LET THERE BE RIGHT: RIGHTS OF FICTIONAL CHARACTERS

We all remember our school days when your popularity depended on the cartoon character on your lunch box. We were not the first ones to be enamoured by flashy and colourful characters neither will we be the last. Character merchandising provides copyright owners with an alternative source of economic gain. Ordinarily, fictional characters are created as a part of a bigger storyline. They are vehicles used by the storytellers to deliver a specific role within the story. However, sometimes some characters stand out and acquire a reputation of their own. These characters can be used for a variety of different objects and do not need the context of a storyline to derive their meaning.

 

The benefits of a character operate in levels. On the surface level, the character is only a part of a story and he plays a role within the story. However, sometimes the popularity of the character is so high, it becomes the focal point of the story. This is the second level. The advent of advertising, marketing and merchandising has introduced a third level. Once the character has a personality which is distinct from any particular story, it can be used as a subject of advertisement and marketing. Character merchandising is a tertiary exploitation of the IP right in the character. This concept of delineation was introduced by Judge Learned Hand in the case of Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) when he suggested that characters might be entitled to protection when they have an existence independent from the plot of a story. "It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinct."

 

Copyright

Fictional characters often find their origin in a literary or cinematographic work. The ability to commercially exploit the personality of a character gives the copyright owner a tangential source of economic benefit. The Courts in India have had a few opportunities to decide enforceability of the copyright in a character. The Delhi High Court in the case of Raja Pocket Books Vs. Radha Pocket Books (1997(17)PTC 84(Del)) was tasked with the question - Whether the owner of a copyright in a comic character could restrain another person from using a similar character in its comic book. While deciding the issue in favour of the Plaintiff, the Court held that there were significant similarities between the Plaintiff's character "Nagraj" and the Defendant's character "Nagesh". The Court held that "Nagraj and Nagesh having same meaning, namely, King of snakes; Colour of comics is also green, gauntlets are ripped in both cases, functionally, both are capable of doing same and similar work, namely, scaling the walls and the roofs alike, hurling snakes, causing the objects to melt and the snakes capable of returning back and merging in the body of the character. For the purpose of climbing, both use the same material, namely, rope in the form of snake".

 

The Bombay High Court while dealing with the concept of fictional characters in Star India Private Limited v. Leo Burnett (India) Private Limited (2003) 27 PTC 81, the Bombay High Court observed that "It is necessary for character merchandising that the character 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."

 

The Delhi High Court in Disney Enterprises, Inc. and Ors. vs. Pankaj Aggarwal and Ors. MANU/DE/2623/2018 observed that "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. It is not uncommon for children wanting to own toy cars which look like "Lightning McQueen", bags and stationery products which have "Lightning McQueen" images printed on them, talking to "Lightning McQueen" cars etc., India has its own tradition of having a large number of home-grown characters which are liked and wanted, and such characters have immense commercial value. While fair use of the characters is permissible, within the legally prescribed norms, unlicensed use of the image of a known character on chocolates, which the Plaintiff also licenses for legitimate use on chocolates/wrappers, would be unlawful and illegal."

 

Trademark

Even though, the most natural form of protection for fictional characters is under Copyright Law, the fundamental issue with copyright is that it comes with an expiry date. No matter how ingenious the work is, eventually it will fall into public domain and the rights of the owner of the copyright will extinguish. Trademarks solve this problem. Trademark Law grants rights in perpetuity. The only issue is that in order to qualify as a trademark, the mark must be a source identifier. This means that the mark must be capable of distinguishing the goods or services of one person from those of others. Not every object which may be a subject matter of copyright transcends to a trademark. By way of example, Disney Enterprises has secured trademark protection for many of its characters. The trademarks rights in the device of the characters have also been recognised by the Delhi High Court in the case of Disney Enterprises INC and Ors. vs. Gurcharan Batra and Ors. MANU/DE/4122/2011 wherein it was observed that the word and device marks Mickey Mouse, Minnie Mouse, Donald Duck, Daisy Duck, Goofy and Winnie the Pooh are the registered trademarks of the Plaintiff and use of these marks by the defendants in relation to or upon paper articles, printed material, teaching materials, stationery etc in the course of their business amounts to an infringement of the plaintiff's registered trademarks and passing off of their business.

 

Personality rights

Personality Rights are an extension of Right to privacy. This begs the question- whether fictional characters are entitled to right to privacy. Personality rights are the rights of a person to commercially exploit his/ her persona. In this context it is relevant to refer to McCarthy's on the Rights of Publicity and Privacy {Second Edition} which reads:

"The New York courts have unanimously refused to permit any legal entity other than a human being to assert publicity or privacy rights under the New York statute. The New York statute prohibits the commercial use of the name or picture of "any living person", and this interpretation seems eminently reasonable. The meaning of "living person" as restricted to a real human appears clear by the statute's listing of those entities which are forbidden to make such unpermitted uses: "a person, firm or corporation". Thus, the statute distinguishes a person from a firm or corporation.....What we cannot do is allow ourselves to be hypnotized by a label like "person". It is superficial and quite dangerous to reason that: {1} real human persons have a right of publicity and {2} the law pretends that corporations are "persons", Therefore {3} corporations have a right to publicity in their identity. The danger comes from expanding the right of publicity beyond its reason for being. Even the most rational and fair legal concept can be so stretched out of shape that a backlash develops, which can bring down the whole house, good and bad alike."

 

The Delhi High Court in the case of ICC Development (International) Ltd. Vs. Arvee Enterprises and Ors. 2003(26)PTC 245(Del) held that "non-living entities are not entitled to the protection of publicity rights in an event, for more than one reasons. Firstly, the copyright law, trade-mark law, dilution law and unfair competition law provide full protection against all forms of appropriation of property to such legal entities. Secondly, it would be against the basic concept of "persona". The "persona" is defined in Black's Law Dictionary, seventh edition to mean "a person; an individual human being".

 

However, can it not be argued that even when celebrities are exercising their publicity rights, the persona which is being exploited is a fictitious creation of mind? The persona or public image of a celebrity is carefully crafted by a team of experts. When a brand signs on Virat Kohli as a brand ambassador, it is not just a boy from Delhi who happens to play cricket well but is in fact this courageous, competitive, confident and bold person that is sought to promote the brand. Be that as it may, one finds himself in agreement with the justification given by Justice Surinder Kumar Aggarwal in ICC Development (International) Ltd. supra when he said that fictional characters are already protected under copyright and trademark laws, is there really a need for the protection of fictional characters on the score of Personality rights.

 

Therefore, we can see that Fictional characters are entitled to protection under the Indian IP regime. The level of protection would depend on the level of ingenuity and popularity of the character.