COPYMARK: MERCHANDISING OF FICTIONAL CHARACTERS & ITS POSSIBLE PROTECTION

Introduction

The competitive globalized world, has made business entity to do every possible effort to promote and brand its product. Consequently, different types of marks have been evolving, which exceed the domain of the traditional/conventional trademark and known as non-conventional trademarks. Section 2(m) of the Trademark Act, 1999 lists different kinds of marks. The list is inclusive, and marks enumerated therein are understood as traditional/conventional trademarks. Whereas, non-conventional trademarks can be understood as marks, which have been used as trademarks, but do not fall in the category of traditional/conventional trademarks.

Non-conventional trademarks include single color, smell, taste, sound, fictional characters, motion, hologram, gesture, texture, trade dress etc. as marks, which functions as conventional trademarks and one can associate them with particular brands for distinguishing the goods or services. However, many non-conventional marks couldn’t get registered either because of their varying standards or inability of graphical representation. Therefore, they seek protection under common law remedy of passing off. The higher burden of proof for establishing the claim of passing off in comparison to establishing the infringement of mark under the statute, necessitates that non-conventional mark should also be protected under statutory laws. 

This article analyzes possible statutory protection of one of such categories of emerging non-conventional trademarks i.e., ‘fictional characters’ as ‘Copymark’, and its stand out with trademark theories.

Background

Fictional characters portrayed in literary, artistic or cinematographic films are constituents of larger artistic works, but sometimes their popularity supersedes the original work and people recognize them in isolation of the original work. Some prominent examples are Sherlock, Bahubali, Harry Potter, Shaktiman, Ironman, Chacha Chowdhry and Spiderman etc.

Copyright statute does not grant protection to these fictional characters despite being an artistic work. However, courts have evolved various tests like ‘Character Delineation Test’ (Evolved in Nichols v. Universal Pictures Corporation)[1] and ‘Story Telling Test’ (Evolved in Warner Bros. Pictures v. Columbia Broadcasting System)[2] to determine copyright in these fictional characters. The first prescribes that if character develops and is recognized distinctly than plot of story, then it should be protected as separate copyrighted work, whereas according to the second test a character is only protectable as copyrighted work, if that character plays substantial or prominent role in the story. The ‘Story Telling Test’ has not been appreciated by scholars, because it sets an elevated threshold for copyright protection, subsequently, if any character has minute role in a story, but stands out as separate identity, it would not be protected by copyright and would be exposed to public use.

Copyright law alone is insufficient to protect the fictional characters and related matters. Copyright law grants protection to artistic creativity for building a character, but determines its protection on the ground of its ‘distinctiveness’, which is the feature of trademark law. Further, the Bombay high court in Star India Private Limited vs. Leo Burnett (India) Private held that, the commercial exploitation of popularity of characters by applying the characters on goods or services through character merchandising shows the connection of characters with goods or services sold. Further, characters emanate from copyrighted work and copyright laws give protection for a limited period of time, whereas distinctive mark which in the present case could be fictional characters in 2D or 3D form get protection for infinite period of time under the trademark law.

Trademark law also alone cannot protect these fictional characters as it does not incorporate laws to protect artistic work in creating the character. These factors necessitate protection of characters under both copyright as well as trademark laws.

Copymark

‘Copymark’ guarantees a hybrid of the rights to fictional characters under ‘Copyright’ and ‘Trademark’ laws. The first protects the creativity, whereas later safeguards the distinctiveness of character. None of them have exclusive provisions for the protection of fictional characters. Therefore, Gregory S. Schienke suggested the concept of ‘Copymark’, which represents the acknowledgement of trademark in the copyright laws. To get a copyrighted work protection under trademark law, Gregory S. Schienke prescribes certain prerequisites i.e.

1. Characters must be popular and should be recognized in isolation of original work;
2. The original work from which characters emanate must qualify for copyright registration;
3. Characters and their goodwill must have been financially exploited; and
4. Characters must have been in use for a minimum of five years.

Fulfillment of these prerequisites qualifies the characters to get protection under trademark law along with copyright law and subsequently resolve the above-mentioned issues.

Trademark Theories & ‘Copymark’

As the IP jurisprudence has not witnessed abundant disputes on the subject, we need to analyze whether the theories for justification of trademark protection hold the ‘Copymark’ well or not.

1. Source Identification Theory

This theory advocates the primary function of trademark i.e., to trace the owner or indicate the origin of goods through the distinctiveness of marks. This theory holds the ‘Copymark’ well, because of ‘anonymous source doctrine’, which signifies that all the products under a mark originate from the same anonymous source that could be either owner of the copyrighted work or licensee for merchandising such work. However, in some cases, exact source of fictional Characters can’t be pinpointed by consumers because often stories follow already famous toys. The recent example is the popular series of ‘Transformer’ movie which is based on the famous toys produced by Japanese Company Takara. Further, the condition that Character must have been in use for a minimum of five years doesn’t hold trademark law well, because distinctiveness in mark (characters like ‘JOKER’) can be achieved overnight, which enable one to identify its source even prior to suggested minimum five-year use of the character.

• Quality Assurance Theory

This theory advocates uniform quality assurance by the mark holder in consideration of additional charge. This may not hold ‘Copymark’ well. In case of character merchandising, characters as marks held by some artist who is not a trader. He licenses his work to impose or shape such characters into products and may not know about incorporating quality control clauses in the license agreement. So, there could be variance in quality of the product. Further, it is emotional attachment more than quality which drives one to buy a product featuring character. However, if a mark holder licenses his marks to only one enterprise, then quality could be uniform.

• Search Cost Theory

This theory is an extension of source theory and advocates trademark’s monopoly in consideration of reduced search cost of consumers to opt a product by associating perpetual image with product’s source. This theory may hold ‘Copymark’ well and increase or reduce search costs depending on the character, its popularity and the manner it is advertised. Usually, search cost reduces as ‘Copymark’ protection would be granted only to famous characters.

Conclusion

Law Bowen once sagely remarked “Law should follow the business”. More than hundred years old statement is still true and the suggested concept of ‘Copymark’ is its reflection. The enforcement of ‘Copymark’ would strengthen the protection of merchandising of fictional characters. However, ‘Copymark’ has also been criticized because it would extend the limited protection to characters under copyright regime for infinite period and hinder them from coming in public domain. But we need to understand that protection in perpetuity is required to be granted to fictional characters due to their distinctive impression in consumer’ minds. Further, ‘Copymark’ advertises the product and increases their intrinsic value. India being the country having abundance of talent and creative work would bring plethora of famous fictional characters which could be exploited through their merchandising. Therefore, the demand of incorporating laws on ‘Copymark’ is here to stay. More laws might be introduced in the future regarding grant of protection to fictional characters and it would be interesting to see how Indian courts will approach the issue.  

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[1]Nichols v. Universal Pictures Corporation et al. 45 F.2d 119 (2d Cir. 1930)

[2]Warner Bros. Pictures v. Columbia Broadcasting System, 102 F. Supp. 141 (S.D. Cal. 1951)