6th Global IP Convention 23rd to 30th January 2013

1. Dr. Tabrez Ahmad, techolexindia.blogspot.in, 1

2. Dr. Tabrez Ahmad, techolexindia.blogspot.in, 2

3. Agenda
 Introduction
 To find whether fictional characters are copyrightable
 Fictional Characters, their types and composition
 Copyright law regarding fictional characters in US
 The two-part test for copyright infringement of fictional
character
 Issues and weaknesses of copyright law protecting characters
 Alternative protections
 Indian scenario regarding copyright ability of fictional
characters
 Conclusion
 Bibliography

Dr. Tabrez Ahmad, techolexindia.blogspot.in, 3

4. Introduction
Fictional characters, being a multi-dollar game, needs strong
protection. However, there is no statutory right both in US and
India to protect the same and even courts have approached
fictional characters very inconsistently.
There is a need to ponder on the following issues:
 To find whether fictional characters are copyrightable
 What amounts to infringement of fictional characters?
 What other alternative protections are available to
owner of a fictional character( besides copyright law)?
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 4

5.  “Lord Bowen once sagely remarked: 'Law should follow
business.’”
 Fictional characters are the backbone of a multi-billion-dollar
industry.
 Purpose of copyright and idea expression debate regarding
character.
 Fictional characters – their types (Pure, Visual,
Literary,Cartoon).
 Components of fictional character.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 5

6. COPYRIGHTABLITY OF FICTIONAL
CHARACTER
1. Distinct Delineation Test
2. "Story Being Told" Test
3. “I know it when I see it”.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 6

7. Distinct Delineation Test
Laid down in Nichols v. Universal Pictures Corp 45 F.2d 119
(1930)
Followed in :
 Olson v. National Broadcasting Co 55 F.2d 1446 (9th Cir.
1988)
 Detective Comics, Inc. v. Bruns Publications 111 F.2d 432
(1940)
 Nimmer’s opinion.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 7

8. "Story Being Told" Test
 Laid down in - Warner Bros. Pictures, Inc. v. Columbia
Broad. Sys. Inc. 216 F.2d 945 (9th Cir. 1954). -
Nimmer’s criticism
 Universal City Studios v. Kamar Indus 1982 Copyright
L. Decisions (CCH) ¶ 25,452 (S.D. Tex. 1982).
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 8

9. "I know it when I see it" test.
 Laid down in Jacobellis v. Ohio 378 U.S. 184, (1964)
 Justice Stewart "I shall not today attempt further
to define the kinds of material I understand to be
embraced within that shorthand description
["obscene" ]; and perhaps I could never succeed in
intelligibly doing so. But I know it when I see it . .
."
 Extended to Gaiman v. McFarlane 360 F.3d 644 –
its criticism
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 9

10. Test of infringement of
copyrightability of characters.
 The primary test used to determine infringement is by
comparing the degree of substantial similarity
between the original character and the alleged
infringer.
 However, difficulties arise in distinguishing the point
where similarities become substantial enough to
constitute copyright infringement
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 10

11. ISSUES AND WEAKNESSES OF COPYRIGHT LAW
PROTECTING CHARACTERS
 Separating Characters from Their Work
 Extending the Character into Subsequent
Works – Silverman v. CBS 870 F.2d 40.
 Visual Characters v. Literary Characters
relying on Walt Disney Productions v. Air Pirates
and Warner Bros., Inc. v. American Broadcasting
Co.
 Pure Characters - Columbia Broadcasting System
v. DeCosta
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 11

12. RECOMMENDATIONS: ALTERNATIVE
PROTECTIONS
 Trademark and Unfair Competition
 require a character to acquire a "secondary meaning" with a
widely-recognized source in order to receive protection and
further requires a showing of a "likelihood of public
confusion."
 Protected "ingredients" are broader under a trademark
than a copyright regime and may include a character's
name (Tarzan), physical appearance and costumes
(Superman) and other phrases associated with a character.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 12

13.  Right of Publicity
 provide protection against commercial exploitation of an actor's
name, face, or voice.
 the right of publicity may be misinterpreted when applied to
fictional characters by confusing the creator with the character.
 Misappropriation
 the "thing" allegedly appropriated (the "quasi-property") must
be created by a substantial investment of time, effort, and
money.
 the defendant must appropriate this "thing" at little or no cost
 the plaintiff must be injured by the misappropriation, ordinarily
by a diversion of profits.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 13

14. INDIAN SCENARIO REGARDING COPYRIGHTABILITY OF
FICTIONAL CHARACTERS.
 “artistic works” in India reveals “a painting, a
sculpture, a drawing, an engraving or a photograph, a
work of architecture, a work of artistic craftsmanship”
 King Features Syndicate Inc. & Ors. v. Sunil
Agnihotri & Ors. on 11/4/1997 (unreported)
 Raja Pocket Books v. Radha Pocket Books
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 14

15. CONCLUSION
 The craze over professional wrestling involving
fictional characters shows just how important they
can be.
 Yet the current law of copyright is very unsettled
and vague, thus making it difficult to know when a
character has been sufficiently developed so as to
be copyrightable.
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 15

16. Sources:
 Gregory S. Schienke, The Spawn of Learned Hand-A Reexamination of
Copyright Protection and Fictional Characters: How Distinctly Delineated
Must the Story Be Told? 2005 9 Marq. Intell. Prop. L. Rev. 63

 Leslie A. Kurtz, The Independent Legal Lives of Fictional Characters, 1986 Wis.
L. Rev. 429, 440 (1986)).

 Leon Kellman, The Legal Protection of Fictional Characters, 25 Brook. L. Rev.
3, 6 (1958).

 E. Fulton Brylawski, Protection of Characters--Sam Spade Revisited, 22 Bull.
Copyright. Soc'y. 77, 78 (1974).

 Kenneth E. Spahn , The Legal Protection Of Fictional Characters, 9 U. Miami
Ent. & Sports L. Rev. 331

 Steven L. Nemetz, Copyright Protection of Fictional Characters, Intellectual
Property Journal (1999-2000)
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 16

17. Cases Referred:
 Warner Bros. Pictures, Inc. v. Columbia Broad. Sys. Inc., 216 F.2d
945 (9th Cir. 1954).
 Jacobellis v. Ohio, 378 U.S. 184, 197 (1964)
 Universal City Studios v. Kamar Indus 1982 Copyright L.
Decisions (CCH) ¶ 25,452 (S.D. Tex. 1982).
 Gaiman v. McFarlane 360 F.3d 644
 Silverman v. CBS 870 F.2d 40 (2d Cir.)
 Walt Disney Productions v. Air Pirates 581 F.2d 751
 Columbia Broadcasting System v. DeCosta 377 F.2d 315 (1st Cir.
1967).
Dr. Tabrez Ahmad, techolexindia.blogspot.in, 17

18. Dr. Tabrez Ahmad, corpolexindia.blogspot.com, 18

19. Dr. Tabrez Ahmad
http://technolexindia.blogspot.in 19

20. Dr. Tabrez Ahmad, techolexindia.blogspot.in, 20