The judgment is pretty clear and enlightens one to the fact that US Courts probably have a tough time segregating the points of jurisdiction of Federal and State laws. Besides, after reading the judgment, I felt it’s easier for commentators to sardonically lampoon and lambast Courts for they (the commentators) have the benefit of the afterthought (or “hindsight bias” to put it in the words of the US Supreme Court in KSR). I think it also made me realise that critiquing a judgment in measured and balanced tones is as important, if not more, as the very act of critiquing, for criticism in the extreme rarely finds takers.
Returning to our discussion, the aforementioned judgment also deals with an issue which has been thoroughly thrashed out in several posts on SpicyIP-grant of preliminary/interim injunctions; the Court here spoke of the requirement of probability of success at trial for grant of preliminary injunction which was deftly dealt with by Mihir. So I shall restrict myself only to those aspects of the decision that are relevant to our discussion, which is to analyse copyright protection to characters and its implications.
2. Star Wars Case (1977)
Parties, Forum and Decision
Plaintiff– Ideal Toy Corp.
Defendants– Kenner Products and Twentieth Century Fox (TCF)
Forum– United States District Court, New York
Decision– Motion for Preliminary Injunction (as part of the counterclaim) of the Defendants Denied
Facts of the Case
Plaintiff “Ideal Toy Corp”, needless to say a toy manufacturer, sought a declaratory judgment that its product line titled “Star Team” did not infringe any rights possessed by TCF in the movie “Star Wars” nor the rights of Kenner Products, which held a license from TCF to produce toys based on the movie’s characters. Defendants TCF filed a counterclaim which among other things sought an interim injunction against Ideal for copyright infringement and unfair competition by sale of a set of three toys which individually and together resembled R2D2, C3PO and Darth Vader characters from the Star Wars series.
Issues
1.Did TCF have copyright in the said characters?
2.Did the impugned toys infringe TCF’s rights?
3.Did Ideal’s sale of the toys constitute unfair competition?
Discussion
A reading of the decision reveals that the Court went about its work in a systematic fashion because it took pains to understand the circumstances before and after the release of the movie which was necessary given the nature of evidence produced by both the parties. I would like to point out here that Star Wars was released on May 25, 1977 and around the same time, Ideal launched its “Star Team” product line.
On one hand, Ideal showed that its decision to launch toys based on outerspace was influenced by several factors such as the popularity of shows like Star Trek, the growing public attention surrounding the US space program and the very release of the movie “Star Wars”. This candid admission on part of Ideal in no way was detrimental to its case; if anything it indicated its openness about cashing in on the space fad which was absolutely justified. (This justification for cashing in on a trend in itself is worthy of an independent post for it has economic arguments and that requires quite a bit of research and clear thinking- both of which need time)
Ideal went at great lengths to explain how its R&D team decided to look at existing molds of toys in their inventory and improvised to come up with a new set of toys. The evidence adduced to support this was extensive which is clear from the judgment. The toys in question where 2 robots (Zeroid and Zem 21) set against an archetypal space villain (Knight of Darkness) along with a space ship.
TCF, for its part, produced the results of a survey which it had conducted in 12 locations across the US where children between the age group of 6 and 12 and their parents were interviewed. The interviewers showed the target group each of the impugned toys of Ideal without specifically naming the toy and asked them to identify or associate the toys with something they had already seen or heard. A good number of these interviewees associated the toys with the Star Wars movie characters. This was submitted as evidence of similarity between the toys and characters of the movie to prove infringement.
The analysis of the Court, in the light of this evidence was refined. It must be understood that to prove infringement here, one would need to prove:
1.existence of copyright in the movie’s characters
2.establish that the 3-D adaptation of the characters amounted to infringement of the copyright
At this juncture, I would like to elaborate on the first count because I could not initially understand the need to prove the first count for that is tortuous. If TCF’s idea was to prevent Ideal from selling the toys, wouldn’t it have been easier if it could prove that the toys infringed the copyright in the movie rather than the copyright in characters, because the presence of copyright in the movie was never in doubt?
The answer to this question helps us resolve to an extent the debate here. If TCF had sought to prove that the toys infringed the copyright in the movie rather than in the characters, then it would have fallen short of a very important criterion-context/background/story (which is not the same as a mere genre or theme). If the toys were sold without any particular story connecting them together (other than the obvious good v. bad stereotype), then proving infringement of copyright in the movie would have been rather difficult. Interestingly, Ideal did sell a short story along with its toys but the story, though in the same genre, was entirely different from that of the Star Wars version.
This explains why TCF had to resort to proving infringement of copyright in characters. To this the Court cited Professor Melville Nimmer (Nimmer Sr.) that “a court studying a claim of character infringement must first look to the degree to which the character is developed”.
“If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s “ideas” in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”
The Court observed that mere association or relation of the toys to the theme or even characters of the movie, was not sufficient to show that only infringement of the TCF’s rights could have led to similarity in the models. It noted that TCF had failed to grasp a cardinal point which is the standard of diligence expected from a reasonable customer who was interested in making a purchase or was about to make a purchase; most of the interviewees did not fall into either of the categories. Also, real evidence pointed to important differences in the design of the toys and the model of the characters.
The Court also opined that it was easier to protect copyright in characters based on graphic representations in novels rather than mere “word portraits”. Since the issue of infringement was answered in favour of Ideal, the Court did not elaborate much on 3-D adaptation of the 2-D movie. It is fairly established that 3-D models too infringe 2-D works and that change in medium is not a bar against proving infringement.
Dear Spicy IP Blog editors
No disrespect to the author of this and other similar pieces, indeed I enjoy them very much. However I regularly visit your blog (and I suppose many others do for the same reason) because of your “mission statement” – “We aim to increase transparency in Indian intellectual property policy/institutions. We also stand for fair, objective and accurate reporting/review of intellectual property and innovation property news from India”. You may wish to review the scope of content that you would like to permit or restrict.
On the one hand it would be great to have a wide variety of interesting IP content on this Blog. But on the other hand it may DILUTE your core purpose for starting this, undoubtedly, superb enterprise.
Cheers
Harry Thangaraj
Dear Harry,
Thanks very much for your comment. I can see where you’re coming from and appreciate you taking the time to help us reflect on what exactly we intend to achieve through this blog.
You’re right that “transparency” is a core aim. However, this term is not used in the narrow sense in which media may portray it. In other words, the blog is not just restricted to exposing patent office corruption and things of that sort. Rather, it seeks to expose the various aspects of IP jurisprudence and policy as evolved in India–with the hope that such exposure would lay more cards on the table and subject decision makers to more accountability. And thereby more transparency.
I assume what Sai is trying to do is to dig deeper into an area of law which is rather murky and see if there are broad principles underlying court decisions. I’m sure he will connect it up with Indian courts/case law at some point to try and see the principles that Indian courts have applied. Once you expose the principles, it is easier to see if Indian courts have applied their mind or have been blindly swayed by plaintiffs arguments–which are always too pro IP protectionist. I’ve been an IP practitioner myself and I can tell you that a number of cases were wrongly decided only because defence wasn’t strong enough. And in certain others, I’m pretty certain that money and other considerations determined the outcome. By focussing on the merits or otherwise of the dispute and seeking out underlying reasons/rationale, you will appreciate that one might be able to further the aim of “transparency”, albeit in a modest manner. And expose wrong decisions that might have been swayed by other considerations.
I hope this answers your concern somewhat. Thanks once again for helping us focus on the key aims of the blog and what it sets out to do.
Dear Mr.Thangaraj,
Thanks for the comment for it is indeed a very valid point that you have raised. I was half expecting a comment of this nature questioning the relevance of US decisions in an Indian IP blog which purports to increase transparency in Indian IP. But then, this is not the first time that we have blogged on something which has negligible “India relevance”, so to speak and I do not think there is anything wrong with that. Also, I am of the opinion that if we were to solely restrict the scope of the content to Indian developments, not only would we have very little to talk about, it would also be a self-defeating enterprise for IP is an area which requires one to look around and take benefit of the experiences of other regimes. Even otherwise, the idea behind the posts in question was to look at areas which haven’t been adjudicated upon much by Indian Courts and in a way set the tone for what could or ought to be our take if and when we are faced with issues of similar nature. This too falls within the ambit of the mission statement as I understand. Further, in the comments to the first post on this topic, I had stated that I shall relate these cases with the Indian decision cited by Ms.Swathi Sukumar.
I believe that instead of waiting for the Courts to raise an issue and then criticise them for lack of coherence, we can take a proactive approach and deal with the issues ourselves. This is all the more important given that SpicyIP has a very diverse readership, right from beginners in IP to experts, from academics to practitioners and policy-makers. Not just that IP practitioners may or may not have the time to look at areas like these and given the fact that such issues are rare in Indian cases, I think it is not out of line to provide them with a quick look at the position of the law. You would be surprised to know that quite a few copyright practitioners who probably do not wish to be named have sent very positive mails to me encouraging the discussion. One of them in fact is an established copyright practitioner and a part-time academic in the National Capital Region (NCR). So though I value your concern and appreciate your enthusiasm in reminding us our mission statement, I think the discussion is certainly not inconsistent with the statement. But importantly, I should thank you for being polite in your observation because there are a few who would have jumped on this opportunity to pass wisecracks or post a sarcastic comment. I will have absolutely no issues in putting pause to the discussion which I have started if the senior members of the team feel that the posts are away from the objective of the blog.
Bests,
J.Sai Deepak.
Dear Sai,
Thank you for your kind remarks about my being polite. Likewise I am glad you did not take this personally. The comments by you and Shamnad are food for thought, and I appreciate that – yes – developments on the international IP sphere may sometimes be instructive for India. Which got me thinking about the following:
Should the Netherlands look towards other country case law in order to get a more balanced perspective on goods in transit? Obviously I am referring to the Dr. Reddy/Brazil destined shipment. There is a UK case where the ruling does not explicitly refer to “goods in transit” but the circumstances of movement of goods have some similarity. In Smith Kline French (SKF) versus Harbottle – an old case but which still holds considerable sway as far as judicial precedent is concerned in the UK – British Airways (BA) were transporting a consignment of Cimetidine (an anti-histamine) from Italy to Nigeria. 20 kg of the drug was stored in a BA warehouse in London. BA and Harbottle were co-defendants in an infringement action brought against them by SKF. To cut a long story short, a UK court ruled that the act of being a “mere custodian or warehouseman” did not constitute an infringement in terms of “keeping” (for disposal, sale, or any other infringing action as you or I would normally interpret it in a commercial or legal context). Once again – while the historical context of the case refers to “keeping” – it is interesting that the actual background to the case relates to good in transit. Hope this adds another perspective to the goods in transit discussion taking place at several levels.
Cheers
Harry
(Harry Thangaraj)
Dear Mr.Iyer,
With regard to the hypothetical example you have provided in the post, I believe that the adaption of the novel into the motion picture in a contemporary punjabi setting will not amount to infringing of the copyright in the characters. The interpretation/treatment of the characters are bound to be drastically different due to the immense change in the setting of place/time. The “idea” of an alcoholic obsessive lover can not be copyrighted.
Secondly, the star wars decision does not imply that copyright owners are required to prove separate instances of copyright violation viz. character and movie. Though, proving both, may make the case of the copyright owner stronger.
Copyright violation of character can occur without copyright violation of story. One example that comes to my mind is that of James Bond. I believe that there have been disputes where the character of James Bond was unauthorizedly used in otherwise original stories, though I am not able to recall the specific instances.
Hope I am correct in my assessment.
—
Kanishka Chakrabarti
Hi Kanishka,
Thanks for the comments and replies. As for the first question about Devdas, I think my question itself had a flaw in it which I realised only after I read the post again. This is because my intention behind the question was to juxtapose a well-known character in a different cultural milieu without bringing the rest of the original storyline and THEN consider copyright infringement of the character. Like, what features/traits should a Punjabi Devdas have to infringe the Bengali/Bengalee character in the absence of a Punjabi Paro or Chandramukhi? Probably, there can be no Devdas without a Paro or a Chandramukhi which points to the fact that certain characters derive their strength only from the script; in other words they are author-backed by the storyline and in isolation have no novelty and hence no copyrightability.
But in a way your answer leads us to another interesting point which is that there are several well-known characters in well-known literary works, which may lose their novelty in a different setting when taken out of context thereby negating the possibility of copyright infringement when used in the other context. Simply put, Devdas appeals to us predominantly because it is set in the Bengal on the early 20th century and in our attempt to transport this character to a different background, we may be leaving behind the specific traits or “expression” and partake of only the “theme” or “idea”. Therefore from the “expression” of a Bengali lover from a rich aristocratic family who falls in love with his childhood sweetheart, we are left simply with the “idea” of a forlorn drunkard pining for his love interest. This “inverse reductionism”, if I may call it so, of expression to a general idea, involved in such a transposition probably gives us a safe harbour from infringement of copyright in the character. I would like to point out another thing here; in my opinion, very often Courts tend to resort to this kind of inverse reductionism by applying an “in effect” or “substantial” argument, which is sometimes unwarranted, because it may deprive a genuine character which is worthy of being protected from getting a copyright. Ironically, this kind of “substantial copying” argument is applied in establishing copyright infringement as well.
As for the second question, I broadly agree with the spirit of your argument (assuming that I have got you right), you are right when you say that copyright owners need not always raise two separate grounds of infringement. The Star Wars case never implied that copyright owners are required to raise two separate grounds, because it did tell us that a copyright owner could raise an independent ground of copyright infringement in character for that is precisely what TCF did. And again you are right in saying that infringement of characters need not always translate to infringement of copyright in the story which is precisely the point of the discussion- stand-alone capacity of characters. However, there are instances where violation of characters leads to violation of the stories as well. The James Bond example which you are referring actually deals with this issue. In that case, American Honda Motors was accused of infringing both the copyright in James Bond character as well as some of Bond flicks. This was because along with the use of a character which strongly resembled Bond, Honda had also used certain sequences which are typical of Bond movies (I was planning to discuss this in another post). But the actual question is the converse of what has you have answered- even though characters may be independently protected, would I be wrong in alleging that an infringement of the copyright in my story infringes my characters as well? And so accuse the other party of 2 different grounds of infringement and raise the stakes aka damages? Kindly let me know what you think.
One last observation for this comment, copyright law has a very strong natural rights flavour (though the instrumentalist approach has equally influenced it), which means by the very factum of creation of the work, the right is vested in me. This was the argument for quite some time until the “modicum standard” was introduced. In stark contrast, with the lone exception of the Sam Spade case, the approach to vestation of copyright in characters is heavily influenced by the degree of its development aka minimum level of creativity aka delineation. This is a very interesting aspect which, in my opinion, deserves scholarly attention.
Finally, you can call me just “Sai”, Mr.Iyer makes me sound very old. I am not grey yet.
Bests,
J.Sai Deepak.
Forgive the typos, i hope i have still managed to clearly state what i wanted to…
Hi Sai,
Thank you for your very informative reply.
Your comment made me think hard about my earlier statement viz. ‘proving both character violation and story violation may make the case of the copyright owner stronger.’
A story contains a number of components, of which the character(s) is one. The other ingredients being the time, place, events etc. which help to carry the story forward or set up the story.
It is the summation of all these ingredients that go on to form a story.
My point is that an infringement of the copyright of a story, implies that the certain vital ingredients have been copied. While establishing that the copyright of a story has been infringed, it ‘may’ be necessary to prove that the copyright of the character has been infringed in order to substantiate the claim that the ingredients that go on to form the story has been copied.
I, personally, am of the view that while proving these separate elements makes the case of the copyright owner stronger, but does not entitle him to accuse the other party of different grounds of infringement and raise the stakes as these elements themselves in totality form the story, for which damages are already being sought.
Hope I managed to be clear in my statements.
Cheers,
—
Kanishka Chakrabarti
Hi Kanishka,
I am thoroughly enjoying this discussion thanks to you. Before I respond to your comment, I would like to correct an inadvertent, albeit serious error in my earlier comment. I had stated in first para of my last comment thus:
“Probably, there can be no Devdas without a Paro or a Chandramukhi which points to the fact that certain characters derive their strength only from the script; in other words they are author-backed by the storyline and in isolation have no novelty and hence no copyrightability.”
I should have said that in isolation, there was no distinctiveness and hence no copyrightability because when it comes to characters it is the distinctive/delineation which makes them deserving of copyright protection. This was a very gross mistake on my part because novelty and distinctiveness are two very different things.
Coming back to your view about character being but one component or element of the story and so disentitling the copyright owner of damages on two different grounds, I think you have actually helped me narrow my focus better. You are absolutely right when you say that since a character is already subsumed in the story itself, it may not be right for him to enhance damages separately for the character. However, let me try and explain my disagreement with this view, although to be honest, I am not entirely sure of its validity.
If a particular character has grown out of the story in which it first figured and has acquired larger than life proportions with an independent standing, this very “fact” in itself makes it worthy of a separate ground of infringement. To support this, I take help of the reasoning provided in the Sam Spade case and it goes as follows:
1. Transfer of copyright in a story need not involve transfer of copyright in characters as well for characters are tools of the author’s art
2. This combined with the factor of distinctiveness and “secondary significance” acquired by the character further strengthens its independent standing
3. Consequently, the right over character can exist independently
4. Therefore in a situation where the copyright in the story is infringed, with the “infringed” character as one its components BUT with an independent standing, in reality two different rights are infringed, one that of the character and the other of the story thus justifying two different grounds of infringement and enhanced damages.
Warped way of thinking no doubt, but still sounds plausible atleast on paper. On an altogether different note, here’s a general observation which I am sure legal practitioners and general debaters will appreciate. Certain arguments make a lot of sense so long as they are on paper, but the moment one tries to voice them aloud before an audience or a Court, the proponent himself starts doubting the logical validity of his argument and thinks on his feet AS he speaks. This is best exemplified in the statement that there is a vast difference between paper law and trial law. So there’s every possibility that my arguments which seem to stand on a decent grounding will appear shaky when actually submitted before a Court. Yet because this discussion is held in academic confines, I think within these limited environs, it reasonably holds good:)
I eagerly await your response to this and once again thanks for taking time out to go through my annoyingly lengthy posts and comments:) If you don’t mind me asking, are you by any chance from GNLU?
Bests,
J.Sai Deepak.
Hi Kanishka,
I was suddenly reminded of an incident from ancient “mythology” which I felt could serve as an apt simile for putting forth my perspective, and make the discussion livelier as well. The incident has its roots in the stringent laws prevalent those days forbidding the killing of a certain animal. For the purposes of my simile, I shall substitute the animal with an endangered species ‘X’ (lest Mrs. Sanjay Gandhi decides to sue me!).
Now, assume that a female X is pregnant and is on the verge of delivery, simply put she’s due any moment (This is to avoid any confusion about the fact whether life has been conceived). To kill her (X) being illegal, if some Mr.Y kills X, will he be guilty of killing only X or the offspring in the womb as well? And therefore instead of paying only for the killing of X, has to pay for the offspring too?
For our discussion, substitute X with the copyright in the story and the offspring as the copyright in the character which has attained a life of its own (though technically speaking, the offspring in the example has not completely become independent). So if Y infringes the copyright in the story, will he not infringe the copyright in the character which has acquired an independent standing though remaining within the story?
This is more like a part of a whole becoming equal to the whole. Also, what purpose would the copyright in the character serve if it cannot be infringed independently despite the copyright in the story being infringed? Isn’t that one of the benefits of having a copyrightable character? I would be delighted to hear your views on this.
Bests,
J.Sai Deepak.
Hi Kanishka,
I think there’s another way of supporting my view. By now, I am sure you’ll agree that a copyright in the story does not guarantee a copyright in the character. This means that although related, copyright in character does not flow from the copyright in the story if it has to maintain an independent existence i.e. it does not form part of other rights which form the bundle of rights that go on to constitute the copyright in the story. Hence, while infringing a story which has a prominent character deserving of a separate copyright, one would be guilty on counts and therefore liable to pay damages for both. With this, I shall stop and wait for you to respond 🙂
Btw, the “animal” I had in mind in the mythological example was a sacrificial horse…
Bests,
J.Sai Deepak.
Hi Sai,
Once again your comments made me think hard about what I had said, and its validity.
What I had said earlier is obviously inapplicable to incidents where the character only is infringed as opposed to the story.
I agree with your logic, but I believe that copyright exists on characters, simply because they can be infringed ‘independently’ without having infringed any other elements of the original story. I understand that my point of view may appear very narrow and does limit the scope of the subject. But yes, your reasoning does sound quite plausible.
I wonder whether any judicial decision in India or elsewhere have specifically addressed this issue.
Yes, I am a final year student of GNLU.
Hope I managed to be clear in my statements.
Cheers,
—
Kanishka Chakrabarti
Hi Sai,
I did not see your last comment at the time of posting my earlier comment.
I guess that settles the issue, and negates my earlier statement viz. “while proving these separate elements makes the case of the copyright owner stronger, but does not entitle him to accuse the other party of different grounds of infringement and raise the stakes as these elements themselves in totality form the story, for which damages are already being sought”.
I agree with you when you state ‘while infringing a story which has a prominent character deserving of a separate copyright, one would be guilty on counts and therefore liable to pay damages for both’.
Nicely done.
I would still love to hear what the courts say/think about this issue though.
Cheers,
—
Kanishka Chakrabarti
Kanishka could not get her comments through the filters for some reason. She writes to me thus:
“Hi Sai,
Kanishka here, I apologize for posting an irrelevant comment in this blog (Referring to my blog Apradhik Vidhi).
For some reason, the two comments I sent as a follow up to your post on spicyip were not published.
Your last comment absolutely annulled any reservations that I had had to your opinion (the amount of damages may increase by arguing that both story and character have been infringed).
And yes, I am a student of GNLU, scheduled to graduate by the end of April, 2009.
Cheers,
Kanishka Chakrabarti.”
Thanks Kanishka.
Bests,
J.Sai Deepak.
Hey Kanishka, Sorry dude, I referred to you in the feminine 🙂 It’s funny though; I know a person by the same name and it’s a she. Names like Suresh which are generally for men in the South are used by women from Haryana and Punjab. Soumya in the South usually is a girl’s name, whereas in Orissa, it’s a guy’s. So i guess i feel in the same trap 🙂
J.Sai Deepak.
Kanishka,
Pursuant to your query about the decision of a Court on the issue of 2 separate grounds, I went through the Air Pirates case again and following is what I inferred:
In the cases I discussed earlier, the issue of copyright in characters though discussed, does not explicitly clarify one question which is the most important one- when the Court determined in Star Wars that for a character to be copyrightable, it has to be distinctive, did it mean that for the character to be a copyrightable component/part of the story itself it had to be distinctive or is distinctiveness a requirement for an independent copyright altogether? If the former interpretation is accepted, it means that there can be no two grounds of infringement, just one ground which is the infringement of the copyright in the story and that infringing use of a clearly developed character in the story would lead to infringement of the copyright in the story.
If the latter interpretation is undertaken, then we have already seen that 2 grounds may be validly raised. It would be great if you could go through the Air Pirates case to let me know how the logic proceeds.
Bests,
J.Sai Deepak.
Hey Sai,
Was just surfing the net for material on copyright in characters n stumbled on the blog. Something funny met my eyes. In ur hypothetical, u speak of a Devdas adapted in a contemporary Punjabi milieu. Wasn’t DevD was released subsequent to the posts? so can u guys go after Abhay Deol and Anurag Kashyap??? Just a thought 🙂
Priyanka