® InfoJur.ccj.ufsc.Br
© Copyright 1998 Lloyd L. Rich
Introduction
Everyone knows Bugs Bunny,
Sherlock Holmes, Mickey Mouse, Superman, James Bond, Barney, and the current
Disney children's film hero or heroine. They are all characters; some are
fictional characters while others are graphic characters. The primary
characteristic differentiating a fictional from a graphic character is whether
the character is depicted by a cartoon or other graphic representation or as a
"word portrait". Thus, Bugs Bunny and Mickey Mouse are graphic
characters and James Bond and Sherlock Holmes are fictional characters. This
article will focus on the protection of graphic characters.
Characters have always been part
of our culture, however in today's world of "hype" -- best sellers
and box office smashes, electronic media, and licensing of characters' images
for endless types of products and services - the exploitation of characters has
become an industry. The global commercialization of characters encounter only
minimal restrictions as in reality there are no frontiers, other than those
imposed by governmental or legal barriers, restricting the commercial
exploitation of characters. Characters move effortlessly from one medium to
another and frequently assume new dimensions. An important difference between a
graphic character and other categories of visual art is that a character has
the ability to take on a "life of its own". This broadly expands the
commercial value of the character because it provides the character with legal
protection in a variety of different settings, postures and characterizations
other than those in which the creator originally depicted the character.
Graphic characters, including
their names and images, have traditionally been commercialized in connection
with a wide range of products and services, such as licensing programs for
children's toys, posters, animated cartoons, fast food restaurants, and adult
and children's clothing. Because character development and the exploitation of
any particular character is driven by commercialization and profits, the issues
of "property ownership" and "intellectual property
protection" have become paramount.
Therefore, at the fundamental
level, one must ask whether a character may be owned as intellectual property,
and if the answer is yes, then how may that owner protect his/her property from
being exploited by others. As characters have become increasingly more
valuable, intellectual property and unfair competition law has evolved to
provide fictional and graphic characters varying degrees, although with some
uncertainty, of legal protection.
While the legal protection of
graphic characters is currently more defined than that for fictional
characters, courts are still inconsistent with regard to the specific body of
intellectual property or unfair competition law that provides such protection. Therefore,
the primary objective for the creator and/or owner of a particular character
should be that of providing the type of legal protection that cloaks the
character in a protective environment that combines the benefits of copyright,
trademark and unfair competition law. The overlapping protection provided by
these different bodies of law has led one commentator to reach the conclusion
that the situation existing in many courts has resulted in the convergence of
distinct bodies of law, such as copyright, trademark and unfair competition,
into a new body of law formulated solely to protect characters.1
The interplay of many factors has
resulted in this convergence of the law. These factors include: (1) the profits
that can be made from the commercialization of characters who are able to take
on a life of their own because they are capable of being transformed into new
works that employ new postures, settings and characterizations that differ from
those in which the character was originally depicted, (2) the ability of
characters as entertainment products to function as marks that are recognized
under federal, state and common law trademark law because they "suggest,
if not clearly indicate, origin" of the products or services on which the
character is used, and (3) the quality that a character develops through
extended use, both in time and from the increased number of products and
services on which the character is depicted, that leads the public to
frequently relate to the character as being human.2
Protection of Graphic Characters
Suppose a writer and an artist
are developing a comic book project. The main character is based on an idea
that the creators believe has enormous commercial potential; not just as a
character in a comic book, but hopefully in other media formats and
merchandising activities. As the creators develop their character it takes on
the essential characteristics that provide a character's uniqueness; a name,
physical appearance, and attitude or character traits. Will the law protect the
character in the comic book? If the character is used outside of the comic
book, will it still be protected? After all, in this age of hype and
commercialization, it is very rare to see a popular cartoon character in only
one medium. It is not unusual today to find a character that makes its first
appearance in a comic book or in a film to be immediately, if not concurrently,
licensed for toys, other products and services, and being exploited in other
media formats.
Therefore, what should the creators
do to protect their character? Today, since the best way to protect the
character is to use as broad-based a protection policy as possible, the
creators should practice "overkill". This means the character should
be protected by a combination of copyright, trademark and unfair competition
laws.
Copyright Protection
The 1976 Copyright Act provides
creators and/or owners of graphic characters copyright protection that is
strong, but of limited duration. It is important to remember that the
copyrightable expression of a character is much more than just the character's
physical appearance, and that it includes the specific name, physical
appearance, and character traits of that character.
Long lines of cases have found
graphic characters to be protected by copyright law. However, the early cases
failed to determine whether the unauthorized use of a graphic character would
result in copyright infringement liability if the new work contained only the
graphic character, and not the plot elements of the first work. There also
existed a degree of uncertainty regarding copyright infringement liability if
only a similarity in the depiction of the character existed without there also
being a similarity in the personality of the character. In Warner Bros., Inc. v.
American Broadcasting Cos.3 the court noted that "in determining whether a
character in a second work infringes a cartoon character, courts have generally
considered not only the visual resemblance but also the totality of the
characters' attributes and traits." A similar result was previously
evidenced in Detective Comics, Inc. v. Bruns Publications4 where the court
found that the character Superman was infringed in a competing comic book
publication featuring the character Wonderman. The court found that the
infringing work "appropriated the pictorial and literary details embodied
in" the copyrights protecting Superman.
The more recent cartoon cases
have been somewhat clearer in finding that the similarity in the graphic
depiction of a character alone, without the plot elements, may be sufficient
for a finding of copyright infringement, however, there still remains some
uncertainty with respect to such a finding. In Walt Disney Prods. v. Air
Pirates5 the infringers admitted copying the names and appearances, but placing
them in very different situations than those used by Disney, of more than
seventeen Disney cartoon characters for use in their adult, counter culture
comic books. The court rejected the defendant's fair use defense, but noted
that most of the previous cartoon character infringement cases "have
considered the character's personality and other traits in addition to its
image". This dictum once again raised the issue of whether similarity of
appearance by itself is sufficient for a finding of copyright infringement
liability. However, in a number of cases where cartoon characters were
reproduced as three-dimensional dolls or figures, copyright infringement was
found without any regard to the issue of copying the plot or personality of the
character.6 In those instances where copyright infringement was based solely on
the appearance of the character, the similarity was "virtually
exact".
One of the more difficult
problems of applying copyright law analysis and protection to graphic
characters is ascertaining how such protection will be extended to protect a
particular character once that character has taken on a life of its own and the
character is no longer existing in the original context in which it first
appeared. Copyright law will find that copyright infringement has occurred when
someone other than the rightful copyright owner of the character uses that
character without permission, especially if such use copies the appearance and
unique character traits that distinguishes the particular character.
In order to ascertain whether a
graphic character is entitled to copyright protection, the courts usually apply
the "character delineation" test. The critical issue in determining
if such protection exists is whether the particular character is sufficiently
and distinctively delineated so that it warrants protection. Because copyright
law does not protect ideas from infringement, but instead only protects the
expression of those ideas, courts will not protect character types. Therefore,
while a court would probably not extend copyright protection to any man with
super powers, the courts have extended copyright protection to Superman without
bestowing a monopoly on the mere character of a "super man".
Therefore, 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.
Protection Under Trademark and
Unfair Competition
Another way to protect the
graphic character, even if the character is protected by copyright, is to
protect it under trademark and unfair competition law. Federal, state and
common law protection will protect the character from being used by another
party without authorization when the character functions as a form of
identification and commands public acceptance and recognition. This protection
could prevent the exact duplication of the trademark owner's character or the
imitation of that character where the likely result is to cause public
confusion, mistake or deception with regard to source of the products or
services that carry the indicia of the character. The scope of protection is
usually only a matter of degree regardless of whether character protection
arises under federal trademark law (Lanham Act), state common law of trademarks
or unfair competition, or those sections of the Lanham Act that protect against
false descriptions and designations of origin.
Many commentators are of the
opinion that trademark and unfair competition protection for a character is
weaker than the protection provided under copyright law, but in actuality
trademark and unfair competition protection may be stronger because they could
provide the trademark owner with a perpetual monopoly in the use of the
trademarked character. 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 will only last for a finite time as set by statute, e.g.,
currently if the character is owned by the individual creator the duration of
copyright protection will be the creator's life plus an additional fifty years,
but if the character was created as a "work made for hire" protection
would only last for seventy-five years. 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.
Trademark law will not permit a
graphic character to be trademarked solely for its own protection, however, it
does permit 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.
Trademarks perform a number of
functions that are important to the public and include: (1) identifying one's
products by permitting the trademark owner to use a mark to distinguish his/her
products from those of another party, (2) signifying that all products and
services that carry the mark come from one source, (3) signifying that all
products and services that carry the trademark have a standard quality level,
and (4) serving as the primary advertising and marketing vehicle for selling
the products and services that bear the trademark.
As may be expected there are both
advantages and disadvantages to protecting a graphic character as a trademark,
however it is my opinion that the advantages far outweigh any disadvantages. On
the positive side, to obtain a trademark, a character does not have to include
the originality attributes that are required under copyright law. In addition,
in order to prove trademark infringement the trademark owner does not need to
prove that the infringer had access to the character as is required under
copyright law, but only that the mark was used by a party other than the owner
of the mark without permission. Finally, the longer term of protection --
potentially perpetual just as long as the registration requirements are
fulfilled, the mark is not abandoned, or 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, federal
trademark protection for a character may be costly. This will be 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. In this event 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. In addition, because
trademark protection is territorial, the mark may need to be registered in
countries other than just the United States to provide the maximum degree of
protection as possible. Furthermore, any 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.
Unfair competition laws involve a
variety of different causes of action that primarily fall into three
categories: (1) misrepresentation, (2) sponsorhip, and (3) misappropriation.
Although these categories are frequently viewed separately, they clearly
overlap.
Misrepresentation occurs when a
party represents that a particular character is associated with their product
or service, when, in reality, it is not. sponsorhip occurs when a party
indicates that a particular character has endorsed its product or service when
it has not. Misappropriation, which may be most relevant with the protection of
characters, occurs when a party in essence steals another's character in order
to associate it with their product or service. Therefore, when one brings an
unfair competition action, the injured party is claiming that their character
has been wrongly associated with another party's product, service, person,
company, or idea. If such misuse of a graphic character occurs and it is
determined under the "reasonable person standard" that the graphic
character had been misrepresented, used falsely as a sponsor, or
misappropriated then the party engaged in such misuse could be found liable for
trademark infringement.
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 Co.7 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.
Regardless of the particular
cause of action the critical issue in proving trademark infringement is the
"likelihood of confusion" and whether consumers are likely to be
misled or confused as to the source of the products or services bearing the
indicia of the trademarked character. For example, if ABC Company published its
own comic book that used the names and likenesses of Disney or Warner Brothers
cartoon characters, are consumers confused into believing that Disney or Warner
Brothers published that comic book? Likelihood of confusion does not require
that consumers actually purchased the infringing comic book, but only that they
believed it was associated with, sponsored by or approved by Disney or Warner
Brothers.
There have even been some
instances where courts have protected characters under trademark and unfair
competition law without requiring proof of deception. In these instances the
courts assumed a likelihood of confusion based solely on the alleged infringers
exploitation of a market created by the owner of the character. It appears
likely that these courts were attempting to protect the trademark owners' good
will and their ability to control the characters' and products' reputation.
However, this does not imply, even though trademark owners' might differ, that
every unauthorized use of a character by a party other than its owner should be
actionable.
CONVERGENCE OF PROTECTION
During the past twenty years
character owners have been successful in extending protection for their
increasingly valuable properties. Starting with a series of cases in the
previously restrictive Ninth Circuit (which includes California) there
commenced a new willingness by the courts that are influential in character
protection to protect graphic characters. These courts broadened the scope of
copyright protection by adopting the total "look and feel" approach
from trademark and unfair competition doctrines and adapted it to copyright
infringement analysis. 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 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. In addition, the court seemed
to rely upon subjective criteria, that was more similar to the secondary
meaning analysis frequently required in trademark infringement cases, rather
than a more exacting review of the similarity of the characters.8
Conclusion
Therefore, while the creator is
still admiring the newly created graphic character, he/she should recognize the
scope of legal protection available for the graphic character and should do all
that is necessary or financially feasible to properly protect this potentially
valuable graphic character.
Footnotes
1 Michael Todd Helfand, When Mickey Mouse Is as Strong as Superman:
The Convergence of Intellectual Property Laws to Protect Fictional Literary and
Pictorial Characters, 44 Stanford L. Rev. 623 (1992).
2 Id. At 628.
3 720 F.2d 231, 241 (2d Cir. 1983).
4 111
F.2d. 432 (2d Cir. 1940).
5 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132
(1979).
6 King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924)
- Sparky; Fleischer Studios v. Ralph A Freundlich, Inc., 73 F.2d 276 (2d Cir.),
cert. denied, 294 U.S. 717 (1934) - Betty Boop; and United Features Syndicate
v. Sunrise Mold. Co., 569 F.Supp 1475 (S.D. Fla. 1983 - Peanuts characters.
7 231 N.Y. 414, 132 N.E. 133, cert. denied, 257 U.S. 654 (1921).
8 Helfand supra at 643-645.
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