Protection Of Cartoon Characters In India

In this article, we shall examine the extant law and decided cases to analyze whether the IP in cartoon characters is protectable in India.

EXPLOITATION OF CARTOON CHARACTERS

Characters can move effortlessly from one medium to another and may also assume new dimensions. For example, a cartoon character that starts off as a character in a comic book, after gaining popularity, may be extensively commercialised in connection with a wide range of products and services, thereby providing ample revenue generating avenues.

PROTECTION OF CARTOON CHARACTERS

In today's times, it is not unusual to find a character that made its first appearance in a comic book or in a film being immediately, if not concurrently, exploited in other media formats or forms. Therefore, the best way to protect the character is to devise a comprehensive protection policy whereby the character is simultaneously protected under copyright and trademark laws.

Also, in its recently published Economic Research Working Paper No.61 titled "Batman forever? The economics of overlapping rights"^[1], WIPO conclusively remarked: "This research finds that intellectual property rights and overlapping rights frameworks positively affect creative reuses and convergence of media content. At large, when comic characters are copyright protected and they are also registered as U.S. trademarks, they are more often reprinted and enter more franchise movie productions. This might be due to more effective branding and merchandising around the character which the registration of a trademark can support and this also corroborates the idea that different type of rights support different functions in markets. The increase in reuses we observe also translates in an increase of sales value once trademarks are registered."

PROTECTING CARTOON CHARACTERS UNDER COPYRIGHT ACT 1957

To begin with, Section 13 of the Copyright Act, 1957 offers protection only to original literary, artistic, musical, dramatic works, sound recordings and cinematographic films.

While comic strips may qualify as 'literary work', the cartoon drawings/ graphics may be covered under 'artistic work'. However, since the statute extends copyright protection only to an original work and not the idea, hence a cartoon character inherently cannot be provided copyright protection as an 'artistic work'.

Registration of Copyright is not mandatory for enforcement of rights in India. However, if the work is created in India, it is recommended to obtain copyright registration, since it serves as a proof of ownership for enforcement of rights. Also, if the work is created in a country other than India and such country is a signatory to the Berne Convention or Universal Copyright Convention, then copyright registration in any of these countries will be sufficient to establish ownership of the copyright works.

Although comic book characters are not specifically protected under the Copyright Act, however, several Courts (both in and outside India) have accorded copyright protection to such characters, whereby these Courts have been liberal at protecting characters, if they have distinctive traits and attributes.

OWNERSHIP OF CARTOON CHARACTERS

As a general statutory norm, the ownership of the copyright of a work lies with its author. An exception to this rule is where a person creates a character in the course of employment or under a contract of service, wherein, unless there is an agreement to the contrary, the employer or the person commissioning the work becomes the owner of such work^[2]. In Malayala Manorama vs. V T Thomas^[3], the High Court of Kerala held that the cartoon character 'Boban and Molly' was created before Mr. Thomas got employed with the publication house, and hence, not in the course of employment. Thus, the ownership over the character would rest with the creator. However, if the character would have been created by Mr. Thomas in the course of employment or under a contract of service, the copyright (ownership) would vest with the publishing house.

PROTECTING CARTOON CHARACTERS UNDER TRADEMARKS ACT, 1999

While the copyright in a cartoon character, would eventually expire (after 60 years beyond the life of the creator) and fall into the public domain, however, the trademark does not expire after a set period of time and can live on indefinitely.

A perusal of Section 2 of the Trademarks Act, 1999 clarifies that cartoon characters, names, logos etc. are protectable as a mark.

Unlike copyright protection, the Trademark law not only protects the cartoon character, but also extends the protection to the character's name and likeness.

As it is for Copyright law, registration of mark is also not mandatory in India. However, having a registration gives better protection to proprietor of the mark and reduces the burden of proof of reputation at the time of enforcement and hence, registration is advisable.

Courts in India and USA have time and again laid down precedents establishing protection of cartoon characters.

SOME RELEVANT CASES IN INDIA AND USA WHEREIN CARTOON CHARACTER HAS BEEN PROTECTED SEPARATE FROM THE COMIC STRIP UNDER COPYRIGHT LAW ARE:

• One of the earliest Indian case relating to cartoon character and its ownership (also discussed above) is V.T. Thomas Alias Toms & Others vs. Malayala Manorama Company (appeal decided on January o4, 1988 by High Court of Kerala). The High Court held that cartoon character would fall within definition of 'artistic work' and observed "An important point to be noted is that a work posits the existence of a tangible form (to borrow the words of Lord Hodson). No tangible form can be posited in relation to ideas, still to be formed in an itching brain of a creative artist.""
• In 1997, the Hon'ble Delhi High Court in Raja Pocket Books vs. Radha Pocket Books, 1997 (40) DRJ 791 laid down the rules of comparison in copyright infringement matters. The case involved a plea raised by the Plaintiff stating that the Defendant had copied and utilized the Plaintiff's fictional character "Nagraj". The court held 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. Similarly about the theme of visual, phonetical similarity and over all impression of the two works that the same is likely to deceive such a man or cause confusion that he may make mistake in the goods of defendant for that of the plaintiff."
• 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 laid down a two-step test to determine copyright infringement in characters. The first step entails a comparison of the visual similarities followed by a comparison of the personalities of the characters. Applying the test, it was held that the Defendants were liable for copyright infringement.

  Such tests of infringement shall be applied subsequent to establishing the copyright-ability under the "Character Delineation Test" laid down in Nicols vs. Universal Pictures Corporation, [45 F.2d 119 (2d Cir.1930)], 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)].

• In Halicki Films, LLC vs. Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir.2008), the court recognized that copyright protection extends not only to an original work as a whole, but also to "sufficiently distinctive" elements contained within the work.

• In Walt Disney Productions vs. Air Pirates, 581 F.2d 751 (9th Cir.1978), the court considered a number of subversive comic books that portrayed well-known Disney characters as being active participants in "a free thinking, promiscuous, drug ingesting counterculture." In holding that the Disney characters were copyrightable (and that Disney's copyright in those characters had been infringed), it distinguished a prior decision suggesting that "literary characters ordinarily are not copyrightable," (citing Warner Bros. Pictures, Inc. vs. Columbia Broad. Sys., Inc., 216 F.2d 945 (9th Cir.1954).

• In Detective Comics, Inc. vs. Bruns Publications Inc., 111 F.2d 432 (2d Cir.1940), Fleischer Studios vs. Freundlich, 73 F.2d 276 (2d Cir.1934) and King Features Syndicate vs. Fleischer, 299 F. 533 (2d Cir.1924), the court while holding that comic book characters are copyrightable, found that the character Superman was infringed in a competing comic book publication featuring the character Wonderman.

• In Olson vs. National Broadcasting Co., 855 F.2d 1446 (9th Cir.1988), the court held that characters in a television series or a motion picture may also be entitled to copyright protection.
• In Halicki, 547 F.3d at 1224 and Rice vs. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir.2003), the courts held that copyright protection is available only "for characters that are especially distinctive." It was further held that a character may be protectable if it has distinctive character traits and attributes, even if the character does not maintain the same physical appearance in every context. To meet this standard, a character must be "sufficiently delineated" and display "consistent, widely identifiable traits."
• In DC Comics vs. Towle 802 F.3d 1012 (9th Cir. 2015), based on the above precedents, the court set down a "three-part test" for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection:

First, the character must generally have "physical as well as conceptual qualities."

Second, the character must be "sufficiently delineated" to be recognizable as the same character whenever it appears.

Third, the character must be "especially distinctive" and "contain some unique elements of expression." It cannot be a stock character such as a magician in standard magician garb. Hence, even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard.

Thus, the best way to protect a graphic character under copyright law is to ensure that the character's appearance and personality are specific and unique since, courts have not hesitated to protect graphic depiction of a character alone, without the plot elements.

SOME RELEVANT CASES WHEREIN COURTS HAVE PROTECTED THE CARTOON CHARACTER UNDER TRADEMARK LAW WHETHER OR NOT THE MARK IS REGISTERED IN INDIA

• In the case of Disney Enterprises Inc. & Anr. vs. Santosh Kumar & Anr. CS(OS) 3032/2011, the Defendant was selling stationery items with characters such as Hannah Montana, Winnie the Pooh, etc. whose merchandising privileges were owned by the Plaintiff. The Plaintiff claimed that the characters fall under 'Artistic Work' within the meaning of Section 2(c) of the Copyright Act 1957, hence, by unauthorized depiction, the Defendants are also liable to copyright infringement under Section 51 of the Copyright Act 1957. Further, it was claimed that Plaintiff's characters and trademarks are used in every business that the Plaintiffs have ventured into, be it travel, real estate, management and design services, print and publishing industry, consumer goods and merchandising, etc. The court held that the degree of association between the Plaintiff and the Plaintiff's materials is so intense that any reference to them leads to a substantial part of the relevant public recognizing and associating them with the Plaintiffs alone. Hence, the Delhi High Court permanently injuncted the Defendant from selling stationery items owned by the with Plaintiff.
• Similarly, in Disney Enterprises Inc & Anr vs. Gurcharan Batra & Ors (C.S.(OS) No.607/2006), the Delhi High Court injuncted the Defendants from selling counterfeit school bags bearing the names and likenesses of the Plaintiffs' characters viz. Mickey Mouse, Minnie Mouse, Goofy, Pluto and Daisy Duck.
• Also, the mark 'DISNEY' has been recognised as well-known mark by the Hon'ble Delhi High Court in Disney Enterprises Inc vs. Gurmeet Singh (C.S.(OS) No.1451/2011.)
• In Disney Enterprises vs. Kimcartoon & Ors (CS(COMM) 275/2020), the Delhi High Court vide order dated July 27, 2020 issued an interim John Doe order directing internet service providers to block a total of 118 rogue websites including KissCartoon, KissAnime, and GoGoAnime which were broadcasting cartoon programmes copyrighted by Disney.

SOME RELEVANT CASES WHEREIN COURTS HAVE NOT PROTECTED THE CARTOON CHARACTER UNDER TRADEMARK LAW

• In the case of Chorion Rights Limited vs. Ishan Apparel and Ors. (2010) ILR 5 Delhi 481, the court dealt with character merchandising. The trademark in contention before the Delhi High Court was the famous cartoon character 'NODDY' which was being used by the Defendant on apparels. The court observed ''what is asserted by the plaintiff is not a conventional mark used as a trademark, but the use of a fictional character as a trademark, or a trade name. In other words, the character's potential to attract customers, on the basis of perceived attributes is the basis for its trademark exploitation." The court in its judgment referred to the Bombay High Court's judgement in Star India Private Limited vs. Leo Burnett (India) Pvt. Ltd, 2003 (27) PTC 81 (Bom) and explained the position thus:

"Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others. It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising."

Though the court recognized 'NODDY' as protectable mark, however, due to lack evidence of use in India prior to the use claimed by the Defendant, could not injunct the Defendant from using its registered mark 'NODDY'.

• In the case of Warner Bros. Entertainment Inc. vs. Harinder Kohli and Ors, Warner Bros. moved Delhi High Court to seek an interim injunction on the use of the title "HARI PUTTAR". Warner claimed to have secured trademark registration in India for the word mark "HARRY POTTER" infringing the aforesaid registered trademarks of the Plaintiffs by the act of naming their film "HARI PUTTAR", which is visually and phonetically similar to their mark. Warner also asserted that their mark is a well-known character and is the protagonist of a series of seven novels written by British author Ms. J.K. Rowling. The court rejected the prayer to injunct the Defendant on the ground that the trademark HARRY POTTER is different from HARI PUTTAR and observed inter alia:

"…after careful consideration, I am of the view that even assuming there is any structural or phonetic similarity in the words "Harry Potter" and "Hari Puttar", what has to be borne in mind is that the Harry Potter films are targeted to meet the entertainment needs of an elite and exclusive audience the cognoscenti - an audience able to discern the difference between a film based on a Harry Potter book on the one hand and a film which is a Punjabi comedy on the other, the chief protagonist of which is Hariprasad Dhoonda. It is not the case of a consumer good or product, which stands on an entirely different footing. Necessarily, the yardstick must also differ, bearing in mind the fact that a consumer product such as a soap or even a pharmaceutical product may be purchased by an unwary purchaser or even an illiterate one, but the possibility of an unlettered audience viewing a HARRY POTTER movie are remote, to say the least."

Additionally, apart from civil enforcement of rights, in cases of counterfeit, owners' rights can be enforced through criminal actions.

Recently, the EUIPO in an opposition DC Comics vs. Magic Box INT. Toys S.L.U (Opposition No. B 3 060 398) vide its decision dated 07/04/2020 protected DC Comics reputable SUPERMAN mark () from a similar mark (), despite the fact that the applicant's mark covered different class of goods. This decision confirms that for there to be a sufficient risk of infringement, the real test lies in determining whether the association that the public might establish between the marks is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

CONCLUSION

The rapid technological advancement and digitization coupled with globalization has aided in the easy and swift accessibility of fictional characters worldwide. Consequently, innumerable instances of unauthorized use of protected characters keep surfacing. Hence, there is a pertinent need for owners and creators to exercise vigilance and prioritise obtaining copyright and trademark protection for their respective characters.

Priya Rao is the Managing Partner at Priya Rao & Associates.Views are personal