This article has been written by Somya Babel, from Auro University, Surat, Gujarat.

Abstract

Considering the rapid growth in the technology and greater approach to the electronic mediums such as mobile phone, television, etc., Character Merchandising is used as a significant tool for marketing and promotion by garnering the attention of the masses through the use of the image or reputation of the famous character, which is admired by everyone, on their products or services. To achieve the targets and earn profits, the image, voice, or face of these characters are often exploited for unauthorized commercial use. This infringes the intellectual property rights of the owner by stepping onto his creativity, innovation, hard work, and privacy. Personality Merchandising is a type of Character Merchandising where the image of the actual celebrity is exploited rather than his character on the screen which has gained the reputation of its own amongst the masses. In various countries, the merchandising features of a fictional character and a real person have advanced into a great source of income. The specific law dealing solely with Character Merchandising is still not present and hence, it has to be protected under the purview of the Intellectual Property Right Law such as Copyright, Trademark, etc, with other general laws. Therefore, it is important to preserve the rights of the owner from this commercial exploitation quality control. This paper shall deal with the ownership as well as protection for Character Merchandising and its conflict with Trademark law as well as dual reputation.

Keywords: Character Merchandising, Personality Merchandising, Infringement, Marketing, Unauthorized Commercial Use, Reputation.

Research Questions

Question 1– Who is the owner? Just because a person is a public figure, does he lose all his right to privacy?

Question 2– To what extent can we protect Character Merchandising and Personality Merchandising?

Question 3– Why is there a conflict between Trademark Laws and Character Merchandising?

Introduction

There are several famous fictional characters which have influenced the kids and the entire market because of their charm and bold personality such as ‘Mickey Mouse’, ‘Donald Duck’, ‘Cinderella’, ‘Snow White’, ‘Barbie’, ‘Chota Bheem’, etc. They do not only fascinate the customers with their glamour but also help the manufacturers and the producers generate revenue out of it after using it on their products and services to attract the customers and sell it. These characters are not only used for the books or the movies but they are often commercially exploited after granting a license by merchandising them after using the famous character’s face or voice on the products or services to sell them quickly such as using cartoon characters on the water bottles, lunch boxes, school bags, etc. which garners the attention of the majority of the customers. This is known as Character Merchandising which aims at using a real person’s or a famous character’s image and face to sell the products to the customers. 

Apart from Character Merchandising, Personality Merchandising has also made a great place for itself in the industry where the manufacturers or the producers use the face or voice of the real persons such as famous sportsperson, singer, musician, actor and other people who are considered to be the celebrities of the society and holds a significant influence on the people through their work. 

When a manufacturer uses that person’s face to sell his product or ask that celebrity to advertise their product then trust is formed in the eyes of the customers which urges them to buy that particular product rather than choosing a simple yet similar kind of product. With such commercial usage of these characters’ identity, often the rights of the creator and the owner are infringed because of the unauthorized commercial usage. Their rights need to be preserved because the creator puts in efforts, time, money, and creativity to make it a success. And, the people often exploit their hard-work without giving proper credits and royalty to these creators. This not only discourages the creator but also diminishes their creativity level. This paper shall discuss the creators and ownerships of these characters, the infringement of the rights, and some considerable suggestions which can be inculcated in our legal system to prevent this infringement. Also, the research questions won’t be dealt separately but shall be covered in the subsequent chapters of this paper.

Reasons for the growth of Character Merchandising

Since a few decades, the growth of character merchandising has boomed in the industry due to various reasons. The essential reason for the growth is as follows:

Growth in tech-savvy customers with access to technology such as televisions, radios, internet, etc.

With significant growth in the number of people having access to the technology, it has become easy for them to reach out to anyone or anything with a tap on their respective screens as it’s just a click away. There are special channels for the kids who they happily watch and are often tempted by the endorsements made by their favorite celebrity or cartoon character. For example, a kid whose favorite character is ‘Shinchan’ would always prefer the products which are either endorsed with his image or are sold by using his face on the notebooks rather than choosing that similar notebook of a different brand at a similar price but with no character on it. Character merchandising gives a new identity to the products with higher leverage.

Character merchandising as an effective marketing tool.

It is often used as a marketing strategy by the producers to garner the attention of the customers to buy that particular product which has been endorsed by their favorite celebrity. For example, Amitabh Bachchan performed the iconic song ‘Sar jo tera chakraye’ to endorse Navratna Oil. Now, most of us might not even like the smell of it in the first place or might not even know its basic purpose but would still like to buy that oil because of the influential personality of the actor. Using these celebrities to endorse the brands increases their content viewership and makes it more loyal in the eyes of the customers. This helps the creators in moving a step ahead of their competitors in the industry

Ownership of Rights for Character Merchandising

“The rights attached to a character (being a fictional character as such or the fictional character portrayed by a real person in connection with image merchandising) are in principal owned by the creator of that character unless the creator has transferred his rights, was commissioned to create, created in the course of his professional activity for his employer or has died. In the case of personality merchandising, the rights attached to the real person concerned are, in principle, owned by the said person.”¹

Instances of Character Merchandising Cases in India

Star India Pvt. Ltd v. Leo Burnett² (2003)

The Defendants established a consumer product ‘Tide Detergent’ which was broadcasted with the title ‘kyonki bahu bhi kabhi saas banegi’. It consisted of a similar concept of the characters as that of the daily soap’s family members of the Plaintiff. At the first instance, it can be seen that the one is not the exact copy of the other and there is no substantial similarity which defies the concept of substantial test here. As the Plaintiffs were not able to establish the damage which has occurred in the present or might occur in the future, the case was pronounced in the favor of the Defendant that no infringement has taken place.

Diamond Comic Ltd. & another v. Raja Pocket Books & Others³ (2005)

The most famous character ‘Shakitman’ was owned by the Defendant who asked the Plaintiff to convert this character into a comic by granting him the rights. Later, when the character was admired by everyone and became famous then the Defendant initiated the comic manufacturing on the same character. The Hon’ble Delhi High Court concluded that the Defendant have no right to exploit the Plaintiff’s comic because it leads to copyright infringement.

Disney Enterprises & Anr. v. Santosh Kumar & Anr. (2011)⁴

The merchandising rights of Hannah Montana, Pooh, etc. were owned by the Plaintiff which was used by the Defendant without any license or permission. Hence, the Hon’ble Delhi High Court made the Defendants liable for misrepresenting the customers that these characters belonged to him and using it without the permission of the owner.

Protection for Character Merchandising

“The celebrity images are built up, especially in the movie and show business industries, with great pain, effort and investment. But these carefully built up “images” quite often are open to much vulnerability owing to the popularity factor itself. It cannot be fully safeguarded under the provisions of the laws of trademark or copyright. The trademark law may be sufficient to protect a name or a particular image but it does not provide for any safeguards for protecting the reputation of a person or a fictional character from unauthorized commercial exploitation. Similarly, the law of copyright may protect a photograph or drawing of an individual as an artistic work but not the image of the individual himself.”⁵

Right of Publicity

“Right of publicity is concerned with one’s ability to control the commercialization of his image.”⁶ It means that every person has the marketable property but only that person shall determine the extent of utilization which needs to be done with his image/goodwill. No other person can use it without his consent. It is important to explore this right and advance it in our legal system to protect the efforts and money of the artist but it is difficult because it is not much recognized.

Though there isn’t any specific law related to character merchandising, there are certain laws which protect the rights of the owner and the creator.

The Constitution of India, 1950

In R Rajagopal Vs State of Tamil Nadu, the SC held that no one shall be deprived of his right to privacy. Article 21 can be applied in case of exploitation of image or goodwill as a person’s consent has to be there for advertising or non-advertising.

The Trademarks Act, 1999

Section 102 and 103 states that you’d be liable for imprisonment and penalty as it is an offence if you deceptively use any trademark or apply it on any goods or services without the prior permission of the owner.

The Indian Copyright Act, 1957

“Section 2 (d)(v) of the Copyright Act declares the producer of a cinematographic film as the author of that film and gives him exclusive right to make copies of the film or any photograph from any image from that film within the meaning of Section 14 (d) of the Act. If we take a look at Section 38(4) of the Act, it states that once a performer has consented to putting his performance in a cinematographic film his right over the performance does not subsist further. In other words, once any kind of performance has been added to a cinematographic film with due consent, all rights go to the producer.”⁷

Consumer Protection Act, 1986

Section 2(1)(r) of this act could be applied which states about the Unfair Trade Practice. For example, the seller might endorse his product or service after using the celebrity’s image, face, or voice. In this case, the customers would buy that product on a pretext that the celebrity is affiliated with a particular brand.

Also, in India, the advertisements are governed by the Advertising Standards Council of India (ASCI) which makes it mandatory for the advertisements to be decent, legal, harmless, original, and honest. The list of the provisions mentioned above in these acts is not exhaustive. Thus,  there are various statutes and laws available in India which preserves the privacy and publicity rights of the citizens because there isn’t any treaty or Convention or law even in the International sphere which shall help us set the basic outline for the guidelines to safeguard the rights of the creators after the exploitation of the unauthorized use.

Dispute between Character Merchandising and Trademark Law

The trademark laws are inherent in nature as they are only connected with the goods or service but nothing else. They lack the merchandising properties. For example, in case of any infringement, the trademark laws will not be able to protect the character as a whole but would only protect the part where that character/celebrity is affiliated with the product or the service. In Chorion Rights Ltd. v. Ishan Apparel & Ors, the plaintiff owns activities concerning the merchandized character of Noddy around the globe. The Defendants, on the other hand, has registered their trademark with the same name as that of the Plantiff even before them and are operating in the clothing sector. The Plaintiff filed a suit against the Defendant but the Court held that since the Plaintiff is not able to establish the claim of being a prior user and the Defendants had already registered it, the injunction cannot be granted. “It was concluded that if a trademark owner wants to go for merchandising he has to accordingly protect his mark for relevant goods and services so as to provide extra protection.”⁸

Conclusion

It is important to check the current laws with a fresh outlook and develop a better path which shall be advantageous to the celebrity who can enjoy the stardom without any obstacle as well as the creators who can make the most out of their work after investing their time, money, and creativity in it. In such a case, where we don’t have any specific legislation, we may create a Dispute Resolution Guide to ascertain the solution regarding these cases. It is mandatory to strike a balance between preserving the rights of the individual’s as well as maintaining the competition in the market. Also, the significance has to be given to the Right of Publicity so that only the individual can decide the extent of content which needs to be endorsed. All that matters is good merchandising because a customer shall always determine as to what, why, and when a product has to be purchased from one brand and not by the other.

References

1. The International Bureau, Character Merchandising, World Intellectual Property Organization (WIPO), WO/INF/108, December 1994.
2. Star India Pvt. Ltd v. Leo Burnett (2003) (2) BomCR 655.
3. Diamond Comic Ltd. & another v. Raja Pocket Books & Others (2005) 125 DLT 35.
4. Disney Enterprises & Anr. v. Santosh Kumar & Anr, CS(OS) 3032/2011
5. Manoranjan, Character merchandising and personality merchandising: the need for protection: an analysis in the light of UK and Indian laws, Entertainment Law Review, Page 2, March 2012.
6. Estate of Elvis Presley v Russen (1981) 513 F Supp 1339 at 1353.
7. Ishan Sambhar, Character Merchandising, Singh & Associates, August 2019.
8. Chorion Rights Ltd. v. Ishan Apparel & Ors., 2010 (43) PTC 616 (Del).

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