Copyright-ing Fictional Characters: Bombay HC Permits Release of ‘Rangoon’

There is an interesting copyright dispute brewing at the Bombay High Court over the newly released movie ‘Rangoon’. Wadia Movietone Pvt. Ltd. (Wadia) filed a suit against the director of the movie, Vishal Bhardwaj for alleged copyright infringement regarding his new film, Rangoon. Unfortunately, the order uploaded onto the Bombay High Court website does not go into the factual background, or the arguments made by the parties, but permits the conditional release of Rangoon. Justice K.R. Shriram stated that while he was inclined to grant an injunction preventing the release of the movie, he would refrain from the same if the Defendants furnished a bank guarantee of INR 2 crores with 10% interest before March 4, 2017. The remaining issues in the suit are yet to be argued.

As per media reports, Wadia argued that ‘Jaanbaaz Miss Julia’, the character played by Kanagana Ranaut (picture on the left) was based on ‘Fearless Nadia’ a character in their 1935 movie ‘Hunterwali’ (picture on the right). Fearless Nadia was played by Mary Ann Evans, who adopted Nadia as her screen name and acted in her first movie in 1933, and her last in 1968.

The Indian Express reports that Wadia pointed out 19 scenes in the posters and trailers that resemble Fearless Nadia in Hunterwali. Now that the full movie has been released, I imagine that they will be able to add to their arguments on infringement.

Copyright Infringement of the Script

Another vital fact that media reports highlight is that Wadia had shared a script on Fearless Nadia with UTV and Vishal Bhardwaj in 2006, which was then rejected. In 2008, Wadia reportedly licensed the rights to Fearless Nadia to a German firm. Mid-day reports that UTV Disney was planning on making a film on Fearless Nadia in 2015, which fell through. Wadia contests that Rangoon is ‘the same film now revived’.

There have been several cases that have dealt with copyright in films. Somewhat similar to this fact situation, is the famed 2003 Bombay High Court judgement of Zee Telefilms v. Sundial Communications. Differentiating the T.V serials of the  and Defendants, (‘Krishna Kanhaiya’ and ‘Kanhaiya’) the Court noted that the Sundial had given Zee detailed concept notes, character sketches, and the detailed plot of the first episode, and eventually approached Sony Entertainment when they didn’t hear back from them. Soon after, they received news of the Zee’s production of a very similar T.V serial. The Court relied on R.G. Anand v. Delux Films to hold that Sundial’s serial was not simply an idea, but qualified for copyright protection as it had been given ‘embodiment in tangible form’ and had been developed into concept notes, character sketches and plots. Hence, the Plaintiffs were held to have successfully established a claim of copyright infringement by inter alia showing substantial similarity between the two works.

Subsequent cases have seen similar factual scenarios – Zee Entertainment v. Gajendra Singh (Bombay High Court, 2007), and Twentieth Century Fox Film Corporation v. Zee Telefilms (Delhi High Court, 2012) are a few examples of the same. In the present case, should it be proved that Vishal Bhardwaj had access to the script of the film that was proposed in 2006 – it is possible that a case of copyright infringement may be made out, if Rangoon is proved to have borrowed from that script.

Copyright Infringement of Characters

Mid-day reports that the allegations include the copying of not only Fearless Nadia’s ‘copyrighted character’, but also her costume, poses, and catch phrase of “Bloody Hell!”.  It is important to note that the character of Fearless Nadia has appeared in a number of movies, the most prominent being Hunterwali. Analysing this claim, the preliminary question to be answered is whether fictional characters qualify for copyright protection. We have covered this debate before –  last year, I wrote on the possibility of copymark- a hybrid right to protect fictional characters, and Prateek brought us his two-part analysis on the issue (read here and here).

Section 13 of the Copyright Act (‘Act’) provides that copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films, and sound recordings. It does not expressly provide protection for characters that are created in, and subsequently developed secondary characteristics due to their roles in the works that they were created in. Courts however seem to have impliedly accepted that the copyright protection that is afforded to the work extends to the characters created as well. The Kerala High Court in the 1989 decision of Malayala Manorama v. V.T Thomas held that Thomas retained copyright in the characters as he incorporated them in his cartoons before he entered into employment. The Court did not first discuss whether the characters qualified for individual copyright protection.

In 2010, the Delhi High Court in Raja Pocket Books v. Radha Pocket Books (read J. Sai Deepak’s post here) dealt with a claim of copyright infringement that centred around a character ‘Nagesh’ that was said to infringe the copyright of a character ‘Nagraj’. Here as well, the Court did not deem it necessary to delve into whether fictional characters possess copyright. The 2003 Bombay High Court case of Star India v. Leo Burnett is an important case for character merchandising as well – the High Court recognised – albeit as obiter dicta – that copyright subsists in fictional characters, . Additionally, one of the considerations for the holding in the above discussed Zee Telefilms v. Sundial Communications case was the similarity in the characters in the two serials.

While Indian Courts are yet to lay down the conditions for a fictional character to qualify for copyright protection, American Courts have formulated a few tests that are currently in use. Nichols v. Universal Picture Corp. is credited for the ‘Character Delineation’ test that essentially states that a character will qualify for copyright protection if it is ‘distinctly delineated to qualify as protectable expression’, and ‘developed in sufficient detail’. Another popular test is the ‘Story Being Told’ test that protects only those characters that are essential in the relaying of the story, as developed in Warner Bros. Pictures Inc. v. Columbia Broadcasting System. While some courts have dismissed the second test as being too restrictive, both tests are generally considered in order to determine whether a character as developed in a copyrighted work qualifies for copyright protection.

In my opinion, such tests are necessary in order to prevent restrictions of use on generic characters that would otherwise be in the public domain, or for those characters that are scenes a faire, or necessary in a work of a particular genre. Circling back to the present case, should Fearless Nadia’s character be seen to qualify for copyright protection, then her characteristics will need to be compared to Jaanbaaz Miss Julia’s to decide this claim of copyright infringement. We hope to see another development in this case soon, and will be crossing our fingers for the Court to finally lay down conditions under which fictional characters will qualify for copyright protection.

I’d love to hear from our readers on this, please do leave a comment below!

 Image from here.

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