#SERIES – 3- IRONMAN OR SHAKTIMAAN – THE DIFFERENCE IN THE IP PROTECTION OFFERED IN INDIA AND THE US?

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Chapter 3: Trademark and Characters

Introduction

The rise of fictional characters and its business in the present generation has created a hybrid protection of Intellectual Property Laws. The impact created by these fictional characters has given rise to a lot of business and the need for protection of interests of the authors and the production houses.

A fictional character, like a graphic character, can’t acquire trademark protection for its own protection, however, may possibly be secured when the trademark demonstrates a specific source of goods and services. Nonetheless, not at all like for graphic characters, courts have not completely embraced trademark security for fictional characters. This attitude might be expected less to the courts’ reluctance to use trademark law to ensure a fictional character than to the probability of such a case emerging since it is profoundly uncommon for a character that had never recently been depicted graphically to be utilized in a commercial style.

A fictional character’s “name” might be a trademark if the character’s name is utilized as a title of a book, motion picture or a series and in this manner demonstrates a solitary source of the entertainment product or service. Trademark security may likewise be accessible for a fictional character’s unique verbal expressions, for example, the Lone Ranger’s “Hi yo Silver Away”. In this manner, while the full range of trademark insurance might be accessible for profoundly fruitful graphical characters, such a plausibility, other than for the unauthorized use of a fictional character’s name or verbal articulation is exceedingly impossible for most fictional characters. Moreover, trademark security might be blocked in those examples where there is an issue related with relating the trademark to a single source, for example, in media outlets where a character might be related with a creator, craftsman, film maker, support or even with the character itself. On the off chance that the source is divided, at that point trademark protection may not be proper.

Protection of characters in the United States of America

Many jurists believe that the trademark protection for a character is weaker than the protection provided under copyright law, but in reality, the trademark protection may be stronger as they could provide the trademark owner with a perpetual monopoly in the use of the trademarked character [1]. A perpetual monopoly could exist because the term of protection might last indefinitely if the use of trademarked character is properly protected and maintained. This differs from protection under the Copyright Act which shall only last for a finite time as set by statute [2]. Furthermore, the stronger the trademark for a character becomes, the less willing the owner of the character is allowing uses of the character, such as fair use, that may be permitted under copyright law. It is to be noted that some of the earliest cases in which trademarks were protected were cartoon cases [3].

          Trademark law will not permit a graphic character to be trademarked solely for its own protection, however, it permits the character’s name and likeness to be trademarked when the function of that trademark is to indicate the source of the products and services bearing that mark [4]. However, mere registration of a trademark would not give the holder of the trademark a perpetual right in it but rather the continuous usage of such a mark by the holder of the trademark is what gives it a continued protection [5]. A trademark owner can be protected even if his character is not protected as a copyright as in the case of Tristar Pictures Incorporation v Del Taco Incorporation [6], the court held that though the plaintiff character of “Zorro” was not protected under the copyright law, he is entitled to receive protection for his trademark infringement where the defendant used “Zorro” related indicia to promote its restaurant chain.

To obtain a trademark, a character does not have to fulfil the “Originality Test” as required under copyright law [7]. In addition, to prove trademark infringement, the trademark owner need not prove that the infringer had access to the character as is required under copyright law, but only must prove that the trademark has been used by an infringer without the owner’s permission. The term of protection of a Trademark is potentially perpetual unless the registration requirements are fulfilled. The mark is not abandoned, nor the mark loses its status as a trademark, especially for successful and highly marketable graphic characters, such as many of the Disney and Warner Brothers characters, is extremely valuable and profitable. However, on the negative side, the statutory trademark protection for a character may be expensive. This is especially true if the character is extensively used or licensed for use in multiple media formats and in merchandising programs for many different categories of products and/or services [8]. In this event, the protection may require that the character be registered as a mark in multiple trademark classes since each class represents a different category of goods or services, and registration in each specific trademark class requires an additional fee to be paid [9]. In addition, because trademark protection is territorial and subjective, the mark may need to be registered in countries other than just the United States to provide the maximum degree and range of protection as possible [10]. Furthermore, any slight 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.

            Most courts have recognized trademark protection for graphic characters and have found trademark infringement liability under both trademark and unfair competition law. In Fisher v Star Corporation [11], the cartoon characters Mutt and Jeff were protected by the court under trademark and unfair competition principles which found the Star Company liable for their unauthorized use of the characters.

            The last two decades have been very productive for character owners in extending protection for their increasingly valuable properties. Starting with a series of cases, there commenced a new willingness by the courts that are influential in character protection to protect graphic characters. The courts broadened the scope of copyright protection by adopting the “look and feel” approach from the trademark law and adapted it to copyright infringement analysis [12]. In addition, the popularity of the character, at least implicitly, began to be factored into the substantial similarity copyright infringement analysis with the result that the “feel” of the character reduced the level of similarity needed to prove copyright infringement. In Walt Disney Productions v Air Pirates [13], the court appeared to commingle copyright and trademark law infringement criteria by stating that the Disney characters used by the defendants had “achieved a high degree of ‘recognition’ and ‘identification'” and that these elements helped make the characters protectable under copyright law. The respondents were in the business of selling adult counterculture comic books and they unauthorizedly used Disney’s characters in their comics to which the court after combing the principles of both copyright and trademark, held the defendant liable for infringement.

          The court in the case of DC Comics v Filmation [14] observed that the defendant’s use of the plaintiff’s trademark amounted to the infringement of the plaintiff’s trademark. The defendant used the physical appearances of “Aqua Man” and “Plastic Man” of the plaintiff’s characters and reproduced it to their characters of “Super Stretch”, “Manta” and “Moray.” The court held that such usage of characters amounts to creating a likelihood of confusion for the consumers and people at large and hence held them liable for such a usage.

         The courts also observed that if the target audience is different and the trademark used is similar in two different fields of business, then such a usage would not amount to infringement of trademark of the other. This was held in the case of De Costa v Colombia Broadcasting Systems [15], where De Costa was using a character called Paladin, who would perform in agricultural events and the Colombia Broadcasting Systems created a character called Paladin and started a television series. De Costa sued the Broadcasting Systems for his trademark infringement and the court held that because both belong to different fields of business, it shall not create a sense of confusion or shall not act deceptively similar in the eyes of the audience as the target audience is completely different and people would not misunderstand one for the other. Also, in the case of New Dana Perfumes Corporation v Disney Store Incorporation [16], where New Dana alleged that the Disney Incorporation was using their trademark of “Tinker Bell”, to which the court said that, a likelihood of confusion is created when the consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark and hence they being a part of two completely different markets, the likelihood of confusion shall not arise and ruled in favour of Disney. Also, in the case of Pink Panther Beauty Corporation v United Artists Corporation [17], the appellant applied to register the trademark “Pink Panther” for use in associ­ation with beauty care products and services. The owner of the trademark “The Pink Panther”, who is registered for use in associ­ation with motion picture films, etc., opposed the registration. The Registrar of Trademarks rejected the opposition and registered the trademark. The owner of “The Pink Panther” trademark appealed to the trial court and got a decree in favour of the respondent to which the other party appealed to the Federal Court of Appeal, where the judges declared in favour of the appellants as the proposed mark was not confusing with the respondents’ registered marks.

Part 1

       In the case of Marc Brown v It’s Entertainment, Incorporation [18], the plaintiff’s trademark of Arthur, the aardvark, was misused by the defendant, where he used the plaintiff’s trademark by furnishing it with clothes and provided it for an opening of a toy store, which amounted to “dilution [19]” of the plaintiff’s trademark. The court held that the “[i]mage sought by [Brown] for Arthur will be difficult to control and might easily become “blurred or tarnished [20]”, resulting in a loss of credibility, public affection, and consumer interest.” Thereby emphasizing on the importance of a trademark.

3.4. Conclusion

            In the light of such a scenario, India needs a concrete jurisprudence with regard to the protection of fictional characters. India being a developing country, needs to ensure that the creators do not get demotivated and have a proper and clear law in regard to the protection of these characters and subsequently, the preservation of authors’ creativity is essential.

The remedies available to a person whose trademark in fictional characters has been infringed can seek the court for justice and he can claim injunctions, damages and any other order as the court may deem fit as civil sanctions against the infringer. The aggrieved party can also opt for the suit of passing off as a remedy against the infringer.

              In today’s world where there the technology has evolved in a rampant manner; the protection of the fictional characters has indeed become necessary to protect the interests of the authors which is also laid down according to Locke’s Labour theory and Hegel’s Personality theory. Locke’s labour theory says that a person should be awarded his for labour be it physically or intellectually and hence to protect his character from being infringed, an author can seek the aid of a trademark in such a process. In the same line, Hegel’s Personality theory also suggests that a person/ an author if given the recognition and personal assertion can help him grow as a person and as an author.

Chapter 4: Conclusion/Suggestions:

While recommendations for extending the ambit of statutory copyright law to incorporate fictional characters have been made, the proposition of finding another type of intellectual property, a crossover of the rights ensured by Copyright and Trademark – ‘Copymark’ is one that is yet to be investigated. Where copyright law secures the author’s bundle of rights in a work, trademark law ensures both the consumers and mark holders – in any case, they are practically different in the points of interest of the protection that they give. In spite of the fact that the term ‘Copymark’ has been tossed around, it was Gregory S. Schienke, who speculated ‘Copymark’ as an answer for the present issue of character assurance [23].

Though copyright law is appealed to for protection, what the owner is attempting to protect is not always the character’s copyright, but also the goodwill that the character has built up over the years. Schienke suggests that, since a fictional character exists in the two legal worlds of copyright and trademark, the implementation of such a scheme would be the best way to tackle the problem. The basis of ‘Copymark’ protection, he states, is to ‘acknowledge a trademark in the copyrighted work’, a hybrid to fill the void between the two.

He lays down requirements that characters would have to meet to qualify for such protection:

  1. It must have originated in a work available for copyright registration ­
  2. It must be in use for commercial purposes
  3. It must have been in use for a minimum of five years
  4. The character must be famous – This is the essence of ‘Copymark’ – that the character is so well known, that it must, necessarily, qualify for protection. The fame of the mark, according to Schienke, would be adjudged by statutory law, as is provided for in the Federal Trademark Dilution Act.

‘Copymark’ protection would have advantages on a few levels. Firstly, copyright law acknowledges the assumption that, generally, the value of a creative work decreases with time. By granting protection to famous characters through trademark law, the original works become almost superfluous. Secondly, ownership of the character cannot be lost as long as it is in use. This is a zone of worry for the proprietor of copyright. Imagine a scenario where the work wherein the character previously showed up has entered the public domain, however the character still shows up in subsequent works. Furthermore, ‘Copymark’ guarantees protection of a character as it advances throughout the long stretches of its reality. In 1938, Superman was a “vigilante character willing to fight social injustice.” Today, Superman has been alluded to as something of a “boy scout” because of the Intellectual Property protection and fame it has accomplished. Hence, irrespective of the jurisdictions, this ‘copymark’ doctrine can aid the authors and mark holders to have a better protection to depend upon in case of any infringements.


[1] Schreyer, Amanda, ‘An Overview of Legal Protection for Fictional Characters: Balancing Public and Private Interests,’ Cybaris: 6 (1), Article 3. < http://open.mitchellhamline.edu/cybaris/vol6/iss1/3 > accessed 25October 2018

[2] 17 USC § 301-05 concerning the protection of copyrights <https://www.copyright.gov/title17/92chap3.html > accessed 30 October 2018

[3] Tonya Gisselberg, ‘Trademark Protection for Cartoon Characters’ (2010) <https://www.gisselberglawfirm.com/downloads/trademark-cartoon2.pdf > accessed 2 November 2018

[4] Annie Provenzano, ‘How to Protect a Literary Character Through Copyright and Trademark’ (2014) The Faculty of the Journalism Department, California Polytechnic State University <https://digitalcommons.calpoly.edu/cgi/viewcontent.cgi?article=1085&context=joursp> accessed 29 October 2018

[5] Re DC Comics Incorporation [1982] CCPA 689 (2) Federal Reporter [1042], [1052]

[6] [1999] CDCA 3 [1999] WL 33260839.

[7] The Protection Afforded Literary and Cartoon Characters Through Trademark, Unfair Competition, and Copyright (1954) 68 (2) Harvard Law Review [349] – [363]

[8] The United States Patent and Trademark Office, Nice Agreement Current Edition Version – General Remarks, Class Headings and Explanatory Notes Nice Agreement Eleventh Edition (2018)  <https://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks>  accessed 29 October 2018

[9] The United States Patent and Trademark Office, Trademark fee information (2017) <https://www.uspto.gov/trademark/trademark-fee-information>  accessed 29 October 2018

[10] Michael Todd Helfand, ‘When Mickey Mouse Is as Strong as Superman: The Convergence of Intellectual Property’ (1992) 44 (3) Stanford Law Review 637 < https://www.jstor.org/stable/1228977 > accessed 7 November 2018

[11] (1921) 231 NY 414 

[12] David B Feldman, ‘Finding a Home for Fictional Characters: A Proposal for Change in Copyright Protection’ (1990) 78 (3) California Law Review < https://www.jstor.org/stable/3480842> accessed 12 November 2018

[13] [1978] 9th Circuit 581 (2) Federal Reporter 751

[14] [1980] The United States District Court for the Southern District of New York 486 Federal Supplement 1273

[15] [1967] 9th Circuit 377 (2) Federal Reporter 315

[16] [2001] United States District Court for the Middle District of Pennsylvania 131 (2) Federal Supplement 616

[17] [1998] The Federal Court of Appeal of Canada 225 NR 82

[18] [1999] The United States District Court for the Eastern District of New York 34 (2) Federal Supplement 854

[19] The 15 US Code § 1125 concerning the False designations of origin, false descriptions, and also dilution being forbidden (§ 1125)

[20] Michael J McCue, ‘United States: Trademark dilution and clearance’ ( ‘World Trademark Review’                  1 November, 2016)  < https://www.worldtrademarkreview.com/portfolio-management/united-states-trademark-dilution-and-clearance > accessed 10 November, 2018

[21] [2010] IA 8042/2009 in CS (OS) 1154/2009

[22][2015] Delhi High Court CS(OS)784/2013

[23]Gregory S Schienke, ‘The Spawn of Learned Hand – A Reexamination of Copyright Protection and Fictional Characters: How distinctly delineated must the story be told?’ (2005) 9 Intellectual Property Law Review 63 <https://scholarship.law.marquette.edu/cgi/viewcontent.cgi?referer=&httpsredir=1&article=1055&context=iplr> accessed 4 May 2019

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