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.
This article is not
legal advice. You should consult an attorney if you have legal questions
that relate to your specific publishing issues and projects.
Sign up for our FREE
PubLaw Update Newsletter and receive new articles sent to your email
address as they are published.
Lloyd L. Rich is
an attorney practicing publishing and intellectual property law. He can
be reached at 1163 Vine Street, Denver, CO 80206. Phone: (303) 388-0291;
FAX: (303) 388-0477; E-Mail: rich@publishingattorney.com;
Web Site: http://www.publishingattorney.com.
