We are happy to bring our readers Devika Agarwal’s first post in the 2nd Annual SpicyIP Fellowship applicant series. Devika is a 4th year student at RML National Law University, Lucknow and brings us an interesting post on the question of copyrightability of characters.
UNKNOTTING THE ‘GUTTHI’ OF ARTISTS’ RIGHTS
The exit of ‘Gutthi’ from ‘Comedy Nights with Kapil’, a comedy show aired on Viacom18, was tragic for all those who are faithful viewers of the show. Adding to their woes was the public notice issued by the producers of the show on 23rd November:“A certain artist and a stand-up comedian associated with the programme Comedy Nights With Kapil aired on Colors television channel is planning to launch or be associated with other shows…. Take notice that Viacom18 has sole, exclusive, absolute and unlimited ownership rights of all the intellectual property rights of the artist associated with the programme including the rights in the format of the programme.”
This means that the character of Gutthi which all of us have come to know and love can no longer be essayed by Sunil Grover on any other show.
While Sunil Grover, [Many of you might remember him as ‘Sud’ from ‘Hassey ke Phuarey’ on Radio Mirchi] the actor who plays Gutthi, declined to comment on the issue, fellow artistes had their two cents to offer with many opining that Gutthi had become popular because of the efforts of the actor playing it and therefore, the copyright on the character should belong to the actor and not the channel. Further, according to Suni Grover, he had Gutthi on other TV shows prior to his stint on Comedy Nights with Kapil and Viacom18 was erroneously claiming that they had created Gutthi. [Sunil Grover had played Gutthi on an earlier show ‘Comedy Circus’.]
This lays bare an important issue of copyrightability of characters played by artists and whether the intellectual property rights lie with the artist or the producer.
It is important to note clause 2 of section 38A of The Copyright Act, 1957 which in relevant part is produced below:
“Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film, he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film.”
S. 38A(2) makes it abundantly clear that the performers’ rights detailed in s. 38A(1) are enjoyed by the producers of a cinematographic film once an artist’s performance is incorporated in the film. This position was also emphasized in Fortune Films International v. Dev Anand. The rights under s. 38A(1) include the right to make a sound or visual recording of the performance and the right to broadcast or communicate the performance to the public.
However, the instant case involves an issue unanticipated by the 1957 Act – ‘whether the right to “copy” the character in a subsequent different show where the character is played by the actor who had originally played the character, is a right of the actor?’, i.e., Will Viacom18 be unsuccessful in restraining Sunil Grover from portraying the role of Gutthi on another show?
A similar case on the issue was decided by the Kerala High Court in Malayala Manorama v. V T Thomas [AIR 1989 Ker 49] where a publishing house was injuncted from claiming ownership over the characters created by the cartoonist before joining the publishing house and the Court held that the publishing house could not restrain the cartoonist from continuing to draw the cartoons after leaving employment. This is because the characters had been created by V T Thomas before joining Malayala Manorama and the publishing house had no role in the creation of the characters. The publishing house was also restrained from drawing the cartoons after terminating V.T. Thomas’ employment.
The Kerala High Court did not directly address the issue of copyrightability of characters but it decided the issue of ownership of copyright on character; one may therefore conclude that copyright on character could be claimed successfully by the cartoonist. [See more here].
An important distinction made by the Court was between ownership of the characters per se and ownership of the cartoon strips made by V T Thomas while he was gainfully employed by the publishing house; while the former was a right vesting in the cartoonist, the latter would be considered property of the publishing house.
The character delineation test’ (popularly known as Nichols test) laid down in Nichols v. Universal Pictures is a yardstick to determine copyrightability of a character in United States. The test is to see whether a character is sufficiently evolved in the mind of the reader/viewer so as to warrant legal protection, i.e., the character must be distinct and must not be a “stock character” (typical characters such as ‘girl next door’, ‘angry young man’ etc).
One might also argue that the public notice such as the one that Viacom18 issued also violates article 19(1)(g) of the Indian Constitution; this is because, in restraining the artist from replicating Gutthi on any other show, Viacom18 is interfering with the artist’s right to livelihood.
Though this case is extraordinary with arguments equally strong both for and against the rights of the artist, the decisive element is the additional fact that Gutthi had already been played by Sunil Grover prior to Comedy Nights with Kapil. This means that the producers did not play a role in the creation of the character and therefore, would most likely not be able to claim ownership over Gutthi.