pointed out by Alphonso when she said, “Both the “distinctly delineated” and “story being told” tests lacked definitive structure, causing numerous problems with consistency and application.”
She further pointed out three major issues with the test. She argued that these tests require the judges to sit in judgment of the literary merits of the characters similar to a literary critic, when they are required to decide whether the characters are distinguished enough to qualify for legal protection under copyright law. Secondly, there is a definite danger of overprotection of characters due to the misapplication of the standards, and lastly, the fact that neither of the abovementioned tests would “necessarily protect the most developed characters in the literary works”, since the most human and well-rounded characters are intensely entrenched in the context of the work.
Although the jurisprudence under American law with respect to fictional characters has a much longer history, it can be argued that the legal position therein is also not without its own challenges as can be seen with the presence and application of multiple tests. Furthermore, another issue which the American law regarding the protection of fictional characters has had to contend with is the concern of overprotection or overlapping protection under various intellectual property laws.
All in all, the tests used in the United States for the protection of fictional characters simpliciter have faced criticisms for their contradictory usage by different courts, which has led to uncertainty about the primary test to be applied. However, this comparative analysis does show that the jurisprudence of fictional characters simpliciter protection is much more developed in the United States than it is in India.
This jurisprudence is at its nascent stage in India. Although Courts have looked into protecting fictional characters simpliciter in certain cases as discussed above, no comprehensive test has yet been delineated for this purpose. The comparative analysis done in this paper was undertaken with the intention of shedding light on the legal landscape of both these countries where it concerns fictional characters and to argue that India can borrow lessons from the jurisprudence of the United States not only with respect to the steps which can be undertaken, but also with respect to mistakes which can be avoided in the development of a clear unambiguous jurisprudence for this field.
 Zahr K, “Fixing Copyright in Characters: Literary Perspectives on a Legal Problem”, 35 Cardozo L. Rev.769 (2013); Deidre Shauna Lynch, The Economy of Character: Novels, Market, Culture, And Business of Inner Meaning (University of Chicago Press, 1998).
 The Indian Copyright Act, 1957, s. 13.
 AIR 1989 Ker 49.
 2003 (2) Bom CR 655.
 2016 SCC Online Bom 1812.
 2018 SCC OnLine Del 10166.
 45 F.2d 119 (2d Cir. 1930).
 Amanda Schreyer, “An Overview of Legal Protection for Fictional Characters: Balancing Public and Private Interests”, 6 Cybaris Intell. Prop. L. Rev. 50 (2015).
 Supra note 15.
 216 F.2d 945, 950 (9th Cir. 1954).
 Schreyer, supra note 16.
 Walt Disney Productions v. Air Pirates, 581 F.2d. 751 1978.
 802 F.3d 1012 (9th Cir. 2015).
 Katherine Alphonso, “DC Comics v. Towle: To the Batmobile: Which Fictional Characters Deserve Protection under Copyright Law”, 47 Golden Gate U. L. Rev. 5 (2017).
BY APOORV PRAGYA | NALSAR UNIVERSITY OF LAW, HYDERABAD