An Introduction to Alternate or Fictional Character Persona under the laws of Copyright In India

The great American author, Mark Twain, had once remarked, “Only one thing is impossible for God: to find any sense in any copyright law on the planet – Mark Twain’s Notebook, 1902-1903”.The amusing part is that even this quote was protectable under the laws of Copyright.

In November 2013, Viacom18 came to the forefront of a controversy in India when they issued a public notice declaring sole, exclusive, absolute and unlimited ownership in respect of a character “Gutthi” from “Comedy Nights with Kapil Sharma”. The public notice was issued in the back drop of the artist portraying such character exiting the show to commence a new show of his own. Even though the artist declined to comment on the issue, he was never seen to make any attempt to revive his erstwhile character on his new show.

However, a different scenario befell on Viacom Global Entertainment Group in the United States of America. In July 2016, a famous television personality named Stephen Colbert decided to bring back, a character segment “Word” from his erstwhile show “The Colbert Report” aired by Viacom Global Entertainment Group from October 2005 to December 2014, on his new show. The producers of the new show were immediately served a notice from the lawyers of Viacom Group alleging infringement of copyright. Interestingly, even though Stephen Colbert declared retirement of his “The Colbert Report” persona on the subsequent episode of his new show, he introduced a new character duped as his “twin cousin” portraying a new segment “Werd” in place of the alleged infringing segment “Word”. The humour is embedded in the action. Viacom Global Entertainment Group has been unable to obtain any action against such “twin cousin” or “Werd” even till date.

This brings to an interesting question as to whether the laws of copyright with respect to alternate or fictional characters in India is inept when compared to the laws of the United States of America (USA). A response will undoubtedly necessitate a discussion on fictional characters and their protection, if any, under the laws of copyright in India.

To begin with, Section 13 of the Indian Copyright Act, 1957 allows protection only to original literary, artistic, musical, dramatic works, sound recordings and cinematographic films. A careful analysis will show that fictional character scripts may be protected as “literary works” and its performance may be protected under “dramatic works” or “performer rights”. However, such protection may not be completely adequate since it is possible that every subsequent book or every fresh performance may keep on attaching new attributes to the character. Protection of “fictional character” solely as a part of literary or dramatic work may be unable to incorporate protection for such subsequent developments beyond the prescribed tenure of the copyright of the embedding work. Thus, there is a need for per se protection of “fictional characters” under the statute. Indian judicial precedents have allowed protection to new, original, novel and if possible unique fictional characters under the laws of Copyright. Such characters may be real or fictional, human or non-human, natural or mythical. A fictional character may comprise of several legal components which may include its name, its appearance, the manner in which the character carries itself, personality traits, voice, any unique article associated with such character. There can probably be no exhaustive list in this regard.

One of the earliest cases in Indian jurisprudence relating to character copyright was V. T. Thomas and Ors. vs. Malayala Manorama Co. Ltd. , AIR 1989 Ker 49, wherein the Plaintiff had sought to restrain the Defendant from publishing characters created by the Defendant in any other magazine after the termination of the employment contract. The Hon’ble Court considered it right to make a distinction between the literary works created by the Defendant during the tenure of his employment contract and the characters Boban and Molly which were created by the Defendant prior to his engagement in such employment contract. In a remarkable decision, the publishing house was restricted from claiming copyright over the characters and the Defendant was permitted to carry on the exploitation of his characters even after termination of the employment contract. It is important to note that this judgment did not address the issue of “copyright-ability” of characters and was mainly confined to the issue of ownership of such characters.

This question of copyright-ability of a character was an issue in Star India Private Limited vs. Leo Burnett, 2003 (2) Bom CR 655, 2003 (27) PTC 81 Bom. In this case, the Plaintiffs who were producers of a television serial called ‘Kyun Ki SaasBhi Kabhi Bahu Thi” sought to restrain a subsequently telecasted commercial tiled “Kyun Ki Bahu Bhi Kabhi Saas Banegi” portraying the similar character to the Plaintiff’s television serial. The Hon’ble Court after considering materials on record refused to grant relief to the Plaintiff and laid down a definition as to what amounts to “character merchandising” along with a test of public recognition for determination of rights in characters. In the words of the Hon’ble Court, it was observed, “The characters to be merchandised must have gained some public recognition, that is, achieved a form of an independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears”.

The question of character copyright was again dealt in Arbaaz Khan vs. NorthStar Entertainment Private Limited, 2016 SCC OnLine Bom 1812 : (2016) 3 AIR Bom R 467 : (2016) 3 Bom CR 328. Here, the Plaintiff argued that the portrayal of the police personnel in the Defendant’s movie was an imitation of the Plaintiff’s character of “Chulbul Pandey” from the “Dabangg” franchise. The Defendant argued that there were several differences between the rival characters and a major difference was in the fact that the Plaintiff’s policeman was ‘fearless but corrupt’ while the Defendant’s character is ‘fearless and honest’. Even in this case, the Hon’ble Court refused to grant an injunction on the basis of point-wise dissimilarities between the rival characters. However, the Hon’ble Court did observe that the Plaintiff’s character was entitled to copyright holding that, “But as to the general principle 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. It would be, I think, stretching it too far to say that such a fully developed and uniquely depicted character because it is ‘merely a character’, falls wholly outside the realm of all protection.” From this point of view, it is understandable that fictional characters have been expressly recognised as capable of receiving legal protection in India.

However, the above three cases make us realise the absence of a yardstick or a settled test for infringement in copyright in characters in India. However, it is not a fact that the Honb’le Indian Courts have not delved into this issue. In fact, such issue was dealt with as early as in the year 1997 in Raja Pocket Books vs. Radha Pocket Books, 1997 (40) DRJ 791. In that case, the Hon’ble Court laid down that, “The rules of comparison to be adopted in judging the resemblance would be those as are stated in the decision of the Supreme Court in R.G. Anand’s case (supra), namely, an unmistakable impression that the subsequent work appears to be the copy of the original.” The case involved a plea raised by the Plaintiff stating that the Defendant had copied the Plaintiff’s fictional character “Nagraj” in the Defendant’s series “Nagesh”. The Defendant argued that the Plaintiff has been using the character in different get-ups, makeups, colour schemes, appearances, illustrations and compositions. However, the Hon’ble Court observed, “Nagraj and Nagesh having the same meaning, namely, Kingsnakes; Colour of comics is also green, gauntlets are ripped in both cases, functionally, both are capable of doing same and similar work, namely, scaling the walls and the roofs alike, hurling snakes, causing the objects to melt and the snakes capable of returning back and merging in the body of the character. For the purpose of climbing, both use the same material, namely, rope in the form of a snake.” Accordingly, relief was allowed to the Plaintiff.

However, there is a major issue with the test laid down in the R.G. Anand case. In R.G Anand vs. M/S. Delux Films & Others, 1979 SCR (1) 218, it was alleged that the production or distribution or exhibition of the Defendant’s film ‘New Delhi’ was an infringement of the Plaintiff’s copyright in the play, ‘Hum Hindustani’. Interestingly, only an unmistakable impression between the original work and the alleged copy was held to constitute an infringement and the Plaintiff was denied relief. In my opinion, applying such test of an unmistakable impression as a general formula will result in an author of a literary work becoming helpless to protect his character from being portrayed in a different manner on-screen. Furthermore, there are several categories of fictional characters which may be:

• Graphic Characters, represented by cartoons or other artistic work, such as Mickey Mouse, Kung Fu Panda and Shrek etc;

• Literary Characters, such as James Bond, Sherlock Holmes etc;

• Human fictional characters included in drawings or otherwise, such as Tintin, Tarzan etc.

• Non-Human fictional characters such as King Kong, The Lion King etc.

• Fictional alter-ego personas, such as Charlie Chaplin, Stephen Colbert, etc.

It is impossible to imagine the yardstick laid down in the R. G. Anand judgment to apply to such multiple over-lapping scenarios. It is well understood that a fictional character is much more than a mere visual expression, the character and its personality evolve through various episodes portrayed by the artist. It is possible that copyright in the first book of a series has expired but copyright in the remaining works persists; it may be possible that the first series of work is created by one author while the remaining by another regarding the same characteristics such as Ian Fleming’s James Bond Series. However, the Indian legal framework appears to be not adept to deal with such situations.

While on the other hand, the law on the character copyright is much more developed in the USA and there are elaborate judicial tests laid down. In the landmark case of Walt Disney vs. Air Pirates, 581 F.2d 751 (9^th Cir. 1978): 439 U.S. 1132 (1979), the Federal Circuit clearly held that a two-step test should be applied to determine copyright infringement in characters. The first test was considered to be a comparison of the visual similarities followed by the second test comprising of the personalities of the characters. Applying the test, the Hon’ble Court held the Defendants liable for copyright right infringement for an unauthorised portrayal of Disney characters. Such tests of infringement are required to be applied subsequent to determination of copyright-ability under the well-established “Character Delineation Test” laid down Nicols vs. Universal Pictures Corporation, [45 F.2d 119 (2d Cir.1930)] wherein it was held that for a character to obtain copyright protection must be developed to such as extent that it may be delineated from the story itself, and the “The Story Being Told Test” laid down in Warner Bros. Pictures Inc. vs. Columbia Broadcasting System, [216 F.2d 945 (9^th Cir. 1954)] stating that the story itself must revolve on the character itself or the character must in a meaningful way constitute the “vehicle of the story” in order to constitute as a copyright.

In my opinion, a combination of the above tests should be applied and additionally, the character should be portrayed in such a manner that the “fiction actually comes to life” in people’s minds.

Importance of Alternate or Fictional Character or Persona in the Era of Character Merchandising

Characters from movies to toys to comics to sports to music have become an integral part of our daily lives. With time, entrepreneurs have figured out ample means to commercialise characters and generate profits. The reason is that we feel connected to famous fictional characters and such features are considered to add to merchandising value. Therefore, it is only fair if the owner of a copyrighted work is provided with his just share. However, there is no law in India which specifically deals with the “character merchandising”. In Star India Private Limited vs. Leo Burnett (supra) it was held that “Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others …… This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears.”

It is accepted that once a Plaintiff can establish that he has the relevant copyright; it will not be much difficult to prove that the Defendant has copied a substantial part of his copyright work according to the above principles. Such a situation can, however, become complex when an actor whose image has become synonymous to a fictional character refuses to provide consent to use. In such a situation, disputes between the actor and the copyright owner can create an unsolvable impasse under the present law. Thus, specific statutory provisions regarding character merchandising are the need of the hour.

Conclusion

It may be summed up that even though, the Hon’ble Courts are keen towards providing authors copyright protection in favour of their fictional characters, innumerable instances keep on happening where an image or name of a fictional character or a celebrity are used by unauthorised persons. However, in cases of copyright infringement, the Hon’ble Court has taken a stern approach in favour of the authors. Therefore, concerned parties are advised to obtain a license from the owner of the copyright to avoid any adverse consequences. Lastly, it must be always remembered that the difference between victory and loss is often the expertise of a lawyer.

Dipro Dawn

Having graduated from the Law School, Dipro joined the firm as a trainee with the Trade Marks team. He was soon made a part of the team who now advises clients in various sectors, irrespective of the size of the business. He is one of the active members in the trademarks opposition team who also handles cancellation actions from time to time. Besides, he often assists the litigation team in matters concerning all kinds of IP. He takes great interest in other research-related activities.

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