Giving Due Protection To Fictional Characters: The Possibility of ‘Copymark’

Our Spicy IP fellowship applicant Inika, brings us an interesting post on protecting fictional characters through copyright and trademark law.  This is Inika’s third submission for the fellowship.

Fictional characters are born of larger creations, whether they come from literary, artistic or cinematographic works. It is unfortunate that copyright, or trademark law do not make allowances of special protection for these characters that, more often than not, supersede their original works to be known independently. Prominent examples include Superman, Sherlock Homes, Tarzan and the like.

Characters may be differentiated into graphic, and fictional. A graphic character is simply one that can be depicted by a cartoon, or another form of graphic representation. On the other hand, a fictional character is a word portrait of which the physical appearance and characterization reside in the mind of the reader. Since images are more identifiable than literary descriptions, pictorial characters are easier to protect independent of their original context. David B. Feldman goes as far as to opine that fictional characters’ are the second-class citizens in the world of intellectual property.

In Nichols v. Universal Pictures Corp., Judge Learned Hand, almost in passing, offered the possibility of copyright law protecting fictional characters independent of their plot, should they be distinctly delineated. As it has come to be known, the Character Delineation Test prescribes that more developed the character, the more it embodies expression, and less a general idea. And hence, the more developed a character, the more likely it is to be copyrightable. Through interpretation by successive courts, the determination of infringement now lies in a two-part test: Whether the character’s expression is sufficiently delineated to be copyrightable; and, if it is, whether there has been an infringement of this expression.

Perhaps out of frustration, and lack of clear of standards, there emerged a second test to determine the copyrightability of fictional characters. It was in Warner Brothers Pictures Inc. v. Columbia Broadcasting System, that the Story Being Told Test was proposed. Its basic premise is that if a character is not a prominent part of relaying the story, it is not copyrightable, and others may use the character without infringing on a copyright. The character should, constitute the story being told, as opposed to only being “a chessman in the game of telling the story.” Never really accepted by jurists, this test has been construed as too high a bar for copyright protection; and for most practical purposes, effectively excludes characters from copyright protection.

While the protection of fictional characters has generally been associated with copyright protection, increasing commercialization has meant that the intellectual property in these characters is no longer limited to the artistic works that created them, but has extended to associated goods and services, which has benefited tremendously from the immense appeal and popularity of these fictional characters. This is a phenomenon known as character merchandising. The obvious consequence of the fact that the goodwill of these characters performed both, source-identifying as well as promotional functions meant that in most cases, they have been protected with trademarks. Indeed, the Bombay High Court, in Star India (P) Ltd. v. Leo Burnett (India) (P) held that the characters to be merchandised had to have achieved a form of independent life and public recognition for itself, independent of their original products, area or milieu in which it first appeared.

While suggestions such as widening the ambit of statutory copyright law to include fictional characters have been made, the proposal of instituting a new form of intellectual property, a hybrid of the rights guaranteed by Copyright and Trademark – ‘Copymark’ is one that is yet to be explored. Where copyright law protects the author’s bundle of rights in a work, trademark law protects both the consumers and mark holders – however, they are functionally different in the particulars of the protection that they provide. Although the term ‘Copymark’ has been thrown around, it was Gregory S. Schienke, who hypothesized ‘Copymark’ as a solution to the current dilemma of character protection.

Though copyright law is appealed to for protection, what the owner is attempting to protect is not always the character’s copyright, but also the goodwill that the character has built up over the years. Schienke suggests that, since a fictional character exists in the two legal worlds of copyright and trademark, the implementation of such a scheme would be the best way to tackle the problem. The basis of ‘Copymark’ protection, he states, is to acknowledge a trademark in the copyrighted work, a hybrid to fill the void between the two.

He lays down requirements that characters would have to meet to qualify for such protection:

1. It must have originated in a work available for copyright registration ­
2. It must be in use for commercial purposes
3. It must have been in use for a minimum of five years
4. The character must be famous – This is the essence of ‘Copymark’ – that the character is so well known, that it must, necessarily, qualify for protection. The fame of the mark, according to Schienke, would be adjudged by statutory law, as is provided for in the Federal Trademark Dilution Act.

‘Copymark’ protection would be advantages on a few levels. Firstly, copyright law acknowledges the assumption that, generally, the value of a creative work decreases with time. By granting protection to famous characters through trademark law, the original works become almost superfluous. Secondly, ownership of the character cannot be lost as long as it is in use. This is an area of concern for the owner of copyright. What if the work in which the character first appeared has entered the public domain, but the character still appears in subsequent works? And of course, ‘Copymark’ assures protection of a character as it evolves over the years of its existence. In 1938, Superman was a “vigilante character willing to battle social injustice.” Today, Superman has been referred to as something of a “boy scout” due to the Intellectual Property protection and fame it has achieved.

However, reasons to disfavour ‘Copymark’ are quite prominent. The clearest being that it would provide infinite protection, and harm the public domain if measures are not put into place to avoid such a situation. The law needs to strike a balance between maintaining the incentive to create works while making sure that these works eventually enter the public domain. Perhaps, when a mark loses its fame and is not recognised in a commercial capacity any longer, it could lose its ‘Copymark’ protection. Requisites similar to the four mentioned above could be the basis of examination by courts, altered by the law of the fora in which it is being implemented. I am not of the opinion that the existing copyright law is sufficient for what these characters have evolved into, but at the same time, a blanket ‘Copymark’ provision would do more harm than good.

Image from here