By, Sonakshi Bannerjee
Copyright aims to incentivise authors to create artistic works that they might otherwise not produce fearing its misappropriation by others, for profit.[i] Protection under copyright is granted only to expressions and not to mere ideas.[ii] A fictional character is a work of words and its characteristics and appearance gets distinction through the images that readers create of such characters in their minds.[iii] Such imagination of readers is brought about by reading about the character through books or novels, and thus it might not always be apparent to the reader.[iv] Characters can be protected only when the court believes beyond doubt that the character is delineated enough.[v] An infringement of copyright of a character would occur when there is a reproduction of a copyrighted literary work or a substantial part of such work.[vi]
When a fictional character is regarded as a separate and individual work of art, only then shall it fall within the purview of copyright[vii] and it shall be considered to be an individual work of art when any one or more than one of these elements exist: 1. It is a general concept in the form of an idea; 2. It is a substantiated development of such idea as an expression; 3. It is a name (for the fictional character).[viii]
Copyright does not protect characters which are vague or generic in nature (stock characters), and covers characters that have a unique expression with certain attributes of originality.[ix] However, in context of literary work, this becomes blurry since the character needs to be defined with sufficient clarity.[x] We shall now examine the scope of protection that such characters may be granted.
EXTENT OF PROTECTION OF FICTIONAL CHARACTERS
A substantially distinguishable variation from older works must exist for copyright protection since ideas cannot be protected and the expression of the idea that provides distinction can be copyrighted.[xi]
In Da Vinci Code Case,[xii] it was observed that a “replication or use of facts, ideas, theories, themes derived from original work” is not infringement. Further, in RG Anand Case[xiii] it was held that while granting copyright the impression conveyed to the audience is the sole determining factor and ideas, irrespective of the extent of their originality, cannot be protected.
The actual concrete elements that combine to form the sequence of events and elucidate the relationship between major characters are protectable expression under copyright.[xiv] Even a similarity in the graphical depiction of a character might be sufficient for infringement.[xv]
Each element of a copyrighted work is not protected merely because the work as a whole is protected and hence fictional characters being an element of a work are not inherently protected.[xvi]
The exclusion of even one element out of the three elements present in a character, i.e. its characterisation, the actions it performs and the reactions it delivers, boils down the character to a mere idea thereby losing protection under copyright law.
TESTS TO DETERMINE THE SCOPE OF PROTECTION FOR FICTIONAL CHARACTERS
In order to surely determine if there is an infringement of copyright, one can analyse the opinion of the reader, spectator or viewer who has read or seen the work of art, and whether that person believes the subsequent work to an ‘unmistakeable impression’ of the original work.[xvii]
Following were the tests available earlier for determining the extent of protection of fictional characters:
I. THE ‘SWEAT OF THE BROW’ DOCTRINE
This doctrine was formulated to inspect originality and efforts of the author.[xviii] The doctrine eschewed the most fundamental axiom of copyright law that no one may copyright facts or ideas.[xix] Later this doctrine was negated when the Supreme Court of India in Eastern Book Co. v. D.B. Modal[xx] rejected the sweat of the brow doctrine, and held that the work must be original and different in character with a distinguishable variation with minimal degree of creativity.
II. THE ‘STORY BEING TOLD’ TEST
In Warner Brothers v. Columbia Broadcasting Systems,[xxi] the “story being told” test was developed wherein it was held that if a character is not a prominent part of the story, it is not copyrightable, and others may use the character without infringing on copyright of the story. However, later it was held that this test eliminates most characters from copyright protection.[xxii] Thereafter, the ‘story being told’ test started whittling away since it no more remained a cogent parameter to determine where to draw the line for providing protection to a literary character. The ‘distinct delineation’ test was thus adopted whereby it was held that the character must be sufficiently distinguished and delineated to receive protection.[xxiii]
EMERGENCE OF THE DISTINCT DELINEATION TEST
Judge Learned Hand developed the “distinctly delineated” threshold in the landmark case Nichols v Universal Pictures,[xxiv] wherein it was held that the more developed and expressive the character is, the more likely it is to be copyrightable.[xxv] Now this has been developed in a two-part test: determination of sufficient delineation of a character for protection and if it is so then whether it has been infringed.[xxvi]
In Nichols Case Hand, J. observed that if a character is qualitatively distinguished, even in parts, then it is capable of protection outside of the work in which it exists. Thus, a character in an arrangement of incidents and literary expressions original with the author, is a proper subject of copyright and susceptible to infringement.[xxvii] The crux of Judge Hands test is that an inadequately developed character amounts merely to be an idea not securing any copyright protection. Hence, emphasis should be placed on the attributes and traits that create a sufficiently developed character which are distinctively possessed by it.[xxviii] In Burroughs v Metro-Golwyn Mayer Inc[xxix] this test was applied to grant protection to Tarzan and other characters in the work, which were said to be ‘well delineated.’[xxx]
Visual or graphic characters are easier to delineate distinctively since they are said to contain unique elements of expression and thus are more likely to receive protection unlike literary characters.[xxxi] When the character is visually perceived, it tends to create a more dominant image against which the similarities of the copied character can be easily compared.[xxxii]
Thus, literary characters are granted protection only when they attain a distinctive personality.[xxxiii] In Kelly v Cinema Houses Ltd,[xxxiv] the question of copyright over fictional characters was expressly left open by Maugham, J. when he said:
“If, for instance, we found a modern playwright creating a character as distinctive and remarkable as Falstaff, or as Tartuffe, or (to come to a recent classic) as Sherlock Holmes, would it be an infringement if another writer…were to borrow the idea and to make use of an obvious copy of the original? I should hesitate a long time before I came to such a conclusion…But whatever the answer maybe I am strongly of the opinion that there can be no infringement in such a case if the character…is devoid of novelty.”
The practical significance of such determinations becomes clear when a fictional character is removed from its original setting and carried forward in new vehicles and works of art. Thus, to justify infringement, the circumstances and incidents surrounding the character through which it attains expression must also be considered.[xxxv]
EXCEPTIONS TO INFRINGEMENT OF COPYRIGHT CLAIMS
I. DERIVATIVE WORK
When a subsequent work is based on a pre-existing work and it integrates certain characters or some components from that work, it is called a ‘derivative work’ of art. There should be proof of independent creation of the allegedly infringing work. The legality of fanfictions, falls under copyright law and in the US is classified as a “derivative work.”[xxxvi]
If subsequently an author strives to create afresh a character using the seeds of a previous work, he needs to begin with the character from a starting point.[xxxvii] The test of mere likeness to the character cannot be the determinant of infringement but the work must be a copy of the copyrighted work.[xxxviii]
II. TRANSFORMATIVE WORK
If a new work of art adds something different, with the intention of transforming the character and altering it by giving it a new expression and it does not merely supersede the purpose of the original creation, it is said to be a ‘transformative work’ of art.[xxxix] Other factors are the quantum and the value of the matter taken and also the effect on the market share of the prior work. If the fan fiction creates a new work it is protected and does not violate any copyright.
The fact that when a novel ends, readers are sorry to part with the characters of that work, and in that feeling of association readers begin to compare themselves with their favourite character, imitate them, empathise with them, or imagine them in new stories, calls for flexi[xli]bility in the protection of the literary or fictional characters for the encouragement of derivative works.[xlii] Readers who are authors as well, try to accommodate such characters in their own subsequent literary works and thus, the protection with regards to their creative intellectual activity is essential for the public welfare so that they can develop a character which they wish was more developed.
Thus, after the inception of the ‘distinct delineation’ test the blurry lines to determine the scope of protection of characters diminished and it became easier to identify characters that qualified as being subject matter of copyright protection and those that were not distinct enough to achieve such protection.
[i] Dr Vandana Mahalwa, ‘A Quest for Home of Fictional Characters: A Validation for Change in Copyright Protection’  II JCLC 147.
[ii] Edward Samuels, ‘The Idea-Expression Dichotomy in Copyright Law’  56 Tenn Law Rev 321.
[iii] Shan Kohli, ‘Giving Due Protection To Fictional Characters: The Possibility of Copymark’ <https://spicyip.com/2016/04/giving-due-protection-to-fictional-characters-the-possibility-of-copymark.html> last accessed on 10 March 2018.
[iv] SKD Biswas, ‘Copyrightability of Characters’  9 Journal of Intellectual Property Rights 149.
[v] VK Ahuja, ‘Law Relating to Intellectual Property Rights’  II Lexis Nexis Publishers 35.
[vi]Fateh Singh Mehta v OP Singhal AIR 1990 Raj 8.
[vii] Star India Private Limited v Leo Burnett (India) Private Limited 2003 (2) Bom CR 655.
[viii] Leon Kellman, ‘The Legal Protection of Fictional Characters’  25 BLR 3.
[ix] ‘Protection of Fictional Characters’ <http://corporate.findlaw.com/intellectual-property/protection-of-fictional-characters.html> last accessed on 9 March 2018.
[x] ‘Copyright in Characters: What Can I Use?’  <http://www.aspectlg.com/posts/copyright-in-characters-what-can-i-use> accessed 8 March 2018.
[xi] Samuel J. Coe, ‘The Story of a Character: Establishing the Limits of Independent Copyright Protection for Literary Characters’  86 Chi-Kent Law Review 1305.
[xii] Baigent v Random House (2007) EWCA Civ 247.
[xiii] RG Anand v Delux Films AIR 1978 SC 1613.
[xiv] Micah Uptegrove, ‘Copyright Protection: The Force Could Not Keep Han Solo Alive, but Can It Protect Him from Authors’ Derivative Works’  81 Mo L Rev 629.
[xv] Walt Disney Prods v Air Pirates 581 F2d 751 (9th Cir 1978).
[xvi] Kathryn M. Foley, ‘Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide’  41 Conn L Rev 921.
[xvii] Katherine Alphonso, ‘DC Comics v Towle: To the Batmobile: Which Fictional Characters Deserve Protection under Copyright Law’  47 Golden Gate UL Rev 5.
[xviii] University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601.
[xix] Feist Pubs Inc v Rural Tel Svc Co Inc 499 US 340 (1991).
[xx] Eastern Book Co v DB Modak (2008) 1 SCC 1.
[xxi] Warner Brothers v Columbia Broadcasting Systems 216 F2d 945 (9th Cir 1954).
[xxii] Walt Disney Productions v Air Pirates 581 F2d 751 (9th Cir 1978).
[xxiii] Anderson v Stallone 11 USPQ2D 1161 (CD Cal 1989).
[xxiv] Nichols v Universal Pictures Corp 45 F2d 119 (2nd Cir 1930).
[xxv] Jasmina Zecevic, ‘Distinctively Delineated Fictional Characters That Constitute The Story Being Told’  8 VJETL 365.
[xxvi] Leslie A Kurtz, ‘The Rocky Road to Character Protection’  ELR 62, 67.
[xxvii] Detective Comics Inc v Bruns Publications 111 F2d 432 (2nd Cir 1940).
[xxviii] Joshua Saval, ‘Copyrights, Trademarks, and Terminations: How Limiting Comic Book Characters in the Film Industry Reflects on Future Intellectual Property Issues for Character Law’  9 FIU L Rev 405.
[xxix] Burroughs v Metro-Golwyn Mayer Inc 519 F Supp 391 (SDNY 1981).
[xxx] ‘Are Fictional Characters Copyrightable’ <http://dearauthor.com/features/letters-of-opinion/are-fictional-characters-copyrightable/> last accessed on 8 March 2018.
[xxxi] Walt Disney Prods v Air Pirates 581 F2d 751 (9th Cir 1978).
[xxxii] Kaileigh Wright, ‘Blueprints of Character: Applying the Distinct Delineation Test and Character Copyright Protection to Original Literary Places’  43 AIPLA QJ 221.
[xxxiii] DC Comics Inc v Reel Fantasy Inc 696 F2d 24 (2nd Cir 1982).
[xxxiv] Kelly v Cinema Houses Ltd MacG Cop Cas (1935) 362 (CA).
[xxxv] Yankwich, ‘Originality in the Law of Intellectual Property’  11 FRD 457, 446.
[xxxvi] Ivan Hoffman, ‘The Protection of Fictional Characters’ <http://www.ivanhoffman.com/characters.html> accessed 10 March 2018.
[xxxvii] Leslie A Kurtz, ‘The Independent Legal Lives of Fictional Characters’  WLR 473.
[xxxviii] Jenna Skoller, Sherlock Holmes and Newt Scamander, ‘Incorporating Protected Nonlinear Character Delineation into Derivative Works’  38 Colum JL & Arts 577.
[xxxix] David Tan, ‘The Lost Language of the First Amendment in Copyright Fair Use: A Semiotic Perspective of the Transformative Use Doctrine Twenty-Five Years On’  26 Fordham Intell Prop Media & Ent LJ 311.
[xl] Mark Peterson, ‘Fan Fair Use: The Right to Participate in Culture’  17 UC Davis Bus LJ 217.
[xlii] Jacqueline Lai Chung, ‘Drawing Idea from Expression: Creating a Legal Space for Culturally Appropriated Literary Characters’  49 Wm & Mary L Rev 903.