The Burgeoning Saga of Character
Merchandising: Instances and Legalities
Indian
Daily, the Times of India has recently reported that senior and famous
comic-artist of India, Narayan Debnath who has created some popular cartoon
characters like “Handa Bhonda”, “Batul”, “Nonte Phonte”, detective Koushik Roy etc.
has sought copyright protection of the cartoon characters created by him.
Reportedly several platforms have misused the artist’s characters thereby
infringing copyright vesting in these characters originally created by Debnath.[i]
Aggrieved
by the continuous copy and misuse of his creations, the artist has now decided
to secure copyright protection over three of his characters namely “Handa
Bhonda”, “Batul”, and “Nonte Phonte”. The Times of India quotes the artist who
states that "I always knew these were my
creations, but now there will be a legal stamp on it."
Source: Internet
This
is not the first instance when characters or comic characters have been misused
by third parties for their own benefit. We often come across bags, lunch boxes,
gift items, stationery, apparels, utensils, balloons and toys decorated with
cartoon characters like Mickey Mouse, Donald Duck, Disney Princess, Chacha
Choudhary and Chotta Bheem which are not flaunted by kids alone but even the
elder ones love wearing t-shirts showcasing comic characters. However, while
purchasing these items and merrily using them it never strikes us that the use
of these comic characters without the creator’s permission is infringing the creator’s
IP rights. This commercialization of characters, whether real or fictional is
also termed as “character
merchandising”.
What constitutes
“character merchandising”?
In
the case of Star India Pvt. Limited v.
Leo Brunette (India) Private[ii],
the Bombay High Court observed that character
merchandising involved exploitation of fictional characters or fame of
celebrities by licensing such famous fictional characters to others. The Court
further remarked that for character
merchandising it was necessary that to be merchandised the character must have gained
some public recognition and achieved a form of independent life and public
recognition for itself and only then can such character be moved into the area
of character merchandising.
Character Merchandising
and Trademark Law
Comic
characters can be protected as “trademark” under the Trademark Act, 1999 as the
scope of a trademark under the Act is wide enough and entails that anything
which is capable of being graphically represented and able of distinguishing
goods and services of different person can be registered as a trademark.[iii]
Hence, comic characters even in two- dimensional and three-dimensional forms
can be covered under the Act.
Moreover,
the names of comic characters can also be protected under the Act. Hence, to
prevent misuse by third parties the original authors or creators have the
option of protecting their creation under the Trademark Act as well.
Character Merchandising
and Copyright Law
Relevant
provisions for protection of comic characters under the Copyright Act, 1957 are
reproduced herein below.
As
per the Copyright Law, copyright vests in a person the moment a work is
created. Thus,
prima facie copyright
registration is not mandatory and an action against any infringement can be
initiated even without registration. However, registration of work under the
Act is deemed advisable as the Certificate of Registration serves as a proof in
a Court of Law.
Here
it would be relevant to discuss the case of Raja
Pocket Books v. Radha Pocket Books[iv],
wherein the Plaintiff sought
temporary injunction against Defendant for manufacturing apparels bearing the
Plaintiff’s character “Nagraj” under the name “Nagesh”. The Plaintiff contended
that copyright in the comic series Nagraj vested
in it and the Defendant’s act of introducing a comic series bearing a closely resembling
character as well as title phonetically similar to “Nagraj” amounted to
infringement.
The Court while making an order in favour of Plaintiff and referring
the Apex Court’s decision in the case of R.G.
Anand v. M/s Delux Films & Ors.[v] opined that:
- There could
be no copyright in an idea, subject matter, themes or plot of legendry facts;
- Copyright
will be confined to the form, manner and arrangement and expression of the idea
by the author of the copyrighted work;
- Where
same idea is being developed in a different manner, it is manifest that the
source being common, similarities are bound to occur;
- Test of
similarity- whether or not the similarities are on fundamental or substantial
aspects of the mode of expression adopted in the copyrighted work. If the
defendant's work is nothing but a literal imitation of the copyrighted work
with some variations here and there it would amount to violation of the copyright;
In
cases of copyright, the term of right assumes significant consideration as a
copyright in a work is not for an indefinite period but does come with a stipulated
duration i.e. within the lifetime of the author until 60 years from the
beginning of the calendar year next following the year in which the author dies[vi], which implies that pursuant to death
of the creator and after 60 years from the date of death the characters will be
in the public domain open to use without the author’s permission or license.
Licensing of Fictional
Characters
The
licensing of fictional or comic characters has emerged as one of the most
sought after strategy to commercially exploit a creation and a profitable way
for licensees to market their products. Reportedly, the famous Marvel Comics
has leveraged the commercial value of its superheroes through a series of
profitable licensing agreements.[vii] The business of
character merchandising, has become very well known in our present times
and everyone who has a character, whether real or fictional, to exploit, does
so by the grant of licences to people who wish to use the name of the real or
fictional character.[viii]
For
example, in India Bonjour Retail has secured license of fictional/comic
characters like Doraemon, Hot wheels, Hello Kitty, Barbie and Ben 10 and is
manufacturing socks with the images of said characters.
[ix] Raj Kumar Jain, the MD
of Bonjour Retail with reference to
licensing states that licensing of
fictional characters from the IP holders gives it an edge over others.
Conclusion
It
cannot be denied that comic characters and IP rights are intrinsically woven
together and to reap the best benefits of creation it’s advisable for the
creators to register their ideas under the relevant IP laws. The markets today
are flooded with items bearing characters, celebrity or comic, hence it is
essential that IP rights are safely secured so that this burgeoning misuse of
characters by wrongful perpetrators are avoided.
[iii] Section 2(zb) of Trademark Act, 1999
[vi] Section 22 of the Act
[viii] Tavener Rutledge Limited v. Trexapalm
Limited (1975)FSR 479
