Open Access Research Article
Protection Of Fictional Characters Vis-À-Vis Trademark Laws In India And The Us (By: Ashlesha Shrivastava)
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Article Details
Protection
Of Fictional Characters Vis-À-Vis Trademark Laws In India And The Us
Authored By: Ashlesha Shrivastava
LLM (Sp. IPR), Gujarat National Law
University
B.Sc. LLB (Hons.), Gujarat National
Law University
Abstract
Fictional characters have long served
in public minds as marks of association for particular works or companies or in
certain cases even people, simultaneously they have also been subject of
imagination in new settings and contexts by the public. In such situations it
becomes imperative to protect such characters, especially when their
unauthorized use can lead to confusion in the public. This article explores the
protection of such fictional characters under trademark law in the US and India
on basis of statutes and case laws. Furthermore, the article goes on to draw a line of
difference between protection afforded by trademarks and copyrights in respect
of such characters. The article concludes that while both trademark law affords
protection, it is lacking and has voids. It is suggested that, the trademark
law and copyright law compliment and supplement each other to a certain extent
, hence a combination of both the laws needs to be used to for optimal
protection and for minimizing the voids in protection of such characters. Fictional
and Graphic Characters are typically protected by copyright in the context of
the work they are featured in. Even though such characters can never be
completely removed from the original work they were first featured in, as the
work and plot elements will always form a part of their personality,
mannerisms, and physical description, the readers can often associate and
identify the characters independent of the work featuring them. For instance,
characters such as Sherlock Holmes, Tarzan, Mickey Mouse, Superman, etc. are
better known than the works in which they appear. Even people who haven’t watched
any of the films featuring James Bond would associate him with Agent 007. A
character may thus live in the general perception of the people, detached to a
certain extent from any individual work.[1] A
fictitious character contains not only components of creative expression
protected by copyright, but also the capability to function as a symbol of
identification and attract public favor in the marketplace.[2] In
such circumstances, it becomes difficult to protect characters merely by
copyright law and this is where a trademark comes into play. The law of
trademarks deals with a character's ability to represent a specific origin of
goods or services, rather than with its qualities of development and
individualization.[3]
This article aims to provide an
overview of the protection provided by trademarks to such protection in the US
and India, while analyzing the relationship between trademark law and copyright
law in the same context. The author suggests that while both trademark and
copyright laws provide protection to the fictional, the most efficient method
of protecting such characters would be a combination of both.
Protection Of Fictional
Characters As Trademarks In US And India
In the United States of America, trademarks
are governed by both, the state common law and federal statutory law. The
Lanham Act of 1946,' provides protection to qualifying marks and registered
marks. According to the US Supreme Court interpreting Lanham Act, requirements
for a mark to qualify as a trademark' are as follows:
“(1) a 'symbol,'
(2) 'use[d] . . . as a mark,'
(3) 'to identify and
distinguish the seller's goods from goods made or sold by others,' but that it
not be 'functional”[4]
Section 43(a) of the Lanham Act states that:
“Infringement occurs when: any word,
term, name, symbol, or device..., or any false designation of origin...
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin, sponsorship, or approval
of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or
promotion, misrepresents the nature, characteristics, qualities, or
geographical origin of his or her or another person's goods, services, or
commercial activities ....”
Section 43(a) of the Lanham Act thus
emphasizes on preventing the instances of marketplace misunderstanding in
regards to the point of origin or association of any particular goods and
services and it focuses on protecting distinctive marks and those which as a
result of this distinctiveness are easily recognizable by consumers. Trademark
law, therefore, asks for not only the distinctiveness of the mark but also,
that the mark has an ‘established in a given priority marketplace.[5]
While a fictional character cannot be
trade marked for its own protection alone,[6] it
may act as a symbol or mark when used to indicate the origin of a product. This
is due to the above-noticed emphasis of trademark law on the protection of
marks associated with a source in a marketplace and the prevention of consumer
confusion.
Trademark law generally
utilizes a two-prong test when it comes to the protection of fictional
characters as trademarks:
“1. The character must achieve a secondary
meaning
2. The creator must show a likelihood
of consumer confusion”[7]
The first test is a test of
‘Secondary Meaning’, When a character has obtained “secondary meaning,"
the infringement leads the consumer to assume that the owner/creator has
licensed the use of that character for production, merchandising, etc.[8] As
Anderson observes "Secondary meaning is an association in the minds of
the buying public between the name of the product and product itself or its
source”[9]
For instance, Disney is instantly
identified as a source of Mickey Mouse. Mickey Mouse therefore has attained a
secondary meaning.
This protection might, nevertheless,
miss the mark for characters identifiable with more than a one work,
defeating the objective of giving trademark protection, i.e., identifying the
source of the products and preventing ambiguity in the minds of consumer with
respect to the as source.[10]
Furthermore, only those aspects of a
character that enable the public to connect the character with a particular
origin may be protected under trademark.[11]
Elements which have been held protectable by courts in various cases are as
follows:
1. Character Name
In case of Wyatt Earp Enterprises, Inc. v. Sackman, Inc.[12] despite the fact that Wyatt Earp was an
actual person as well as a historical figure, it was concluded that the
plaintiff had established secondary meaning and thus had the right to trademark
protection in the name "Wyatt Earp." The court acknowledged that the
character's name's commercial value was almost entirely attributable to a
television program created by the plaintiff, as well as the plaintiff's
substantial and proactive licensing program, that drove ‘Wyatt Warp’ into
mainstream discourse and public imagination. The secondary connotation
created by the plaintiff's utilization of the Wyatt Earp name entitled the
plaintiff to prohibit the defendant from promotion and sales of the Earp
costumes post expiry of the license.[13]
In another case of, Patten v. Superior Talking Pictures[14] he
defendant was using a fictional character called Frank Merriwell in their film.
The plaintiff had created 1236 stories based on a character by that name. The
characters of the plaintiff and defendant bore no other resemblance in their
personalities. However, the court determined that the name of the character had
already become exclusively associated in the public mind with the plaintiff's
authorship and enjoined the defendant from using the name under unfair
competition principles.
It is thus clear that when protecting a character’s name as a
trademark, the court looks into whether the character has attained a secondary
meaning in the mind of the public and whether the name is associated with a
particular source by the public.
2. Costumes Worn by Characters[15]
Costumes are an important element for
fictional characters, especially when there is a graphical or visual
representation of the same. For instance, anyone who has read or watched Harry
Potter will instantly associate a red and gold striped scarf with a lion
figure with Gryffindor's house, or
someone who follows comic books will associate a Spiderman costume with Marvel.
This is because costumes have a special visual and aesthetic appeal which makes
them an important element of characters.
The court in Warner Bros. Inc. v.
Rooding prohibited the proprietor of a movie theatre from diving from a
helicopter costumed as Batman on the day of the movie's premiere. The day the
stunt was done and of the stunt demonstrated to the court defendant's clear
intent to abuse the plaintiff's rights in the trademark "in the form of
a Batman costume"[16]
3. Phrases or Slogans Used by/in context
to the Fictional Characters
Catch Phrases such as Bugs Bunny’s
“What’s Up Doc?” (registered trademark) or the phrase "Look, up in the
sky, it’s a bird, it’s a plane, its Superman," is closely connected with
the character and public has come to associate them with the characters.
Phrases are especially important when it comes to character merchandising as
their use can cause public confusion, even when other elements of the character
are not in use.
In the Unlimited Monkey Business[17] case,
the court considered the promotional use of the “It’s a bird, it’s a plane”
phrase as a persuasive factor in deciding that the defendant had
misappropriated D.C Comic’s trademark in Superman
4. Visual Representation of Character’s
Character visual representations are
also protected under trademark law.
For instance, in the case of Conan
Properties Inc. v. Conans pizza Inc., the defendant's "Conans
Pizza" chain, whose dishes, signage, promotional materials, and overall
atmosphere featured a barbarian-like man who closely resembled the plaintiff's
"Conan the Barbarian" character, was found to have infringed on the
image of the trademarked character.
It was concluded that the eateries'
strong, unmistakable ambiance of Conan the Barbarian could lead clients astray
and make them believe that the establishment was connected or authorized
by the owners of the particular character in question.[18]
Similarly, in Warner Brothers v.
American Broadcasting Company, the court stated that the picture of a
cartoon character and its certain attributes can serve as a trademark to
indicate the source of an entertainment product.[19] Following
this decision, the aesthetic appearances of fictional characters have been
frequently safeguarded.[20]As
a result of the above-stated cases it is clear that the courts have started to
acknowledge fictional characters' unique potential to serve as a
source-identification symbol.[21]
Moreover, where a character becomes
associated with specific work in public consciousness courts usually restrict
others from the usage of the character in subsequent fictional works. Trademark
protection is granted to such well-known characters on the premise that the
public would assume that the creators of the original work produced, or at the
minimum approved, the subsequent work.[22]
In case of DC Comics, Inc. v.
Unlimited Monkey Business the characters of Superman and Wonder Woman were
protected from unauthorized use in new works, namely the singing telegram
business.[23] The
court stated that -
“The exploitation of well-known
fictional characters through merchandising agreements has become almost
universal, creating a public expectation that merchandise displaying elements
of a fictional character is at least sponsored by the owner of the character.”[24]
Thus, the court determined that the
characters in question were distinct and unique marks due to their "universal
recognition," "widespread popularity," and "extensive
goodwill." The court determined that there was a possibility of
confusion and granted relief based on the acquired distinctiveness of the marks
and the resemblance of the defendant's singing telegram mark.
Under Indian Law, trademarks are
protected under Trademarks Act 1999. Trademarks are protected under Indian law
by the Trademarks Act 1999. According to Section 29 of the act, a registered
trademark proprietor can preclude others from using a deceptively similar or
identical mark on goods and services without the owner's authorization. The
authors or owners protect their rights and the goodwill associated with their
character by registering it as a trademark under the Trademark Act of 1999.
They can also profit commercially by licensing their use of a trademark to a
third party.
The passing-off remedy can be
claimed in the case of an unregistered mark based on the following factors: the
creation of goodwill in the trademark, the defendant's abuse, and the
plaintiff's loss of business or harm to reputation as a consequence of the
infringement of the rights in the mark.
In the case of Disney
Enterprises Inc. & Anr. Vs. Santosh Kumar &Anr.[25] the Delhi High Court
ruled the respondent accountable for promoting products featuring Hannah
Montana, Winnie the Pooh, and other characters. The applicant possessed
merchandising privileges. The Court determined that there was a strong
connection between the applicant's claims and the aforementioned characters,
which is why any mention of these characters instantly brings to mind the
applicants to the consumers.
Trademark
Protection: Fails And Saves
Even though
fictional characters are traditionally protected by copyright law, trademark
law provides several advantages over its character protection. One of them is
broader protection. While copyright protection exclusively protects fictional
characters in the context of literary work, trademark law offers protection to
the character even when it is observed outside the context of the original
piece of work featuring it. Thus protected "elements" are broader
under a trademark than a copyright regime and as discussed above can at times
be inclusive of elements like the name, aesthetic visual appearance and
outfits, character-related utterances, and even signs, emblems, and design
features.[26]
Trademark protection of fictional
characters further gives multiple advantages to both the consumer and the
trademark holder.
As observed by Foley, such protection “reduces
consumer search costs and consumer confusion while at the same time providing
incentives for trademark owners to maintain quality and promote goodwill”.
However, when fictional characters cease to function as a marker for
distinguishing the source work, granting trademark protection to such
characters takes away such fictional characters from the public domain
needlessly.[27]
On the same note, a pitfall presented
by the employment of the above-discussed test for granting trademark protection
to the fictional character is that a fictional character is unable to obtain
protection unless it has acquired a "secondary meaning." Such a
requirement while capable of protecting the well-established characters is
ineffective and often forms a void in instances where such protection is
required by new characters, unsuccessful works, most literary works, or even
well-established characters that are not associated with a particular source in
the public mind.[28]
Saphn goes on to observe that even if
a character develops wide recognition such protection may be denied if the plaintiff
fails to show that a possibility of confusion amongst the public exists.
Trademark, therefore, places increased burdens of proof on the creator and may
still not protect many characters or character elements.[29]
It should be emphasized that even
though copyright law and trademark law are often discussed in exclusion of the
other while discussing the protection of fictional characters, the protection
offered by them does not exclude the other, due to differences in the
objectives of protection. Kurtz observes that -
“The law of trademarks .... is not an
alternative basis for protecting a character as literary property. Copyright
protects creative expression, which allows the public to benefit from the
labour of authors. It is not necessary to provide additional incentives, under
the law of trademarks … to persuade authors to create or to encourage
investment in the production of original expression. When using the name or
other identifying indicia of a character is likely to confuse the public and
lead to the appropriation of good will, however, trademark …. provides a more
flexible form of protection than copyright. Unlike copyright, it does not
provide protection for a fixed term, but only as long as a character or its
distinctive elements continue to signify a single source to the public.” [30]
Kurtz has further observed that
“…. unlike copyright protection,
which exists as soon as the work containing the character is fixed, protection
under trademark … is granted only when a newcomer's use of the plaintiff’s
character is likely to cause public confusion. The remedies provided under the
law of trademarks and unfair competition are also more flexible than those
provided by the copyright”[31]
It is therefore clear from the above
observation that the nature and object of protection afforded by copyright and
trademark is different, and therefore while it might be tempting to pit the two
intellectual property regimes against each other as they are often done, using
them in a cohesive IP protection strategy and will prove to be of a greater
benefit.
As Foley states -
“The life cycle of the
intellectual property protection of fictional characters can be broken down
into two distinct stages. The first stage involves concurrent copyright and
trademark protection, while the second stage involves trademark protection
persisting after the expiration of the copyright term.”[32]
An important concern regarding
affording concurrent protection to fictional characters under both copyright
and trademark regime is the excessive removal of fictional characters from the
public domain post expiration of the term of copyright as well as possible
disruption of ‘The doctrine of Fair Use’[33].
Conclusion
Therefore, the discussion above clearly shows that
fictional characters can be protected under trademark law if they have attained
a secondary meaning and are associated with a single source. While trademark
protection does have some concerns attached to it, it can serve as a strong
source of protection for both the public and the trademark creators/owners,
especially when seen in the context of character merchandising and the rapid
growth of fandom culture. It is therefore submitted that the trademark law can
be used concurrently with the copyright law to form a cohesive and strong IP protection
strategy for fictional characters.
Article Information
Protection Of Fictional Characters Vis-À-Vis Trademark Laws In India And The Us (By: Ashlesha Shrivastava)
Authors: Ashlesha Shrivastava
- Journal IJLRA
- ISSN 2582-6433
- Published 2022/09/23
- Volume 2
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
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