THE PROTECTION OF FICTIONAL CHARACTERS
IVAN HOFFMAN, B.A., J.D.
[NOTE: The reader should also read "Legal Protection for Games" on my site.]
Characters, whether described merely in writing in the text of a work or depicted in graphics, can be of enormous economic value, often far in excess of the value of that text. Characters can form the basis for motion pictures, television productions, video games, web sites, merchandising rights and other such forms of exploitation that can make the income received from the ownership of rights in characters dwarf the income from the text in which the characters appear. As but one example, how many of you have read the original book “Pinocchio” compared to those that have had, as a child, some merchandise bearing the likeness of that character?
Thus, consistent with my steady theme throughout all my writing and work on behalf of my clients to “Own Everything!,” let me discuss some of the rather complex set of laws governing the rights in characters. These laws fall generally within the scope of trademark and copyright laws, although in a given instance the protection of characters can also be the subject of contract law if there is some license or other agreement dealing with the licensing or other use of characters, as well as right of publicity laws and perhaps other laws as well, both federal and state.
Rights to characters may exist under federal trademark law as well as under state laws dealing with unfair competition and passing off. The key to federal trademark protection is that marks are protectable only to the extent that they are used to identify the source of certain products and/or services. Thus it is not merely having a description or depiction of a character, whether in text or graphic format, that matters. Instead, trademark rights depend upon having a character that is used in relationship to specific goods and/or services and which character is then deemed to be a “source identifier.” The latter term means that the character is considered in the minds of the public as identifying a particular source of the goods and/or services.
Before such rights of trademark in characters can be found to exist, the law requires that the character must have developed what the law refers to as a “secondary meaning.” This refers to the legal doctrine that when a consumer sees the particular character, it associates it with a particular source. Of course the best example would be Mickey Mouse. Everyone on the planet knows that that character stems from a particular source…Disney. To the same extent would be Bugs Bunny, the source being Warner Bros. This secondary meaning then allows the consumer to know that when he or she sees or relates to that character, that the particular source is behind it, either directly or through some quality-controlled licensing arrangement. (Read “Naked Licensing of Trademarks.”)
But there are many other characters that are not sufficiently well-known to have developed that secondary meaning especially when it comes to seeking trademark protection for characters already in the public domain (see the discussion below in this regard under the Copyright section). For those characters, the law requires the trademark applicant to show that, through extensive use and marketing and other evidence, that the public identifies that public domain character with a particular source. For example, Pinocchio in its literary form, is in the public domain. However, the widespread and worldwide popularity of Pinocchio the cartoon embodiment by the Disney company would qualify as such a secondary meaning. In other words, when we see or relate to the said character today, we universally relate it to the Disney cartoons. However, there are cases in which the public domain characters such as Little Miss Muffet, Little Red Riding Hood and similar characters were denied trademark protection because, as public domain characters, the public does not identify those characters with a particular source but instead merely as literary characters.
The rights of trademark can potentially afford the owner protection for the character’s name, physical appearance and distinctive designs and perhaps other qualities. To the extent that such rights exist, the rights of the owner of trademark are to prevent the use of a mark as a trademark in a manner that is likely to cause confusion in the minds of the public as to the source. In other words, if the mark is being used by another party in such a manner that potential consumers are likely to believe that such use is endorsed by or is otherwise associated with the mark’s owner, then the mark’s owner may have rights to prevent such use and to seek damages and other remedies for the same.
However, like copyright law discussed below, there is a doctrine of fair use in the trademark law and for an explanation of such doctrine, read “Fair Use of Trademarks.” This doctrine often allows the use of a mark in such a way as to not lead to such confusion in the minds of the public.
However as well, under the federal anti-dilution statute, even if a use were to be deemed to be a fair use and thus not an infringement of a mark, the use might also be enjoined as subjecting the famous mark to dilution, meaning that such use tends to dilute the value of the mark even if not creating confusion in the minds of the public.
Thus, character protection under trademark law can exist concurrently with such protection under copyright law or can exist after the expiration of rights under that copyright law since trademark rights can go on virtually forever as long as the use qualifies, the mark is not “abandoned” or has not become “generic” and the appropriate filings are made.
As indicated above, a character can exist merely by its textual description of that character. Who he or she is, what he or she looks like, the manner of behavior and other such characteristics can all be described, in writing, by the author. As such, the character may be protected under copyright law as part of the text of that work (see discussion below). Since one of the rights of copyright is the right to make derivative works based on the work, if there is such protection, the author (or whoever is the proprietor of the rights in and to the text including the character) retains the right to make further use of that character in such derivative works.
However, the character as described textually has to be protectable by copyright, meaning that it must have sufficient originality to satisfy the requirements of the statute. If the character as described is merely a “stock” character, there may not be sufficient originality to make the character protectable. In Gaiman et. al. vs. McFarlane et. al., these were the facts in summary version: The defendant McFarlane was a writer and illustrator and publisher of comic books. Plaintiff was a writer and was engaged by the defendant to write the scripts for some of the comic books that McFarlane then illustrated and had illustrated. There was no written agreement between the parties for the services of Gaiman.
A suit followed in which Gaiman claimed he was a joint author of the characters he wrote the scripts for and among the defenses raised by McFarlane was a defense that the characters as written by Gaiman were not protectable by copyright. Read “Joint Authors Under the Copyright Law.”
McFarlane argued that the contributions of Gaiman did not rise to the level of being protectable by copyright (except as to the character “Angela” as to which McFarlane conceded on this and the joint author issues discussed below) and thus that Gaiman had no claims to any rights in and to such contributions. McFarlane contended that the characters became copyrightable only after McFarlane worked on them doing his illustrations but that as submitted by Gaiman, they were not copyrightable.
The Court stated:
The Court went on:McFarlane makes two arguments for why Gaiman does not have copyright in Medieval Spawn (the name that McFarlane settled on for Olden Days Spawn) or Cogliostro. The first is that all that Gaiman contributed was the idea for the characters, and ideas are not copyrightable, only expression is and the expression was due to McFarlane’s drawing of the characters. It is true that people who contribute merely nonexpressive elements to a work are not copyright owners. As we said in Seshadri v. Kasraian, supra, 130 F.3d at 803, “the assistance that a research assistant or secretary or draftsman or helpfully commenting colleague provides in the preparation of a scholarly paper does not entitle the helper to claim the status of a joint author.” There has to be some original expression contributed by anyone who claims to be a co-author, and the rule (we’ll consider an exception momentarily) is that his contribution must be independently copyrightable. E.g., Erickson v. Trinity Theatre, Inc., supra, 13 F.3d at 1071; Aalmuhammedv. Lee, supra, 202 F.3d at 1231; 1 William F. Patry, Copyright Law and Practice 362-65 (1994). Had someone merely remarked to McFarlane one day, “you need a medieval Spawn” or “you need an old guy to move the story forward,” and McFarlane had carried it from there, and if later a copyeditor had made some helpful editorial changes, neither the suggester nor the editor would be a joint owner. Cf. Erickson v. Trinity Theatre, Inc., supra, 13 F.3d at 1064, 1071-72. Otherwise almost every expressive work would be a jointly authored work, and copyright would explode. [emphases added]
But where two or more people set out to create a character jointly in such mixed media as comic books and motion pictures and succeed in creating a copyrightable character, it would be paradoxical if though the result of their joint labors had more than enough originality and creativity to be copyrightable, no one could claim copyright. That would be peeling the onion until it disappeared. The decisions that say, rightly in the generality of cases, that each contributor to a joint work must make a contribution that if it stood alone would be copyrightable weren’t thinking of the case in which it couldn’t stand alone because of the nature of the particular creative process that had produced it.
The Court further stated:The contents of a comic book are typically the joint work of four artists—the writer, the penciler who creates the art work (McFarlane), the inker (also McFarlane, in the case of Spawn No. 9, but it would often be a different person from the penciler) who makes a black and white plate of the art work, and the colorist who colors it. The finished product is copyrightable, yet one can imagine cases in which none of the separate contributions of the four collaborating artists
would be. The writer might have contributed merely a stock character (not copyrightable, as we’re about to see) that achieved the distinctiveness required for copyrightability only by the combined contributions of the penciler, the
inker, and the colorist, with each contributing too little to have by his contribution alone carried the stock character over the line into copyright land. [emphasis added]
[Read “Scenes A Faire Under Copyright Law” for a further explanation of this doctrine.]McFarlane’s second argument against the copyrightability of Medieval Spawn and Cogliostro appeals to the confusingly named doctrine of “scènes à faire” (literally “scenes for action,” a theatrical term meaning the climactic scene in a play or opera, which is not the legal meaning). Related to the fundamental idea-expression dichotomy that we’ve already mentioned, the doctrine teaches that “a copyright owner can’t prove infringement by pointing to features of his work that are found in the defendant’s work as well but that are so rudimentary, commonplace, standard, or unavoidable that they do not serve to distinguish one work within a class of works from another.” Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003); see also Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 913-14 (7th Cir. 1996); Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 616-17 (7th Cir. 1982); Williams v. Crichton, 84 F.3d 581, 587-89 (2d Cir. 1996). If standard features could be used to prove infringement, not only would there be great confusion because it would be hard to know whether the alleged infringer had copied the feature from a copyrighted work or from the public domain, but the net of liability would be cast too wide; authors would find it impossible to write without obtaining a myriad of copyright permissions.
The Court continued:
The Court stated:McFarlane argues that even as dolled up by the penciler, the inker, and the colorist, Cogliostro is too commonplace to be copyrightable. Gaiman could not copyright a character described merely as an unexpectedly knowledgeable old wino, that is true; but that is not his claim. He claims to be the joint owner of the copyright on a character that has a specific name and a specific appearance. Cogliostro’s age, obviously phony title (“Count”), what he knows and says,his name, and his faintly Mosaic facial features combine to create a distinctive character. No more is required for a character copyright. DC Comics Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 25, 28 (2d Cir. 1982) (Batman, though assumed rather than actually determined to be copyrightable); Walt Disney Productions v. Air Pirates, 581 F.2d 751, 753-55 (9th Cir. 1978) (Mickey Mouse et al.); Detective Comics v. Bruns Publications, 111 F.2d 432, 433-34 (2d Cir. 1940) (Superman); Fleischer Studios, Inc. v. Ralph A. Freundlich, Inc., supra, 73 F.2d at 278 (Betty Boop). As long as the character is distinctive, other authors can use the stock character out of which it may have been built without fear (well, without too much fear) of being accused as infringers.
However, characters can also exist graphically. To the extent that the characters are the subject of some graphic illustration, such as in a children’s book for example (for the importance of children’s books read “Children’s Book Publishing.”) or are simply drawn or otherwise depicted even outside the scope of any text, then the characters can be copyrighted separately as a work of the visual arts, along with the filing of a copyright in the text if there is one as well.Although Gaiman’s verbal description of Cogliostro may well have been of a stock character, once he was drawn and named and given speech he became sufficiently distinctive to be copyrightable. Gaiman’s contribution may not have been copyrightable by itself, but his contribution had expressive content without which Cogliostro wouldn’t have been a character at all, but merely a drawing. The expressive work that is the comic-book character Count Nicholas
Cogliostro was the joint work of Gaiman and McFarlane—their contributions strike us as quite equal—and both are entitled to ownership of the copyright.
Some (but certainly not all) of the legal problems with the copyright protection of characters come when those characters are taken from one medium to another. For instance, a character created in a book (whether just textually described or depicted) is owned, at least presumptively, by the author or other copyright proprietor of such rights in the book. If the book is then licensed for motion picture use, for example, then the rights of copyright in the motion picture are likely to be owned the production company, distributor or some other party but in any instance, generally not the author or copyright proprietor of the source book. Thus, even though the motion picture features and may be very successful in marketing the character, the underlying rights to the character generally belong to the original author or other copyright proprietor in the book. However, because the motion picture in this example was an authorized, licensed derivative work, then the owner of the rights of copyright in and to the motion picture would, at least absent any contractual provisions, also own the rights of copyright in and to the character as depicted in the motion picture. This sort of “dual ownership” is clearly an unsatisfactory set of circumstances and thus, in any written agreement for the licensing of such rights from book to picture, the issue of rights of ownership of the licensed story and character must be essential provisions (among many other provisions of course). Read “Precise Contract Language.”
Further, there are complex issues presented when yet another new work, such as a movie, uses a character based on the character in the prior movie, as opposed to the character as created in the underlying text version. In a Ninth Circuit federal case, Danjaq et. al. vs. Sony et. al., just such an issue was presented in regard to the world famous character of James Bond. In very brief summary form, the character that appeared in the early Bond movies was significantly different than the character as written by Ian Fleming. But then, after the initial success of the films, Fleming wrote another novel with the character which, he admitted, contained elements based on the character as developed in the movies. This was followed by further movies based on further versions of the character and the litigations multiplied. The Court summarized the claim of one of the plaintiff’s as follows:
The case, unfortunately, dealt with the issues about rights to characters only peripherally since the issue was really one of delay in bringing the litigation. However, the lesson in the case and in all the myriad litigation that involved this character is: “write it down with precision!” Read “Private Laws.”The crux of McClory’s claim was that certain of the Bond movies released over the past thirty-six years infringed on McClory’s rights under United States copyright law. Because, McClory argued, he possessed the rights to both the novel Thunderball and the materials developed during the writing of the initial Thunderball script, he also possessed the rights to certain plot elements that first appeared in those works: namely, the “cinematic James Bond” character, SPECTRE, the villain Ernst Stavro Blofeld, and the theme of nuclear blackmail. [emphasis supplied].
Further, as discussed above, since movies are often made depicting literary characters that have become public domain based on their original publication in text form (Pinocchio, Tiny Tim, Scrooge etc. as but a few examples), those characters, as they are depicted in the motion picture may take on new levels of protection under the copyright that exists in that motion picture and the rights that attend the ownership of that copyright. Thus, while it is possible that a third party may use a public domain version of a character, they may not be able to use the still-protected version.
Further still, even characters that remain under copyright protection can be used in other works to the extent that such other use falls within the scope of the fair use provisions of United States copyright law. One recent example of this situation is in the “Wind Done Gone” case, in which the protected characters from “Gone With The Wind” were parodied and in which the Court upheld the right of the subsequent user to do so under the said fair use laws. But such a defense was not successful in a case involving the characters from the Seinfeld television series. Read “The Seinfeld and The Wind Done Gone Cases: Studies In Fair Use.”
Although copyright affords only time-constrained protection (read “When Do Copyrights Expire?”), under the present law such protection lasts for many decades.
Rights of Publicity
Real individuals often become identified with the characters they have portrayed in movies or television programs and thus the issues about “who owns the rights to the characters” present themselves in this context as well. Examples would be “The Lone Ranger” and the like. The written agreement between the actor and the party engaging the services of the actor to portray such character should deal with these issues with specificity.
In addition, there may be statutes in effect dealing with such issues. California for example as a specific statute (Civil Code section 3344 and 3344.1) dealing with the rights of publicity of both living and dead celebrities. These statutes may touch on issues related to fictional characters since even if the character being portrayed by the user is of a fictional character, by definition it includes the likeness of the celebrity. There may be different laws in your state.
There may be other forms of legal protection available in given instances including patent laws but in an effort to keep this difficult subject matter somewhat simple, I have not discussed these other areas. And of course there are many other legal issues presented by characters and this article is certainly not intended to be exhaustive of all those issues.
In all instances however, the creator or other proprietor of rights to a fictional character should seek the advice of an attorney experienced in these areas of the law.
The important point is to recognize the potential value in your creations or in the creations as to which you are acquiring rights and to see with long term vision. Read “What Business Are You In?”, “Set To Fail,” “Private Laws” and “The Need for Vision.”
© 2003 Ivan Hoffman. All Rights Reserved.