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Their recognition persists long after the particular circumstances in which they were depicted have been forgotten. India, having one of the biggest Film Industries Bollywood demands that a stronger copyright protection be imparted to these characters, above and beyond the conventional norms.
Several of these issues emerged in recent times regarding one of the most iconic movie that the Indian Film Industry has ever created, ‘Sholay’. Before delving into the trajectory of the Sholay battle, it is important to enunciate what the law is and what it should be.
I. Different creative elements of a ‘Film’
A film is protected as a ‘cinematograph film’ under the Indian Copyright Act under Section 2(f) as ‘...any work of visual recording and includes a sound recording accompanying such visual recording...’ A film also has a script, screenplay, music, lyrics and sound recording, each indisputably being independent copyrightable works. However, regarding the copyright protection of the ‘characters’ in a film, there is dearth of jurisprudence and case law in India.
II. Types of Characters : ‘Graphic’ v. ‘Literary’/ ‘Fictional’ Characters
As the name suggests, the primary difference between a ‘graphic’ character and a ‘literary’/ ‘fictional’ character is that while the former is depicted by a cartoon or other graphical representation, the latter is depicted in written/textual form, leaving its visual depictions a figment of the reader’s imagination. It is important to make this distinction as the Courts have been more lenient and receptive to the idea of copyrighting ‘graphic’ characters, being more well-defined and specific.
On the other hand there has been some reluctance regarding the ‘literary’/ ‘fictional’ characters, as the visual depiction of the same is not apparent and varies from one reader to the other.
Therefore it is more challenging to protect a character under copyright which is portrayed in textual form as well as to prove infringement as opposed to the characters in comic books, cartoon characters, movies which are visually depicted.
III. Copyright Protection of ‘Characters’
While the jurisprudence in India on the issue is scarce and there is lack of clarity, the Courts worldwide have postulated a few doctrines to enunciate whether the characters on their own accord, independent of the script/story/film are entitled to a copyright protection.
A. ‘Essentially Distinctive’ test
As per the essentially distinctive test, only those characters that are highly delineated with constant traits qualify for protection separate from the works in which they appear. As laid down by Justice Hand in Nichols v Universal Pictures Corp, 45 F. 2d 119, the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.
Also recognising for the first time the possibility of copyright in a ‘character’ described only by written word even though no such case had existed. Copyright protection had been granted to characters portrayed in ‘cartoon’ even prior to Nichols.
Borrowing the principle, several cases recognized copyright in characters within and separate from the work. In the case of Toho Co. Ltd v. William Morrow and Company Inc., 33 F. Supp. 2d 1206, it was held that the Godzilla character was entitled to copyright protection apart from any film, as it had developed a constant set of traits that distinguished him/her/it from other fictional characters in the same manner in which the character of James Bond (Metro-Goldwyn-Mayer v. American Honda Motor, 900 F. Supp. 1287) has been held to be copyrightable because of an identifiable set of traits that had developed over the course of the 16 James Bond Films.
Similarly, copyright was recognised in Rocky Balboa, the dominant character in each of the movies Rocky I, Rocky II and Rocky III being a highly delineated character. The physical and emotional characteristics of Rocky Balboa and the other characters were set forth in tremendous detail and the interrelationships and development of the characters are central to the movies.
That the Rocky characters are delineated so extensively that they are protected from bodily appropriation when taken as a group and transposed into a sequel by another author. (Anderson v. Stallone, 1989 WL 206431.)
Therefore, in order for a character to be copyrightable, it’s personality and characteristics should be more unique and specific.
B. ‘Story Being Told’ test
According to this test, a character could only be granted copyright protection if it ‘constituted the story being told’. The test was laid down for the first time in the case of Warner Brothers Pictures v. Columbia Broadcasting Pictures, 216 F. 2d 945 as “It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.” and applying the same, character ‘Sam Spade’ in the novel ‘Maltese Falcon’ was not considered as copyrightable.
The test has often been criticised as restrictive despite having been followed in various subsequent decisions which held that that copyright existed in the characters.
On the basis of the said principle, in the case of Walt Disney Productions v The Air Pirates et. al, 345 F. Supp. 108, it was held that an examination of the copyrighted works of plaintiff readily discloses that the plot of the piece not only centres around the character but is quite subordinated to the character’s role and therefore would be held protectable under the copyright of the work, as component parts. Where the movie did not revolve around intricate plots or story lines and instead focus was on development of characters, the charactersconstituted ‘the story being told’. (Anderson v. Stallone, 1989 WL 206431.).
C. Copyright Protection of ‘Characters’ in India
One of the first Indian cases that dealt with copyright protection of characters was Raja Pocket Books v. Radha Pocket Books, 1997 PTC 17 (Del) where copyright in the comic character ‘Nagraj’ was recognized as an artistic work, copyrightable under the Indian Law.
Recently in Sholay Media and Entertainment Pvt Ltd and Anr. v. ParagSanghavi and Ors., 223(2015)DLT 152, the Delhi High Court explicitly recognized copyright in movie characters. The characters involved were Gabbar Singh, Jai, Veeru, Basanti, Radha, Thakur, Dhannoand Sambhawhich have been portrayed in the movie Sholay.
The Plaintiff claimed that the film ‘Ram GopalVarma Ki Aag’ by Defendants, infringed the Plaintiffs various rights in the film Sholay including the copyright of the Plaintiffs in the movie characters. The Plaintiffs also argued that these characters are extremely developed, unique and distinctive making them sufficiently delineated wide widely identifiable traits and are so central to the entire plot that they constitute the story being told and thus, merit copyright protection.
The Court held that the use of similar plot and characters in the impugned film coupled with music, lyrics and background score etc. amounts to infringement of copyright. However, the operation of the order is currently stayed subject to deposit of money decree by the Defendants and the said decision is under appeal before the Appellate Court for final adjudication.
IV. Establishing infringement of Copyright in ‘Characters’
In determining whether any given appropriation of another’s character constitutes an infringement, it is a
(a) Whether the character commands copyright protection (as already discussed above);
(b) Whether the alleged infringer is copying such development and not merely a broader and more
The basic premise of copyright being that it only protects the ‘expression of idea and not the idea itself’, the similarity between the two works to be assessed must concern the expression of ideas, not the ideas itself. As also held in the Indian case of RG Anand v Deluxe Films, AIR 1978 SC 1613, the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work.
Another theory that has emerged from various cases as also RG Anand, is that if the dissimilarities in the two works are broad and material which negate the intention to copy and the coincidences are merely incidental, no infringement of copyright is made out. However, ‘No plagiarist can excuse the wrong by showing how much of his work he did not pirate.”Sheldon v Metro-Goldwyn Pictures Corp., 81 F. 2d 49. Thus, care has to be taken in given undue emphasis upon the disparities.
The test of concluding whether the second work is a pirated copy is the impression of the average viewer. Twentieth Century Fox film Corporation v. Sohail Maklai Entertainment Pvt Ltd, 2010(44) PTC 647 (Bom.). Applying the same test, the fictional character of Ralph Hinkley in the TV series ‘The Greatest American Hero’ was not considered as similar to ‘Super man’ even though the character ‘superman’ was found to be sufficiently developed to command copyright protection.
The Court however did not agree with the Defendants’ analysis that every skill that the two characters share should be dismissed as an idea rather than a protected form of expression on the reasoning that that approach risks elimination of any copyright protection for a character. Warner Bros Inc. v. American Broadcasting Companies, 720 F. 2d 231.
The 9th Circuit of US also introduced the Krofft Test (Sid & Marty KrofftTelevision v. McDonalds Corp., 562 F. 2d 1157) which is a two-prong test. The first prong involves determination of substantial similarity between the ideas in the two works and is called the extrinsic test and relies on objective criteria.
Under the second prong being the Intrinsic test, it must be shown that there is substantial similarity of expression between the two works and is subjective and based on the response of the audience to the look and feel of the two works. If the two works are dissimilar under the extrinsic test, the works need not be tested under the intrinsic test. (Anderson v. Stallone, 1989 WL 206431.).
In the Indian case, Raja Pocket Books v. Radha Pocket Books, 1997 PTC 17 (Del), the Court held that the use of ‘NAGESH’ amounted to infringement of the copyright in the character ‘NAGRAJ’ of the Plaintiffs. Section 51 of the Indian Copyright Act provides infringement. Applying the test of RG Anand, the Court held that NAGRAJ and NAGESH have the same meaning, namely King Snakes and same functionality, both are capable of doing same and similar work and for the purpose of climbing both use rope in the form of snake.
While the final outcome of the Sholay case will further clarify the fate of copyright in ‘Characters’, there are still many gaps in law that need to be filled. The ambit of protection of character that has been touched upon by the Indian Courts is very narrow. However, since the fundamental objective of copyright protection is to foster and encourage creativity, even a single step towards strengthening copyright protection will boost creativity.
While the Sholay case did not specifically state whether a character from a work of fiction would be protectable on its own, separate from the story of which it is a part, an analogy could be drawn. To copyright something, three basic elements are required- originality, fixation and expression. Therefore there is no reason why a ‘character’ which is original and fixed in tangible form should not be eligible for copyright protection as long as it does not denote a mere idea and therefore, it is important that the Indian Courts should ponder over extending protection to ‘characters’.
With the increasing prevalence of cinema and literature and migration of characters from one medium to another or development of character from one sequel to another, we are living in some fascinating times.
Anand and Anand
You see a movie, read a book, or watch a
show and sometimes the characters in the
story and the dialogues associated with them
leave behind a greater impact and warrant
creative protection outside the realm of the story. These characters found in literature and cinema
are well developed, unique and distinctive,
making them sufficiently delineated, with widely identifiable names, catchphrase, traits, talents, costumes, tools, weapons and gadgets and sometimes even super-natural powers.
Prachi Agarwal BSc. LL.B, works in the litigation department of Anand and Anand. She completed her studies at National Law University, India in 2007 and at George Washington University, US in 2008. Ms Agarwal is actively involved in intellectual property litigation practice including patents, trademark, copyright and designs and also provides clients with legal advice in intellectual property law matters. She previously worked at IP law firm Ditthavong, Mori and Steiner, Virginia, US and is licensed to practice in the Commonwealth of Virginia, USA and India.
Managing partner Pravin Anand focuses on intellectual property, litigation and dispute resolution. He completed his law studies in New Delhi in 1979 and has since been practicing as an intellectual property lawyer. Mr Anand has been a counsel in several landmark intellectual property cases involving the first Anton Piller Order (HMV cases); the first Mareva Injunction Order (Philips case); the first Norwich Pharmacal Order (Hollywood Cigarettes case); Moral rights of Artists (Amarnath Sehgal case); Recognition for pro bono work for rural innovators at grass root level (National Innovation Foundation Award - Govt. of India); First order under the Hague Convention (Astra Zeneca case) and several significant cases for pharmaceutical clients such as Novartis, Pfizer and Roche. He is a co-author of two volumes of Halsbury's Laws of India on Intellectual Property and serves on the editorial board of several international intellectual property journals. Mr Anand is also author of the India chapter in Copyright Throughout the World - WEST (Thomson Reuters).