This article is written by Chandana, from The Tamil Nadu Dr Ambedkar Law University (SOEL). This is an article that deals with character merchandising under the Copyright Act, 1957.
Table of Contents
Introduction
As kids, we used to adore watching our favourite cartoons like Mickey Mouse, Donald Duck, Scooby-Doo and many more. Behind the scenes, there is an intellectual who creates such cartoons and has the exclusive right to exploit those characters and prevents the third parties from their misappropriation. Characters have a high economic value whether they are expressed in the form of words or graphics. To prevent such exploitation by third parties and to encourage the intellectuals to create more unique works, there is a need to enact legislation which specifically deals with Character Merchandising.
History of character merchandising
The credit for the success of Character Merchandising goes to Walt Disney Studios in Burbank (California). This company was the first company to create cartoon characters like Mickey Mouse, Donald Duck etc. One of the employees in the company exploited these characters in the form of badges, t-shirts, toys and, to his surprise, it became a huge success and paved the way for granting him the licence to manufacture and distribute the merchandise. In India, the exploitation of characters has been in prevalence even before the twentieth century. The religious characters such as Rama, Vishnu and Sita have been depicted in the form of puppets, toys and sculptures. Character Merchandising grew drastically in the twentieth century.
Character merchandising
The term Character consists of:
- fictional humans or characters (Tarzan or James Bond);
- non-humans (Donald Duck or Bugs Bunny): or
- a real person (depicting famous personalities of film, music or the sports industry).
In simple words, the term character merchandising implies the use of either the name, picture, voice or statements of real and fictitious personalities to promote the sales.
Character Merchandising can also be defined as “the adaptation or secondary exploitation, either by the creator of the fictional character, real person or any authorised third parties, of the essential personality traits of a character such as a name, image or appearance in relation to various goods and services with an aim to gain prospective customers, acquire those goods or use those services due to the customer’s affinity with that character”.
Few illustrations of character merchandising are:
- Walt Disney’s production of products like posters, toys and t-shirts.
- Any toy which is a three-dimensional reproduction of fictional characters like Mickey Mouse.
Types of character merchandising
There are three types of character merchandising:
- Fictional characters’ merchandising
- This type of character merchandising is one of the oldest and best-known forms of merchandising.
- In this type of merchandising, the fictional characters, which have gained a reputation and goodwill over a period of time, are exploited and used to entice the consumers to buy such a product or a thing.
- For example, cartoon characters like Mickey Mouse or Donald Duck, artistic works like Pinocchio or Cinderella etc.
- Personality merchandising
- It is also known as reputation merchandising.
- In this type of merchandising, a real person’s name, image or voice is exploited so as to advertise the product or goods.
- For example, when Virat Kohli (cricketer) advertises for Adidas, the merchandisers believe that one of the prime reasons for the huge popularity and sale of the product is because of the fan-following of the cricketer and not the product itself.
- Image merchandising
- It is a recent form of merchandising.
- In image merchandising, the actors, who work in either fictional films or television series, are exploited using distinctive elements of a film or services.
- The core difficulty in image merchandising is that the general public fails to differentiate between the actor and the character that he or she is portraying.
- For example, the character ‘Mike Ross’ played Patrick J Adams in the well-known series “Suits”.
Legal protection of character merchandising
- Till date, no country has enacted a sui generis or one of kind legislation for the protection of character merchandising.
- Also, there is no international treaty that deals with Character Merchandising.
- In order to protect the character merchandising, each country has to rely on different legal texts they have adopted.
- The Intellectual Property Laws supplements the national laws in the protection of character merchandising.
Copyright and protection of characters
- Article 2(1) of the Berne Convention provides protection to literary and artistic work.
- Section 13 of Copyright Act, 1957 allows protection of literary, artistic, musical or dramatic work, sound recording and cinematographic film.
- A fictional character may be protected under the literary work, and its performance may be protected under the dramatic work and can be granted performers’ rights.
- In order to enjoy the protection under the Copyright Act, 1957, the work should consist of the following elements:
- The work should be original;
- There must be some expression of an idea; and
- It should exist in some material form.
- Copyright law gives protection to the owners and creators of the character. The term of the Copyright Protection is his lifetime plus sixty years from the beginning of the calendar year following the year in which the author dies, and after this period, the work goes into the public domain.
- In order to gain copyright protection for fictional characters, they must seem distinct in the eyes of the public.
- When a character is protected, it not only protects the physical appearance of the character but also all the incidental things like the appearances, traits etc.
- The uncertainty, which lies in the Copyright Act, 1957, failed to determine whether the unauthorised use of a graphic character would result in copyright infringement if the new work contained only the character and not the other attributes of the first work.
- Countries like the U.S.A have followed the Character delineation test and story being told to determine whether “Character” should be granted copyright protection.
- India is in dire need to adopt such tests in order to avoid future uncertainties in the determination of character.
Copyright and protection of the graphic character
In Warner Bros Inc. v. American Broadcasting Co., the court held that while determining whether a character in second work infringes a cartoon character or not, the courts, generally, take into account not only their visual resemblance but also the totality of characters, attributes and traits”.
It is said that a graphic character cannot be protected as an artistic work. Copyright can only protect the visual expression of the depicted creature and not the character and personality evolved from various episodes created by the artist. The personalities of the character cannot be protected, under copyright law, as an artistic work.
In Detective Comics v. Bruns Publication, the defendant created a character called ‘Wonder Woman’ which was similar to the well-known character of “Superman”. The court held that the defendant had infringed the plaintiff’s copyright protection by copying more than the general types and ideas from the character of Superman. However, the court refused to grant protection to the general ideas.
In Walt Disney v. Air Pirates, the defendant portrayed Disney’s character in an incongruous setting. The court undertook a two-step test to determine whether the defendant infringed the plaintiff’s character or not. First, the court should determine whether there are any visual similarities and then they are to look into the personalities of cartoon characters at the same time analysing them.The court had to perform character delineation tests. Character delineation test checks whether the particular character is sufficiently and distinctly delineated so that it warrants protection. The only possible way to protect the graphic character is to check, in each case, whether the characters are unique or distinct. Without any uniqueness, it is impossible to bring them under the legal purview.
In VT Thomas and Ors. v. Malayala Manorama, the plaintiff presented fictitious characters, Boban and Molly, through the cartoon pages of Malayala Manorama magazine. After quitting the services of Manorama, Tom started publishing the cartoons series in other magazines. The court held that works published by Tom, as the author of Manorama, will pass on to him. It was held that the artistic work performed as an employee, during the course of the employment, passes on to the author. The process comes to an end and termination is one such situation. But for future works, Tom is free to draw and can give life to his painting.
Copyright protection of the fictional character
The copyright protection of fictional characters signifies that there should be the same characteristics as that of a graphic character. In many commentaries, a question was raised as to what constitutes a protectable fictional character? To answer this question, David B. Feldman wrote “A fictional character has three identifiable and legally significant characteristics and they are- physical or visual appearances, physical attributes and personality traits. In Warner Bros. Pictures v. Columbia Broadcasting, a system was developed to determine whether the character story being told was adopted or not. The court said that character is not protected under copyright law unless the character is well delineated so as to constitute the story being told. The story should revolve around the particular character which is to be protected. But the difficulty in following this rule is that it would exclude other characters from the orbit of copyright protection.
Case laws on character merchandising
Raja Pocket Books vs. Radha Pocket Books (1996)
Facts of the case
In this case, the plaintiff published the first comic series under the name “Nagraj”, in March 1986, which instantly became popular among the younger generation. The central character in the comic series bore the same name (Nagraj) as the title of the comic series. The plaintiff described the character in the comic book as attired with a green colour (bodystockings) and red trunk with a belt which looks like a snake. It was clear that the plaintiff had copyright protection for the book as well as a fictitious character created by him. As the owner of the copyright, he has the absolute right to print, publish, and sell the book. The defendant also published a comic series titled “Nagesh” which was similar to that of the plaintiff.
Judgment
The court came to the conclusion that the defendant had infringed the plaintiff’s copyright. The defendant is liable under Section 55 of the Copyright Act, 1957. The court further restrained the defendant to take up any activities under the impugned character name as that of the plaintiff. The Copyright Act protects the character and character’s name. The decision of the court was based on the fame of the character and the public’s reaction to the distinctiveness of the character.
Diamond Comic Pvt. Ltd. and Anr. vs. Raja Pocket Books and Ors (2005)
Facts of the case
In this case, the plaintiff’s company is the leading publishing and printing company of comic books called Diamond Comic Limited. The defendant entered into an agreement with the plaintiff, giving the latter the assignment right to publish the character ‘Shaktiman’ in the form of a comic book. The plaintiff abided by the instructions given by the defendant and brought several comics books with the character named Shaktiman. When the defendant comic book gained a reputation, they started manufacturing their own comic book. The plaintiff received the notice from the defendant to terminate the assignment deed. As per Section 19(a) of the Copyright Act, 1957, the assignor of the copyright cannot unilaterally revoke or withdraw the assignment and also cannot reassign the same to any other person.
Judgment
The court passed a mandatory injunction against the defendant and restrained the defendants from publishing, printing or circulating the character in the form of comic books.
Conclusion
Character Merchandising has started to gain popularity due to commercial exploitation. Steward Goldsmith said that “Good Merchandising will always take the consumer from deciding whether they are going to buy to which they are going to buy.” The Intellectual property law is not sufficient to protect the uncertainties which are involved in protecting the character merchandising.
References
- https://www.wipo.int/export/sites/www/copyright/en/activities/pdf/wo_inf_108.pdf
- http://lawtimesjournal.in/character-merchandising/
- https://shodhganga.inflibnet.ac.in/bitstream/10603/132510/14/14_chapter%206.pdf
- http://nopr.niscair.res.in/bitstream/123456789/14770/3/JIPR%2017%285%29%20454-462.pdf
- http://copyright.gov.in/Documents/CopyrightRules1957.pdf
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