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September 16, 2020

Protecting Our Heroes And Villains With Copyright

Author: Aditi Roy Chowdhury

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.

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