We all remember our school days where all our popularity depends on the cartoon character on our lunch box. We were not the only one to be enamoured by the flashy and colourful characters. Character merchandising provides copyright owners with an alternative source of economic gain. When we talk about fictional characters, generally those are created as a part of a bigger storyline. They are vehicles that are used by the storytellers to deliver a specific role within the story. However, sometimes some characters stand out and acquire a reputation of their own. These characters can be used for a variety of different jobs and do not need the context of a storyline to derive their meaning.
The benefits of a character operate in leves. On the surface level, the character is only a part of a story and he plays a role within the story. Whereas sometimes, the character’s popularity is so high that it becomes the focus point of the whole story, this is the second level. In the third level, marketing and merchandising has been introduced where once a character has the personality which is distinct from any particular story, it can be used as the subject of advertisement and marketing. Character merchandising is a tertiary exploitation of the IP right in the character. That the said concept was introduced in a case of Nichols Vs Universal Pictures Corp., 45 F.2d 119 (2d cir. 1930) by the Judge Learned Hand, in which he suggested that characters might be entitled to protection when they have an existence independent from a plot of the story. “It follows that the less developed the characters, the less they can be copyrighted; that is the penalty that an author must bear for making them too indistinct.”
Fictional characters often fall in the category of Literary or Cinematographic work. The ability to commercially exploit the personality of a character gives the copyright owner a tangential source of economic benefit. The courts in India have had the few opportunities to decide enforceability in copyright in a character. The Delhi High court in a case of Raja Pocket Books Vs Radha Pocket Books (199717)PTC 84(DEL)) was tasked with the question- whether a owner of a copyright in a comic character could restrain another person from using a similar character in its comic book. While deciding the issue in favour of the plaintiff, the court held that there were significant similarities between the plaintiff’s character “Nagraj” and the Defendant’s character “Nagesh”. The court held that the meaning of both the characters are same i.e. king of snakes; colour of comics is also green, gauntlets are ripped in both the cases, functionally, both are capable of doing the same and similar work, namely, scaling the walls and the roofs alike, hurling snakes, causing the objects to melt and the snakes capable of returning back and merging in the body of the character. For the purpose of climbing both use the same material, namely, rope in the form of a snake”.
Bombay High Court while dealing with the concept of fictional characters in a case of Star India Private Limited Vs Leo Burnett (India) Pvt. Ltd. (2003) 27 PTC 81, the Bombay High court observed that “it is necessary for character merchandising that the character to be merchandised must have gained some public recognition, that it is achieved a form of independent life and public recognition for itself, independently of the original product or independently in the area in which it appears. Only then can such character be moved into the area of character merchandising. This presumes that the character has independently acquired such a reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears.”
Copyright Law protects the fictional characters in a most natural way, the fundamental issue with copyright is that it comes with an expiry date. No matter how indigineous the work is, it expires with a validity and then it will come into a public domain and the rights of the copyright owner extinguish. Trademark law solves this problem, as it grants rights in perpetuity. The only issue is that in order to qualify as a trademark, the mark must be a source identifier. This means that the mark must be capable of distinguishing its mark from those of others. Not every object which may be a subject matter of copyright transcends to a trademark. For example, Disney enterprises have secured trademark protection for many of its characters. The trademark rights in the device of the characters have also been recognized by the Delhi High Court in the case of Disney Enterprises INC. & Ors. Vs Gurcharan Batra & Ors. wherein it was observed that the word and device marks Mickey Mouse, Minnie Mouse, Donald Duck, Daisy Duck, Goofy and Winnie the Pooh are the registered Trademarks of the plaintiff and use of these marks by the defendants in relation to or upon articles, printed materials, teaching materials, stationary etc in the course of their business amounts to an infringement of the Plaintiff’s registered trademarks and passing off of their business.
These rights raise a question of whether fictional characters are subject to the Right of Privacy or not? Personality rights are basically the rights of the person to commercially exploit his/her persona. In this context it is relevant to refer to McCarthy’s on the Rights of Publicity and Privacy (Second Edition) which reads as-
“The New York Court has unanimously refused to permit any legal entity other than a human being to asser publicity or privacy rights under the New York Statute. The New York Statute prohibits the commercial use of the name or pictures of “any living person” and this interpretation seems eminently reasonable. This meaning of living person as restricted to a real human appears clear by the statute’s listing of those entities which are forbidden to make such unpermitted uses, “a person firm or a corporation”. Thus, the statute distinguishes a person from a firm or corporation…… What we cannot do is allow ourselves to be hypnotized by a label like “person”. It is superficial and quite dangerous for a reason that , (1) real human persons have a right of publicity and , (2) the law pretends that the corporations are persons, therefore, (3) corporations have a right to publicity in their identity. The danger comes from expanding the right of publicity beyond its reason for being. Even the most rational and fair legal concept can be so stretched out of shape that a backlash develops, which can bring down the whole house, good and bad alike”.
Delhi High Court also held in a case of ICC Development (International) Ltd. Vs. Arvee Enterprises and Ors. That “Non-living entity cannot be entitled to the protection of the publicity rights in an event, for more than one reasons.
However can it not be argued that even when celebrities are exercising their publicity rights, the persona which is being exploited is a fictitious creation of mind? The persona of public image of celebrities is carefully crafted by a team of experts. When a brand signs on Virat Kohli as Brand Ambassador, it is not just a boy from Delhi happens to play cricket well but in fact this courageous, competitive, confident and bold person that is sought to remote the brand. Be that as it may, one finds himself in ana agreement with the justification given by Justice Surinder Kumar Aggarwal in ICC development (International) Ltd. supra wen he said that fictional characters are already protected under Copyright and Trademark Laws, is there really a need for the protection of fictional characters on the score of personality rights.
Therefore, we can see that fictional characters are entitled to protection under Indian IP regime. The level of protection would depend upon the level of ingenuity and popularity of the character.