Protecting Our Heroes and Villains with Copyright

Introduction

British author and comic book writer Alan Moore once said, “I suppose all fictional characters, especially in adventure or heroic fiction, at the end of the day are our dreams about ourselves.” Maybe that is why these fictional characters often remain with us even after the book or movie is over. These characters may arise out of a literary work (such as Black Panther and Hermione Granger) or movies (such as Rocky Balboa and Gabbar Singh) or both. IP protection granted to these characters are covered by different statutes. The literary, artistic, or cinematographic work surrounding a character could be the subject matter of protection granted by the Copyright Act, 1957. Under the Trade Marks Act, 1999, the names and dialogues of the characters as well as their visual representation can be protected with respect to various goods and services. The question arises whether copyright can subsist in the character itself and not just in the surrounding literary, artistic, or cinematographic work?

Are Characters Copyrightable?

Section 13 of the Copyright Act, 1957 grants protection to original literary, artistic, musical, or dramatic works, sound recordings and cinematographic films. Protecting the work from which a fictional character emanates such as the script, visual representation, books or cinematographic work may not always be adequate, as subsequent adaptations or versions of the work (such as books or performances) may keep introducing new attributes to the character. Since a fictional character is the sum of all the traits and attributes attached with it, it needs to be protected as a whole, irrespective of the fact that individual traits were introduced in different works. Recognizing this lacuna, the Courts in various judgements have declared that copyright can subsist in certain fictional characters, even outside of its surrounding work. These precedents will be discussed during the course of this piece.

Why do Characters Need Copyright Protection?

Creators of fictional characters spend a lot of time, energy, and skills, creating iconic and everlasting characters and imparting a unique identity to them. As a result, these characters have a life and recognition value of their own, which is highly vulnerable to be misappropriated and exploited by others. Also, often a lot of money is spent by creators, producers, or publishers in bringing these characters to life in the form of books, comic books, movies, plays, etc. Therefore, copyright protection is needed for certain characters to encourage creators, producers and publishers by safeguarding their monetary and intellectual investment in the said characters. For instance, the cartoon character Chhota Bheem is highly recognizable. The creators of the cartoon had initially invested Rs. 75 Lakh and over the years, the brand value of the character increased to more than Rs. 300 Crores.[1]

Which Characters Can be Copyrighted?

Time and again, the Courts have held that copyrightability of a character depends upon the uniqueness of such character. If the character lacks distinctiveness such that it is not likely to make an impact on the general public, the character cannot be granted copyright protection[2]. For instance, in the case of Arbaaz Khan v. North Star Entertainment Pvt. Ltd[3] (which discussed the copyrightability of Chulbul Pandey from the Dabang franchise), the Bombay High Court, held “As to the general principal that the character is unique and the portrayal of that character, as also the “writing up” of that character in an underlying literary work is capable of protection is something that I think I can safely accept“.

Further, apart from the doctrine of “sweat of the brow” which forms the basis of all copyright protection, for fictional characters courts often employ “well-delineated test” and “story being told test”:

  1. Well-delineated test – The determining factor for this test is whether or not the character is sufficiently delineated or sufficiently unique or distinctive in its essence. In the case of Star India Pvt. Ltd v. Leo Burnett[4] the court opined “The characters…must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears”.
  1. Story being told test – Through this test the Courts determine whether the character is pivotal to the story being told or is it an ancillary or background character. Only the former is capable of being granted copyright protection and not the latter. This means the story must be centered on the character or the character should have sufficient importance in the story, in order for it to be copyrightable.

Who owns the copyright in Characters?

If a fictional character exists in a literary or artistic work, the author or creator of the work owns the copyright in the character, in the absence of an agreement to the contrary. Further, if the character is created as ‘work for hire’, the copyright therein will vest in the employer and not the author. With respect to a fictional character who is a part of a movie or a television series, the producer has copyright over the character, however, not entirely. Certain rights in the character, falling under the purview of personality rights, vest with the actor portraying the said character. For instance, Robert Downey, Jr. will have certain rights for his portrayal of the Iron Man and Sherlock Holmes. This is because the reputation and distinctiveness of the character is built around the actor. In such cases, personality rights of the actor also exist in addition to copyright of the producer and can give rise to conflict in the absence of a contract governing such rights.

It is interesting to note that the Copyright Act does not expressly recognize such personality rights vested in the portrayal of a character by an actor. On the contrary, Section 38(4) of the Copyright Act, 1957 states that, “Once a performer has consented to the incorporation of his performance in a cinematograph film, the provisions of sub-sections (1), (2) and (3) shall have no further application to such performance.” In other words, once any kind of performance has been added to a cinematographic film with due consent, all rights shall vest with the producer.

Conclusion

Fictional characters are often as real as people with a beating heart and are etched in the minds of readers and cinephiles. Additionally, popularity of characters can often result in extremely high brand value as well as high turnovers, specially by way of merchandising. Hence, it becomes important to grant adequate protection to such significant fictional characters. The Indian jurisprudence on copyrightability of a character has come a long way from the case of V. T. Thomas and Ors. vs. Malayala Manorama Co. Ltd.[5], wherein in 1987 the Kerala High Court had restricted the Plaintiff from claiming copyright over characters and the Defendant was permitted to carry on the exploitation of the characters, even after termination of the employment contract. However, the current copyright regime still seems inadequate to give creators their due. The lacuna is being filled to a certain extent by the precedents set by Courts, as they are forming the guiding path for development of this jurisprudence.


[1] https://www.licenseindia.com/archives/article/how-chhota-bheem-has-scaled-upon-brand-licensing

[2] Raja Pocket Books v. Radha Pocket Books, 1997 (17) PTC 84 (Del)

[3] Arbaaz Khan v. North Star entertainment Pvt. Ltd,  2016 (67) PTC 525 (Bom)

[4] Star India Pvt. Ltd v. Leo Burnett, 2003 (27) PTC 81 (Bom)

[5] V. T. Thomas and Ors. vs. Malayala Manorama Co. Ltd., AIR 1989 Ker 49

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Is acquiescence the opposite of constant vigilance?

Author: Aditi Roy Chowdhury

Introduction

With the advancement of internet around the world, international borders are constantly shrinking and access to goods, services and information globally is increasing exponentially. A consequence of the global village we all now live in is the rapid increase in piracy and counterfeit goods. Trademark owners must now exercise greater vigilance and invest substantial amount of time, money and energy in protecting their valuable intellectual property on an international scale. A delay in taking steps towards enforcement of their rights might not only result in monetary loss but also affect goodwill and reputation of the trademark owner. In such a situation, it is pertinent to understand the consequences of delay and whether delay by itself amounts to acquiescence of trademark rights.

What is the defense of acquiescence?

The Merriam-Webster dictionary defines the term acquiescence as “passive acceptance or submission”. With respect to the law of trademarks, acquiescence is a defense wherein one party has assented to use of a trademark, trade name, etc. by another party, thereby surrendering the right of exclusive use. In the Trade Marks Act, 1999 (the Act), the doctrine of acquiescence is dealt with under Section 33(1), which reads as-

Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark –

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.

We can see from this provision that the essentials to claim a defense of acquiescence are: (1) that the mark must be registered; (2) the subsequent proprietor should have used the mark for continuous period of 5 years; (3) the earlier proprietor should be aware of such use and acquiesce to the same; and (4) the subsequent proprietor should have adopted the mark in good faith. If a subsequent proprietor can satisfy each of these criteria, the earlier proprietor will be precluded from enforcing its rights against the subsequent proprietor. This defense of acquiescence can be availed in opposition and rectification proceedings as well as in a civil suit. The question, however, arises as to what amounts to acquiescence and whether it is the same as mere delay or inaction.

Are delay and laches the same as acquiescence?

Delay and laches are equitable defenses, which can be broadly be defined as an unreasonable delay in pursuing a right or claim by one party in a way that prejudices the opposite party. There may be delay in approaching the Courts or Registrar, because the earlier proprietor may not be aware of the subsequent proprietor’s infringing use or the former may consider such infringement as not being serious enough to injure business and demand immediate action. Further, laches and delay, though often used together are not synonymous. The concept of laches was explained acutely by the Delhi High Court in the case of Cable News Network LP, LLLP (CNN) v. CAM News Network Limited [2008 (36) PTC 255 (Del)]. The Court in this case held that –

‘Mere passage of time cannot constitute latches, but if the passage of time can be shown to have lulled defendant into a false sense of security, and the defendant acts in reliance thereon, laches may, in the discretion of the trial court, be found’. It would follow, logically, that delay by itself not sufficient defense an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to laches.”

Therefore, if the earlier proprietor sleeps on its rights and takes no action against use of a mark, such that the subsequent proprietor acts upon it and it causes prejudice to the latter, the court can deny the request for equitable relief.

Acquiescence, on the other hand, implies consent by an earlier proprietor, expressly or impliedly. Delay is said to be only a facet of acquiescence. Delay by itself, however, may not be necessarily be a ground for the defense of acquiescence. The difference between these concepts can be understood with more clarity with the help of some judgments of the Indian judiciary.

Courts’ stance on acquiescence

The principle of acquiescence has undergone a lot of deliberation by the Indian Courts. It has been established now that delay or inaction alone is not sufficient to establish that the earlier proprietor has abandoned its rights. There needs to a positive act or encouragement which implies assent on part of the earlier proprietor. For instance, in the case of M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. [1995 (15) PTC 165 (SC)], the Apex Court all the way back in 1995 held that –

Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches.” (emphasis added)

In certain judgements, however, the line between acquiescence, delay and laches did seem to get a little blurry. For instance, in the case of Jolen Inc v Doctor & Company [2002 (25) PTC 29 (Del)] the Delhi High Court in 2002 held –

In trade mark cases the plea of acquiescence is therefore available only if the defendant succeeds in proving that the plaintiff has been not only standing by but also turning a blind eye for a substantial period. If the defendant succeeds in proving the aforesaid conduct of the plaintiff, then the plaintiff cannot be allowed to trample upon and crush the business or the trade set up by the defendant.

In 2014, the Bombay High Court took up the issue of acquiescence in Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd. [2014 (60) PTC332 (Bom)]and held that –

A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence.”

In other words, the court was of the opinion that acquiescence is not mere negligence or oversight as there must be an abandonment of the right to exclusivity.

In 2017, the Bombay High Court again elaborated the difference between acquiescence and delay vide its judgment in the case of Torrent Pharmaceuticals Limited v. Wockhardt Limited & Anr [2017 (70) PTC 215 (Bom)], wherein it held that –

“Delay is not to be confused with acquiescence. The latter implies knowledge, and where knowledge of the defendant’s mark and product is shown and this is coupled with a long period of inaction against the alleged invasion of a claim of exclusivity, it is no answer to say ‘there is no positive act’, for acquiescence is also not explicit consent, but is silent assent. Mere inaction is not acquiescence either, but prolonged inaction coupled with the knowledge of an invasion of that right might well be.”

Conclusion

While it is an established principle that ‘equity aids the vigilant and not those who slumber on their rights‘, it is not fair to expect trade mark owners to take action against all infringers everywhere, as soon they are discovered. The Courts have clarified that for the defense of acquiescence to be applicable, the subsequent proprietor has to show positive acts and encouragement, thereby establishing express or implied assent of use of the mark by the subsequent proprietor. Prolonged period of inaction, on the other hand, may attract the defense of delay and possibly laches if resultant prejudice to the subsequent proprietor can be proven.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Damages Awarded for Software Piracy, Published in INTA Bulletin

Author: Aditi Roy Chowdhury

ALG Associate Aditi Roy Chowdhury reports the Delhi High Court’s decision in Microsoft Corporation & Ors. v. Satveer Gaur & Anr. [CS (COMM) 1324/2016], in the INTA Bulletin (Law & Practice) in her piece titled ‘India: Damages Awarded for Software Piracy’ – available here

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Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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