® InfoJur.ccj.ufsc.Br
© Copyright 1998 Lloyd
L. Rich
Introduction
My previous article, Protection
Of Graphic Characters (1) provided an overview to the protection of characters
and general guidelines for protection of a graphic character that is depicted
by a cartoon or other graphic representation, such as Mickey Mouse or Superman.
This article will focus on the protection available for a "fictional
character" (also referred to as a "literary character"), such as
James Bond, Sam Spade, Sherlock Holmes or Hopalong Cassidy, who is first
represented by a "word portrait" and then possibly at some later date
by a graphic representation.
Even though most stories and
plots are forgotten, the characteristics of a fictional character frequently
remain fixed in a reader's imagination; this fixation may then provide the true
underlying value of a particular literary work or series. Because of the
"value" that may be inherent in a fictional character, the creator
and/or publisher should always take steps to ensure that the fictional
character is protected, especially if there may be a possibility to use the
fictional character in book sequels, or for licensing the use of the fictional
character for films, television programming, electronic or other media or
merchandising. It is only by maintaining control and protection of the
fictional character that revenue streams may be maximized for the
creator/publisher of that character.
The relevance of this topic is
illustrated by a recent article in The New York Times (2) regarding Vladimir
Nabakov's 1955 novel Lolita and a new book, Lo's Diary, by Pia Pera that
allegedly has made extensive use of Lolita and its main characters Lolita and
Humbert Humbert. The Nabokov estate has reacted to the publication of Lo's
Diary by bringing a lawsuit against Ms. Pera alleging copyright infringement.
Ms. Pera has reacted to the lawsuit by stating "Lolita belongs not just to
literature but to everyday language and contemporary mythology. This suit makes
one wonder whether new light can be cast on our cultural heritage only after
the term of copyright has expired."
Three distinctive bodies of law
-- copyright, trademark and unfair competition -- provide overlapping
protection for a fictional character. This has led one commentator to conclude
that the current situation that exists in many courts has resulted in a
convergence of these distinct bodies of law into a new body of law formulated
solely to protect characters. However, although the convergence theory exists
for fictional characters it is not as demonstrable as it is for graphic
characters. (3)
Fictional characters have the
same basic characteristics as graphic characters in that they portray the
uniqueness of a particular character; the character has a name, physical
appearance and attitude or character traits. The primary difference between the
fictional and graphic character is that the physical appearance and
characterization of the fictional character resides in the imagination of the
reader and is continually being developed in the reader's mind by the author's
description of the character as the story unfolds. This is in contrast to the
graphic character where the physical appearance and characterization are visually
apparent for the reader. Although this is a rather self-evident difference it
is an extremely significant one when evaluating the scope of protection that is
available for fictional characters as compared to the protection available for
graphic characters. This is because the fictional character presents a unique
recognition problem since no two minds will see a particular character in the
same way unless that character has been visually depicted. The protection
problem may also exist when a later graphical representation of a fictional
character is portrayed very differently than from the word portrait that
initially appeared.
Copyright Protection
Copyright law will only protect
the characterization of a fictional character if the character is portrayed in
a copyrighted work. One difficulty in protecting a fictional character under
copyright law is that frequently a fictional character takes on a "life of
its own" that is independent of the story in which it first appeared. The
problem is how to protect the fictional character that takes this independent
life. Another difficulty is that sometimes a fictional character, even when it
is incorporated in a copyrighted work, is deemed by the court to not be
entitled to copyright protection. Furthermore, even when the fictional
character is protected it frequently receives less protection than that
accorded to graphic characters.
The underlying reason for this
varying degree of protection stems from the fact that similarities between
fictional characters are frequently less concrete than those for graphic
characters. Usually fictional characters are not represented by a singular
physical image but instead are merely representations that appear in the
reader's imagination and therefore different fictional characters are only
abstractions that cannot easily be compared.
Although it is rather evident
that copying of a particular fictional character has occurred if one uses
identical or substantially similar language to describe their fictional
character, but what more frequently occurs is a taking of the more abstract character
traits and elements that only conjure up a mental image of that character for
the reader. In reality, none of the verbally described characteristics of the
fictional character are as dominant as the visually depicted characteristics of
a graphic character and therefore the copyright law distinction between an
unprotectable idea and protectable creative expression may prevent copyright
law from protecting the fictional character.
Copyright protection for
fictional characters appears to have had as its genesis, a subsequently much
quoted statement by Judge Learned Hand. He suggested that characters might be
protected independent from the plot of a story. "It follows that the less
developed the characters, the less they can be copyrighted; that is the penalty
an author must bear for making them too indistinct." (4)
Although the decisions in cases
involving the protection of fictional characters have not been consistent, the
prevailing view has been that fictional characters are copyright protected. However,
the general trend with respect to copyright protection must be categorized as
one of restrictive protection rather than an all-encompassing scope of
protection. Generally in those cases where the fictional character was found to
be protected, the character that was copied was "distinctively
delineated" (or fully developed) in the original work and that the
character's delineation was misappropriated in the copier's work. But even in
those cases where the fictional character was protected the courts have had
difficulty in explaining why the fictional character was distinctively
developed. On the other hand, in those cases where the fictional character was
found not to be protected, the character was not distinctively delineated in
the original work and therefore that fictional character was only a particular
"character type" and was not entitled to copyright protection. Thus
any inquiry concerning the protection of fictional characters involves two
questions. "First, was the character as originally conceived and presented
sufficiently developed to command copyright protection, and if so, secondly,
did the alleged infringer copy such development and not merely a broader and
more abstract outline." (5)
Some courts have adopted a
"character delineation" test to help them decide whether fictional
characters deserve copyright protection. This test analyzes whether a fictional
character is developed specifically enough to warrant protection of the
character as copyrightable expression or instead, does the character's
description only describe a character type that it is nothing but an idea and
thus undeserving of copyright protection. As one commentator has stated,
"[f]ully realized characters in literature are little different than fully
defined personalities in daily life. ... A literary character can be said to
have a distinctive personality, and thus to be protectable, when it has been
delineated to the point at which its behavior is relatively predictable so that
when placed in a new plot situation, it will react in ways that are at once
distinctive and unsurprising." (6)
Therefore, to warrant copyright
protection, a fictional character must be specifically described and fully
developed. At times overcoming this "description hurdle" may be
difficult to achieve. This is because some courts are very skeptical of
protecting "word portraits" since they are unable to "see"
the differences between one fictional character and another.
Other courts have adopted what is
referred to as the "story being told" test. Some courts use this test
by itself or sometimes in conjunction with the character delineation test when
analyzing whether a fictional character deserves copyright protection. The
story being told test was first used when a court determined that Dashiell Hammett's
character, Sam Spade, in the novel The Maltese Falcon was not entitled to
copyright protection. The court stated that the character Sam Spade was merely
a vehicle for telling the story, rather than an essential part of the story
itself, and therefore Sam Spade as a fictional character could not be protected
under the copyright law. (7) For those of us who have read The Maltese Falcon
and intimately know Sam Spade, this result reveals how difficult it may be to
develop a fictional character so that a court will not merely view the
fictional character only as the vehicle for telling a story. One may even
wonder whether the court overlooked the fact that a reader of mystery fiction
may be more interested in the protagonist than in the plot, and instead simply
reasoned that Sam Spade was only the typical "detective" found
throughout the mystery genre.
The proof required to demonstrate
that copyright infringement of fictional characters has occurred is basically
the same as that required for graphic characters. The publisher/creator must
first prove that the alleged infringer had access to the fictional character.
This element is frequently and easily achieved because the court will infer
that the infringer had access to a fictional character if the copyrighted work
in which that character appeared was widely distributed. Next, one must prove
that there is a "substantial similarity" between the original
fictional character and the infringing character. The courts use a variety of
different methods to ascertain substantial similarity. These methods include
the character delineation test, the story telling test, an extrinsic test that
ascertains whether there is a substantial similarity in the theme, plot and
sequence, settings, mood, dialogues, and characters and finally an intrinsic
test that looks at the total concept and feel of a fictional character to
determine if that character has been copied and whether there is a substantial
similarity in copyrightable expression. Comparing fictional characters to determine
whether there is sufficient substantial similarity between them to result in a
finding of copyright infringement is difficult; similarities and
dissimilarities in the respective characters are relevant and "substantial
similarity must exist not between names or types of characters, but in the
complex of characteristics that amount to creative expression." (8)
There is one exception to the
substantial similarity analysis that is particularly relevant to fictional
characters. This exception is known as the scènes à faire doctrine that
prohibits a court from protecting material that is standard or common to a
particular subject or topic. Thus a stereotyped fictional character, unless one
copied the "exact" word portrait of that character, is not likely to
be copyright protected. For example, it is unlikely that a court would find
that an alleged infringer had infringed a mystery novel's main character just
because both smoked a cigar and spoke with a New York accent. In this instance
the court would probably conclude that the fictional character's
characteristics of "smoking a cigar" and speaking with a "New
York accent" were standard or common to the mystery genre.
Trademark Protection
A fictional character, similar to
a graphic character, cannot obtain trademark protection for its own protection,
but may only be protected when the trademark indicates a particular source of
goods and services. However, unlike for graphic characters, courts have not
fully embraced trademark protection for fictional characters. This attitude may
be due less to the courts' unwillingness to utilize trademark law to protect a
fictional character than to the likelihood of such a case arising since it is
highly unusual for a character that had never previously been depicted
graphically to be used in a commercial fashion.
A fictional character's
"name" may be a trademark if the character's name is used as a title
of a book, movie or series and therefore indicates a single source of the
entertainment product or service or it is used on other then entertainment
goods or services. Trademark protection may also be available for a fictional
character's unique verbal expressions, such as the Lone Ranger's "Hi-yo
Silver Away". Therefore, while the full spectrum of trademark protection
may be available for highly successful graphical characters, such a
possibility, other than for the unauthorized use of a fictional character's
name or verbal expression is highly unlikely for most fictional characters.
Furthermore, trademark protection may be precluded in those instances where
there is a problem associated with relating the trademark to a single source
such as in the entertainment industry where a character may be associated with
an author, artist, film producer, sponsor or even with the character itself. If
the source is fragmented then trademark protection may not be appropriate.
Unfair Competition Protection
Unfair competition protection
involves a variety of different causes of action that are found in the federal
Lanham Act and in state law and basically fall into the categories of
misrepresentation, false sponsorhip, and misappropriation. Many courts have
permitted various aspects of unfair competition law to protect fictional
characters. However, as with trademark law, unless a fictional character is
used wrongly in a commercial context, it is unlikely that unfair competition
laws would provide protection for the fictional character.
Conclusion
While there may still be some
degree of uncertainty and inconsistency regarding the legal protection of
graphic characters, the legal protection available for fictional characters is
even less uncertain and more inconsistent. Therefore, as a generalization,
fictional characters have less legal protection than graphic characters. This
is due to several factors.
Courts are uncomfortable
affording protection to fictional characters that they are unable to see. The
scope of legal protection is not as broad for fictional characters in that
copyright law is the dominant form of protection for fictional characters while
graphic characters may be broadly protected by a combination of copyright,
trademark and unfair competition law. In addition, intellectual property law is
usually used to prevent a diminution in the value of intellectual property.
Therefore, unless an infringer blatantly misappropriated a fictional
character's name and exactly duplicated a character's characteristics the
damages complained of would often be more of an artistic and subjective nature
rather than commercial damages, and courts frequently do not know how to
compensate for these types of damages. Thus, the protection of a fictional
character for artistic rather than commercial purposes may encounter particular
difficulty. In fact, the most difficult aspect of protecting a fictional
character is that one may be required to demonstrate that the value of the
particular fictional character has decreased, and not that one has been harmed
artistically since many courts would be unsympathetic to such a plea.
Useful Hints
Three hints that you may find
useful for protecting your fictional characters are:
Copyright register the underlying
work that incorporates the fictional character.
Trademark register the fictional
character's name or unique verbal expression.
Create and use a graphic
representation of the fictional character and copyright register and trademark
register the visualization of that character.
Footnotes
(1) Lloyd L. Rich, Protection Of
Graphical Characters, (1998) http://www.publaw.com
(2) Ralph Blumenthal, Nabokov Son
Files Suit To Block a Retold 'Lolita', The New York Times, October 10, 1998.
(3) 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).
(4) Nichols v. Universal Pictures
Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).
(5) Leslie A. Kurtz, Independent
Lives of Fictional Characters, 1986 Wis. Law Rev 429, 453 citing M. Nimmer,
Nimmer on Copyright § 2.12.
(6) Helfand, Ibid. Citing 1 Paul
Goldstein, Copyright: Principles, Law And Practice, § 2.7.2 at 128 (1989).
(7) Warner Bros. Pictures v. Columbia
Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971
(1955).
(8) Kurtz, Ibid. at 467.
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