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Can Cartoon Characters be Copyrighted: A Comparative Study between English and Indian Laws under the Light of Shazam Productions Ltd v Only Fools The Dining Experience Ltd

Khurana and Khurana, Advocates and IP Attorneys India


Copyright of Cartoon Characters in India

 

Section 13 of the Copyright Act of 1957 provides protection solely for original literary, artistic, musical, dramatic, sound recordings, and motion pictures. Although comic strips may qualify as "literary work," the cartoon drawings/graphics may fall under "artistic activity." Due to the fact that the legislation grants copyright protection only to an original work and not to an idea, a cartoon character cannot be granted copyright protection as an "artistic creation." In India, registration of Copyright is not required for enforcement of rights. However, if the work is made in India, copyright registration is encouraged since it provides evidence of ownership for the enforcement of rights. In addition, if the work was produced in a nation other than India and that country is a party to either the Berne Convention or the Universal Copyright Convention, then copyright registration in any of these countries will be enough to prove ownership of the copyright works.

 

Although comic book characters are not technically protected under the Copyright Act, some Courts (both in and outside of India) have awarded copyright protection to such characters, and these Courts have been lenient in protecting characters with distinguishing qualities and characteristics.

 

As a general statutory rule, the author owns the copyright to his or her own work. The exception to this rule is when a person produces a character in the course of employment or under a contract of service, in which case, absent a contrary agreement, the employer or the person who commissioned the work becomes the proprietor of the work. In Malayala Manorama v. V T Thomas[1], the High Court of Kerala ruled that the cartoon character 'Boban and Molly' was established prior to Mr. Thomas' employment with the magazine, and was thus not produced during the course of his employment. Thus, the creator would retain ownership of the figure. However, if Mr. Thomas developed the character in the course of his job or under a service contract, the copyright (ownership) would belong to the publishing business.

 

In Raja Pocket Books vs. Radha Pocket Books[2], the Delhi High Court established the standards of comparability in copyright infringement cases. The lawsuit concerned a claim by the Plaintiff that the Defendant had plagiarized and misused the fictitious character "Nagraj" created by the Plaintiff. The court said, "The grounds of comparison to be applied in determining the likeness would be those indicated in the Supreme Court's judgment in R.G. Anand's case[3], namely that the subsequent work seems to be a duplicate of the original."

 

In Chorion Rights Limited vs. Ishan Apparel and Others[4], the court stated, "what is asserted by the plaintiff is not a conventional mark used as a trademark, but rather the use of a fictional character as a trademark or trade name." In other words, trademark exploitation is based on the character's potential to attract customers based on perceived attributes." In its judgment, the court cited the Bombay High Court's decision in Star India Private Limited vs. Leo Burnett (India) Pvt. Ltd,[5] and opined that one essential element of character merchandising is that the characters to be merchandised must have attained an independent existence and public recognition. Though the court recognized ‘NODDY’ as a protectable mark, however, due to lack evidence of use in India prior to the use claimed by the Defendant, could not injunct the Defendant from using its registered mark ‘NODDY’.

Copyright of Cartoon Characters in England: Analysis of Shazam Productions Ltd v Only Fools The Dining Experience Ltd[6]

 

Given the great literary heritage of the United Kingdom, it may come as a surprise that there was not a stupendous amount of literature surrounding whether copyright might exist in a fictitious figure. In Shazam Productions Ltd v. Only Fools The Dining Experience Ltd & Ors, dated 8 June 2022, the UK courts finally addressed whether a fictitious character may be protected under copyright law (IPEC).

 

The Court concluded that fictitious characters are eligible for copyright protection as literary works so long as they are distinct and unique. Having assessed this, the court decided that the defendants' copyright violations were "overwhelming and apparent" and that they had violated the law.

 

Key Issues Dealt in the Case

  • Is a character capable of protection?
  • Is a series of scripts a work as a whole?

Judgement and Analysis:

The IPEC upheld all of Shazam’s claims, except their argument that a body of scripts was a piece of work as a whole. It held that the two cumulative conditions set out in Cofemel decision were met, i.e. that:

  1. a work reflects the personality of its author (the originality requirement); and
  2. the subject matter is identifiable with sufficient precision and objectivity (the identifiability requirement).

Judge Kimbell QC found that the character of Del Boy easily passed the originality requirement, because of:

  • John Sullivan’s own background and the connection of the character to his personal experience;
  • the complexity of the character, including backgrounds, relationships and motivations; and
  • the language used by Del Boy, including his mangled French and his genuine impact on the development of the English language through words such as ‘lovely jubbly’ or ‘plonker’.

In assessing the identifiability requirement, John Kimbell QC watched a number of episodes of Only Fools and was struck by how much Del Boy was described in the script, including his consistent development throughout the series.

While the Court accepted that OFDE’s script had elements of copyright infringement, it did not accept that a body of scripts, taken as a whole, attracted copyright protection. In doing so, it noted that only the individual scripts were intended to be performed, and that it cannot be suggested that they were intended to be performed continuously. While there are examples of literary works being published in chapters then republished as a single work, there was no evidence to suggest that Only Fools was ever intended to be a unitary whole.

The judgment has attracted conflicting views from legal commentators, but brings UK copyright protection into a consistent line with cases from other countries, such as the Pippi Longstocking decision made in Germany and Sherlock Holms and Dr Watson decision in the United States (Klinger v. Conan Doyle Estate, Ltd.).

Whilst this is good news for all creators and helps defend unique characters of fiction from unfair dealing, businesses that have previously used literary characters in their marketing, promotions and as themes will need to take extra care when using a literary character without license from the rights holder.

In order to rely on the defences of parody and pastiche, use of the literary characters must be more than blatant imitation, and must add additional features to the work in a humorous or mocking fashion. It is also important to remember that there must be fair dealing in the use of the literary character as failing at this hurdle would scuttle both defenses.

Conclusion

The rapid technological advancement and digitization coupled with globalization has aided in the easy and swift accessibility of fictional characters worldwide. Consequently, innumerable instances of unauthorized use of protected characters keep surfacing. Hence, there is a pertinent need for owners and creators to exercise vigilance and prioritize obtaining copyright and trademark protection for their respective characters.

Author Details- Satakshi N Dixit – a student of NMIMS University, Mumbai, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

 

[1] AIR 1989 Ker 49

[2]  1997 (40) DRJ 791

[3] 1979 SCR (1) 218

[4] (2010) ILR 5 Delhi 481

[5] 2003 (27) PTC 81 (Bom)

[6] [2022] EWHC 1379 (IPEC)

Khurana and Khurana, Advocates and IP Attorneys



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Khurana and Khurana, Advocates and IP Attorneys

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