Property In Fictional Characters

Introduction

All of us are familiar with Bugs Bunny, Mickey Mouse, Sherlock Holmes, Superman, Batman, Captain America – all characters invented by someone and found in movies, cartoons, books or comics. Those from movies or comics have a graphic representation that we can see while those from books have distinctive characteristics that we gather from ‘word portraits’.

Thus, Bugs Bunny and Mickey Mouse are graphical or pictorial characters. Sherlock Holmes is a literary character. Superman, Batman and Captain America are a combination of both graphical and literary characters.

In our modern business world, the commercial exploitation of such characters is a huge and very profitable industry. Best sellers and box office hits have resulted in licensing of such characters for endless types of products and services, both in physical form and in electronic media. In Singapore, the recent crackdown on unauthorised downloads of anime is a stark example of industry protecting its commercial exploitation against ‘misuse’ by others.

Before moving further into the discussion, it is important to take note of a difference between a graphical character and most other forms of visual art – the character has the ability to evolve and take on a ‘life of its own’ while most forms of visual art are static. The character, which include its name and images, can be in a variety of different settings, postures and characterisations other than that originally depicted by the creator. This expands the scope of commercial exploitation (and thus the value of the character) with licensing programs for children’s toys, posters, animated cartoons, fast food restaurants and clothing. Because character development and the exploitation of any particular character is driven by commercialisation and profits, the issues of ‘property ownership’ and ‘intellectual property protection’ are paramount.

Therefore, we must begin by asking whether a character may be owned as intellectual property, and if so, how may the owner protect that character from being exploited by others. A related issue will then be the extent of the protection for that character: Can ‘new’ variations of its original depiction also be protected?

The legal protection of graphical characters is currently more defined than that for literary characters. The objective for the creator and/or owner of a character should be to cloak that character in a protective envelope that combines the benefits of copyright, trademark and even anti-competition laws. The overlapping protection provided by these areas of law has one commentator concluding that such convergence can result in a new body of law formulated to protect characters [1].

The interplay of, among others, the following factors have resulted in this convergence: (1) the profits that can be made from commercialising these characters and their variations which arise from new postures, settings and characterisations that differ their original depiction; (2) the ability of the characters (as least in their graphical form) to be trade marks that are recognised by trade mark laws in many countries; and (3) the ability of the characters, through extended use (by time and by the myriad of products and services on which the character is depicted), to create an image in the minds of the readers/viewers that is more vivid than life such that the character is almost human.

Protection of Graphical Characters

Suppose there is a new comic book project. The main character is based on an idea that the creators believe has enormous commercial potential; not just as a character in a comic book, but in other media formats and merchandising activities. As the creators develop their character, it takes on the essential characteristics that provide a character’s uniqueness: a name, physical appearance, and attitude or character traits.

Will the law protect the character in the comic book? If the character is used outside of the comic book, will it still be protected? In this digital age, it is very rare to see a popular cartoon character in only one medium. It is not unusual today to find a character that makes its first appearance in a comic book or in a film to be immediately, if not concurrently, licensed for toys, other products and services, and being exploited in other media formats. What should the creators do to protect their character? As a result of the commercial implications, a broad-based protection policy is necessary – the creators often practice ‘overkill’. This means the character should be protected by a combination of copyright, trademark and competition laws.

Protection of Literary Characters

Even though most stories and plots are forgotten, the characteristics of a literary character frequently remain fixed in a reader’s imagination; this fixation may then provide the true underlying value of a particular literary work or series. Because of such underlaying value in a literary character, the creator and/or publisher should always take steps to ensure that the literary character is protected, especially if there may be a possibility to use the literary character in book sequels, or for licensing the use of the literary character for films, television programming, electronic or other media or merchandising. It is only by maintaining control and protection of the literary character that revenue streams may be maximized for the creator/publisher of that character. The value of such protection can be seen in the many ‘unofficial sequels’ to well-known and well-loved classics based on the continuation of the main characters of the story.

The primary difference between the literary and graphical character is that the physical appearance and characterisation of the literary character resides in the imagination of the reader and is continually being developed in the reader’s mind by the author’s description of the character as the story unfolds. This is in contrast to the graphical character where the physical appearance and characterisation are visually apparent. This difference it is extremely significant when evaluating the scope of protection that is available for literary characters This is because for literary characters, no two minds will see a particular character in the same way. The protection problem may also exist when a later graphical representation of a literary character is portrayed very differently than from the word portrait that initially appeared.

Copyright Protection

The Copyright Act provides creators and/or owners of fictional characters copyright protection that is strong, but of limited duration. It is important to remember that the copyrightable expression of a character is much more than just the character’s physical appearance, and that it includes the specific name, physical appearance, and character traits of that character.

The copying of a particular literary character has occurred if one uses identical or substantially similar language to describe the character, but what more frequently occurs is a taking of the more abstract character traits and elements that only conjure up a mental image of that character for the reader. In reality, none of the verbally described characteristics of the literary character are as dominant as the visually depicted characteristics of a graphical character and therefore the copyright law distinction between an unprotectable idea and protectable creative expression may prevent copyright law from protecting the literary character.

With that said, what exactly can be copyrighted? Can another person use the character outside the usual character traits that is associated with that character? Because there are no cases in Singapore, we have to look elsewhere, notably USA, for hints as to the possible answer.

In Warner Bros., Inc. v. American Broadcasting Cos. [2], the US court noted that “in determining whether a character in a second work infringes a cartoon character, courts have generally considered not only the visual resemblance but also the totality of the characters’ attributes and traits.” More will be said about this case later.

In a similar but earlier case, Detective Comics, Inc. v. Bruns Publications [3], the US court found that the character Superman was infringed in a competing comic book publication featuring the character Wonderman. The court found that the infringing work “appropriated the pictorial and literary details embodied in” the copyrights protecting Superman.

Later cases appear to suggest that the similarity in the graphic depiction of a character alone, without the plot elements, may be sufficient for copyright infringement.

In Walt Disney Prods. v. Air Pirates [4], the infringers admitted copying the names and appearances of the characters, but placing them in very different situations than those used by Disney, ie in adult, counter culture comic books. The court rejected the infringers’ defence.

Another issue is whether copyright laws can protect a particular character once that character has taken on a life of its own and the character is no longer existing in the original context in which it first appeared? This is important because copyright laws do not protect an ideal but protects the expression of that idea. The court will never protect the idea of any man with super powers but will protect the character of Superman.

In the USA, courts apply what is known as the “character delineation” test, ie. whether the particular character is sufficiently and distinctively delineated so that it warrants protection. The character’s appearance and personality must be specific and unique.

This is especially important for the protection of literary characters which involves two questions:
(a) First, was the character as originally conceived and presented sufficiently developed to command copyright protection?
(b) If so, secondly, did the alleged infringer copy such development and not merely a broader and more abstract outline?

Trademark Protection

Another way to protect the graphic character, even if the character is protected by copyright, is to protect it under trademark laws which will protect the character from being used by another party without authorisation when the character functions as a form of identification of a product or service and commands public acceptance and recognition. This protection could prevent the exact duplication of the trademark owner’s character or the imitation of that character where the likely result is to cause public confusion, mistake or deception with regard to source of the products or services that is identified with the character.

The main advantage of protection under the trademark regime is a potentially perpetual protection. The term of protection might last indefinitely if the use of the trademarked character is properly protected and maintained.

Trademark laws will not permit a graphic character to be trademarked solely for its own protection. The character must be associated with a product or a service that uses the character as a mark.

The main disadvantage in using trademark laws to protect characters is cost. Trademark protection is territorial, ie registration is required for each territory protection is sought. It is also limited to the class of products or services it is associated with. Registration is thus required for each of such classes in all the territories. Furthermore, any changes in the appearance of the graphic character could destroy the original trademark protection and will therefore require additional trademark registrations to ensure that the current appearance of the graphic character remains protected.

The critical issue in proving trademark infringement is the “likelihood of confusion” and whether consumers are likely to be misled or confused as to the source of the products or services bearing the indicia of the trademarked character. For example, if ABC Company published its own comic book that used the names and likenesses of Disney or Warner Brothers cartoon characters, are consumers confused into believing that Disney or Warner Brothers published that comic book? If the answer is “Yes”, there is infringement.

Trademark laws can also be used together with competition laws and tort laws to prevent wrongful use of a fictional character by: (1) misrepresentation, (2) false sponsorship, and (3) misappropriation.

Misrepresentation occurs when a party represents that a particular character is associated with their product or service, when, in reality, it is not.

False sponsorship occurs when a party indicates that a particular character has endorsed its product or service when it has not.

Misappropriation, which may be most relevant with the protection of characters, occurs when a party in essence steals another’s character in order to associate it with their product or service.

If such misuse of a graphical character occurs and a “reasonable person” is of the opinion that the graphical character had been misrepresented, used falsely as a sponsor, or misappropriated then the party engaged in such misuse could be found liable for damages.

Convergence Of Protection

In the USA, character owners have been successfully extending protection for the fictional characters by arguing that copyright protection should adopt the total “look and feel” approach from trademark doctrines and applying them to copyright infringement cases.

In Walt Disney Productions v. Air Pirates the court co-mingled copyright and trademark doctrines by stating that the Disney characters used by the defendants had achieved a high degree of ‘recognition’ and ‘identification’ (ie trademark concepts) and that these elements helped make the characters protectable under copyright law.

Conclusion

Therefore, while the creator is still admiring the newly created fictional character, he/she should recognize the scope of legal protection available for the character and should do all that is necessary or financially feasible to properly protect this potentially valuable fictional character.

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Footnotes

[1] Michael Todd Helfand, When Mickey Mouse Is as Strong as Superman: The Convergence of Intellectual Property Laws to Protect Fictional Literary and Pictorial Characters, 44 Stanford L. Rev. 623 (1992). As anti-competition laws in Singapore is still in its infancy, we will not be discussing this in the article.
[2] 720 F.2d 231, 241 (2d Cir. 1983).
[3] 111 F.2d. 432 (2d Cir. 1940).
[4] 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979).