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Introduction

Graphic and fictional characters have become a larger part of daily life over the past decade. Characters like Batman or the Joker have sprung from pages and animations to mainstream Oscar-nominated films, while companies like Disney own large arrays of fictional and graphic characters. These intellectual properties (“IP”) rake in billions in revenue, with Avengers: Endgame being the highest grossing movie of all time up until 2020. High profitability from mainstream characters attaches vast potential to all similar upcoming characters. These characters can either be graphic or fictional. A graphic character is embodied by graphic characterizations like cartoons whereas a fictional character may not necessarily be embodied graphically, it is depicted through words. The physical appearance and characterization of fictional characters occurs in the mind of the reader. The appearance of such characters in live-action movies, portrayed by actors, creates a nexus between the graphic and fictional realms.

This warrants the existence of a regime which maintains a system of protection for such IP. This article explores the current regime of IP protection, focusing on copyright protection, for such characters through analyzing Indian and international legal precedents.

How To Protect The Characters?

IP Protection for such characters is possible through the use of copyrights, trademarks and personality rights. Ownership of the character also plays a major role. For example, the popular character Spider-Man, was created by Stan Lee for Marvel Comics. Spider-Man has since become one of the most recognizable characters in the world, selling films, television shows, toys and other merchandize to make massive profits. The film rights to the character rest with Sony Pictures whereas the rights to its graphic novels rests with Marvel and the rights for its toys rest with a different entity. This forms the basis of various conflicts based on different kinds of rights being possessed by different parties.

  1. Trademark Protection Trademark protection is applied when the work is distinctive and can be used to identify the source of a particular good. It can be used to protect any symbol, design or expression which can be used for identifying or distinguishing the source of a particular work from others. A character cannot be granted trademark protection on its own, but it may be granted protection for other aspects. A character’s name may be trademarked if it’s the same name as the title of a book, movie or series. Additionally, the essential personality features of any fictional or real person may also be protected as trademarks, including their image, signature, designs, voice, and their catch-phrases. A claim for infringement can be made on these grounds if it is shown that the use of a character or its attributed element can cause confusion or dilute the character’s brand and commercial value. Similar feats of trademark protection can be seen in the cases of trademarking the Lone Ranger’s catchphrase, ‘Hi-yo! Silver Away’ or the case of trademarking the character of ‘Munna Bhai’ from the ‘Munna Bhai MBBS’ and ‘Lage Raho Munna Bhai films.’
  2. Protecting Personality Rights Personality rights mean a right of a person related to his or her personality, they can be protected under right to privacy or as a property of the person. They may also apply to fictional characters due to commercialization of merchandise, so that prospective customers are led into buying such merchandise in lieu of their adoration for the character.When an actor’s image is built upon the character they play, the character becomes inseparable from the actor. This results in the producers of the project now owning complete rights to the character in order to fully utilize the personality rights of the actor. A similar situation was observed when a comedian, Sunil Grover played the character of “Gutthi” on a show called Comedy Nights with Kapil, telecasted by Colours, which was also the producer of the program. After Sunil left the show, the producer issued a statement saying that the copyright over “Gutthi” rests with them. Sunil countered by stating that people associate him as “Gutthi” and he has received fame and recognition through the use of this character and thus, he owns the personality rights over this character. This dispute remains pending till date.
  3. Copyright Protection Copyright protection is applied when the work is original, creative and fixed in a tangible medium and it can be used to protect works of authorship which ranges from books or songs to recordings and motion pictures, among other examples. This protection comes in the form of the right to control derivative works, reproduction and distribution of the work, among others.

Copyrightability Of Characters

A fictional or graphic character is entitled to be protected by copyright only if it can be distinctively recognized by the public and not merely by the work it was featured in. In the context of India, the Bombay High Court, in the case of Star India Pvt. Ltd. v. Leo Burnett 2003 (3) BomCR 655held that a character must be recognizable publicly, “having acquired a form of independent life from the original product or independently of the area in which it appears”. The same criteria apply for the character to be termed as a commodity and to be merchandised.

Protecting graphic characters is different from protecting artistic works, copyright law can protect the particular visual expression of the character depicted through the drawings, but the character and its personality evolve through time, in various episodes and by different artists. The moods and personalities of the character cannot be protected as “artistic work” under copyright law.

Considering the established case laws for copyrightability, internationally, various courts seem to have followed a more lenient approach towards granting protection to characters which possess tangible visual elements, as compared to purely literary characters. In Detective Comics v. Bruns Publication, the matter was concerned with determining whether copyright protection should be granted to graphic characters. The defendants had created a character similar to Superman, called ‘Wonderman.’ The court held that the defendants had copied “more than general types and ideas” from Superman while also appropriating pictorial and literary details from the complainant’s copyrighted material.

In the case of Walt Disney v. Air Pirates, the defendants had portrayed Disney’s characters in ‘incongruous settings.’The court established a two-step test to determine copyright infringement. The first step constitutes determining the visual similarities of the characters and the second analyses the personalities of the characters if the results of the first step are inconclusive.

In India, the case of Malayala Manorama v. V T ThomasAIR 1898 Ker 49recognized protection for such characters, indirectly. The publishing house in question was not allowed to claim ownership over characters made by a cartoonist before he joined the said publishing house. The Court stated that the publishing house could not restrain the artist from continuing to draw the cartoons after leaving their employment. The characters had been created by the artist and the publishing house played no role in it. The publishing house was also restricted form appropriating the cartoons after terminating the artist’s employment. Even though this case did not directly address the issue of copyrightability, it did refer to the issue of ownership of the copyright for such characters.

In Sholay Media & Entertainment Pvt. Ltd. v. RGV Production Pvt. Ltd., the Delhi High Court held that intentional and deliberate act of creating a remake of the film Sholay, from 1975, with its exclusive copyright vesting with Sholay Media and Entertainment Pvt. Ltd makes RGV Production guilty of infringement and for misusing the characters Jai, Veeru and Gabbar Singh.

  1. Story-Being-Told Test A second test for determination emerged through the case of Warner Brothers Pictures v. Columbia Broadcasting System, called the Story-Being-Told test. According to this test, if a character is not a prominent part of carrying the story forward, it is not copyrightable. The character should constitute the story being told, instead of only being a “chessman om the game of telling the story.” However, this test was construed as being too high a bar for copyright protection, effectively excluding characters from copyright protection.
  2. Character Delineation Test The analysis of the personalities of such characters is done through a test known as the Character Delineation Test, established in the case of Nichols v. Universal Pictures. This test considers ‘whether the particular character is sufficiently and distinctively delineated so that it warrants protection.’ Granting a copyright protection becomes less likely if the character in question is less developed or too indistinct. The character must be sufficiently developed, to the extent that it possesses a unique individuality and personality like no other character. A graphic character is easier to perceive than a purely fictional one and consequently easier to protect due to its unique and specific features.In Arbaaz Khan v. Northstar Entertainment Pvt. Ltd. Suit (L) No. 301 of 2016,the Bombay High Court granted copyright protection to the character of Chulbul Pandey from the Dabangg films, stating that the character in question is unique and has his own style. This made the character ‘one-of-a-kind’, unique and distinguishable from the rest of the film.

Conclusion

In the past two decades, India has grown to cover a major part of the market for such characters, becoming one of the largest consumers of their content and merchandise. In a parallel fashion, India has created its own popular characters within the likes of Munna Bhai, Don or even Chhota Bheem. Our growth in this sector now warrants a need for our country to create a robust mechanism for preventing infringement and protecting such IPs. Unique and distinguishable characters can be granted protection and their ownership rights create complex problems due to different aspects of the IP being owned by different entities. The present IP protection regime in India does not contain any express provision or category for covering such complexities and issues. It is essential, today, to safeguard such IPs to prevent misuse and protect the artists and the consequent revenue generation.