Copyright in Characters- Blurring of the Idea/Expression Divide- I

Personally, after reading Prashant and Kruttika’s several pithy and insightful posts, I find copyright law much more interesting than patents. Having rarely blogged on copyright law, I was tempted to take up a topic which allowed for a fair amount of shoring up of the fundamentals- copyright protection to characters;so if I err, which i am sure I am bound to, I am all for correction. Broadly speaking, there are two ways in which one may embark on this topic- the first one could be to address the issue solely from the perspective of the state of copyright law today and the scope of protection that it guarantees i.e. taking the current state of law for granted and analysing the legality of characters as eligible subject-matter for protection; and the second one could be to take a focussed, albeit brief look, at the development of copyright law towards distinguishing expression and idea and the rationale behind the same i.e. history and wisdom propelling the law.

Given the nature of the issue here which involves revisitation of the fundamentals, it seems more sensible to take the second approach, but it may leave one in a jurisprudential maze. So to avoid a tortuous and hence self-defeating analysis, I thought it best to first deal with both landmark and recent decisions of US Courts on the issue without delving into the historical origins unless the decisions themselves discuss the history. After discussing legality, we shall proceed to the wisdom and history of the law.

1. Sam Spade Case (1954)

This is a judgment which has been cited in several subsequent cases on the issue. The ruling in this case was contested in quite a few decisions, particularly the Rocky case and a few others. So it becomes necessary to understand what was challenged.
Parties, Forum and Decision
Plaintiff/Appellant– Warner Brothers and A.A.Knopf
Defendant/Respondent– Columbia Broadcasting System, Hammett and Ors.
Forum– United States Court of Appeals Ninth Circuit
Decision– Appeal Dismissed
Facts of the Case
Dashiell Hammett authored a detective novel “The Maltese Falcon” and entered into a contract with Knopf who agreed to publish the novel in a book form and also copyrighted it. Subsequently, both assigned certain specific rights with regard to motion picture, talking picture, radio and television to Warner Brothers. The facts in the judgment state that Knopf again separately signed an agreement with the studio which assigned certain detailed and exclusive rights to the company.

Thereafter, Hammett assigned the right to use of the characters of the Maltese Falcon, initially the lead character “Sam Spade” and later on other characters, to Columbia Broadcasting System which aired “Adventures of Sam Spade” including a particular episode called “The Kandy Tooth” over the radio. Warner alleged that this amounted to infringement of their copyright in the writings and also constituted “unfair use and competition” by re-use. Hammett sought the Court declare his rights in the writings vis-à-vis Knopf. The trial court dismissed Warner’s claims and Warner appealed to the Court of Appeals.

1.Were the characters of the novel transferred under the contract between Hammett, Knopf and Warner?
2.Is a character eligible subject-matter of protection under the copyright statute?
3.Did the defendant’s story infringe the plaintiff’s?

The Court first proceeded to resolve the issue of assignment of right over characters under the contract entered into by the parties. In doing so, the Court observed that the terms of the contract were very specific in their expression which was evident from the fact that everything that was being assigned was spelt out in crystal clear terms such as the title of the novel, the story and the use to which rights were being accorded to. This, the Court said, indicated, upon a holistic perusal of the agreements, that if the parties had intended to vest the assignees with rights over the characters, then the contract would have certainly reflected so in no uncertain terms.

Such a construction of the terms of the contract was further supported by the argument that to divest the author of his rights over the character was an act of serious nature for that would preclude its use by the author. The Court pointed out that authors generally tended to use characters and their traits in their subsequent works notwithstanding the fact that the copyright over the previous works had been assigned to the publishers. Therefore, it followed that in the absence of a term which clearly reflected or atleast suggested such an intention, to infer otherwise would be prejudicial to the author.

As a corollary to this, the Court further opined that in cases of ambiguity in the clauses or contractual silence on such an issue, Courts would always have to decide in favour of the author for the very intention of the legislature as implied by the Copyright statue was to protect the author’s rights. This line of argument is fairly consistent within the logic it seems to build, but there are certain unspelt or unarticulated assumptions which the Court probably did not deem fit to mull upon. By deliberating over the possible assignment or otherwise of the rights over the characters under the terms of the contract, the Court impliedly assumed that such rights were vested in the author and could be transferred as well. Now, the question which needs to be asked here is whether these rights are recognised and enforceable under the copyright statute which is precisely what the Court did.

Before I proceed, I would like to point out that the Court’s analysis of this issue was surprisingly brief to the point of being abrupt, when it actually calls for quite a bit of elaboration. Instead of directly discussing the issue whether the statute protects those characters which are capable of being independently protected so, the Court discussed how characters were in a way the tools or means of the author’s art and so could not be assumed to be included in a sale of copyright in the story. This, it further supported by pointing to the absence of concrete proof to the contrary in the legislature’s intent.

If the above observation meant that for the assignment of the right over the characters, an explicit and separate assignment was necessary, this was a point made earlier while discussing the contractual angle and so was slightly redundant. And though the Court did quote the majestic Justice Holmes to make this point, it certainly did not help clear the air on the issue at hand. But if the idea behind this prolixity was to establish:
1.That authors did use their characters in sequels
2.That it was a right which needed a separate assignment and
3.That since the statute intended to encourage creativity/production of arts, was therefore a subject-matter of copyright protection,

…the point was not clearly made or atleast I couldn’t get it immediately.To give due credit to the Court, it stated thus:

It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright…….……..We conclude that even if the Owners assigned their complete rights in the copyright to the Falcon, such assignment did not prevent the author from using the characters used therein, in other stories. The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.”

So in effect what the Court was saying was that if the traits and strength of a particular character stood out to the extent that it proved to be “the vehicle(s) of the story” and not a mere “chessman”, then it could be protected independently under the statute. Although this left quite a few questions unanswered, what piqued me was the following observation:
It is our conception of the area covered by the copyright statute that when a study of the two writings is made and it is plain from the study that one of them is not in fact the creation of the putative author, but instead has been copied in substantial part exactly or in transparent re-phrasing to produce essentially the story of the other writing, it infringes.”

Having said this, the Court ruled that plaintiff’s rights had not been infringed since the defendant’s work though belonged to the same genre was different in content. The afore-quoted observation brings to fore a point which is central to this debate- the idea/expression dichotomy. For centuries now, it has been reiterated that copyright law protects only the expression of an idea and not the idea itself. This point does not need reiteration, but how easy or difficult would it be to lend meaningful protection to the expression by divorcing it from the idea? Does the expression of the idea mean mundane details or the very articulation of the context? If it is the former, then substantial copying should not find any place in the scheme of things and if it is the latter, then it renders fuzzy the idea/expression conundrum. The question which needs to be addressed here is what exactly constitutes “expressive material” deserving of copyright protection. Where does one draw the line between expression, articulation and abstraction?

I shall attempt to look for answers in the next few posts again with the help of certain US decisions.


  1. AvatarSwathi Sukumar

    Dear Sai Deepak,

    This is a very interesting area, especially since there is almost no guidance from Indian courts.

    The protection of characters has several dimensions–

    (i) copyright protection of characters as literary works, being constructions of the script;

    (ii) copyright protection of characters as artistic works;

    (iii)characters as trademarks.

    The Rocky case in the US (Anderson v. Stallone, 11 USPQ 2d 1161), which you have referred to, is really a very good decision on protection of characters as literary works.

    The Court in the Rocky case lays down a new test of “delineation” of characters. The Court held that the Rocky characters are one of the most highly delineated group of characters in modern American cinema. The Court held that the characters are delineated so extensively that they are protected from bodily appropriation when taken as a group and transposed into a sequel by another author.

    On point (ii) above, a little known decision of the Delhi High Court deals with protection of characters as artistic works. See Raja Pocket Books v. Radha Pocket Books, 1997 (40) DRJ 791

    On point (iii), you could look at some of the useful analysis in Telstra Corporation v. Royal and Sun Alliance Insurance Ltd., 2003 FCA 786. The case also deals with the legal distinction between remakes, spin-offs, sequels etc.

    It relies on the decision in “Duff Beer” case, Twentieth Century Fox Film Corp. v. South Australian Brewing Co. Ltd., (1996) 66 FCR 451.The case concerns protection of the Simpsons characters, as trademarks.

    There are of course several issues that remain outstanding: In deciding the issue of copyright protection, what happens to conventional characters that are “delineated”, but common to the trade? Would you apply the test of trademark law of generic trademarks? Can characters per se be treated as “goods” in the trademark context?

    It would be interesting to see an analysis of these issues.



  2. AvatarJ. Sai Deepak...Iyer

    Dear Madam,
    I thank you for the comments which indeed point to fertile areas of research. My objective was to first know the position of the US law on this issue and then draw relevant conclusions for India because I was under the (false) impression that Indian Courts hadn’t dealt with this. So thanks for pointing out that there is an Indian decision which I shall certainly read and post on once I am done with the US decisions. I have a list of cases (including the Rocky case) which fairly guide us in this discussion. Interestingly, there are quite a few cases which actually deal with the issues you have raised; for instance, the Ideal Toy Corp v. Twentieth Century Fox deals with the right of copyright owners to prevent manufacture of toys which are identical/similar to their characters. But to be honest, I did not think of the “generic trademarks” angle, so I think my task is fairly cut out, thanks to you. I shall continue this discussion over the next few posts and I look forward to your views on the same.

    J.Sai Deepak.


Leave a Reply

Your email address will not be published.