In the last ten to fifteen years, fictional characters have come into their own as valuable (sometime spectacularly valuable) assets for the companies that own them. If it proves popular, a character that first appears in a print cartoon series, for example, can be spun off through a seemingly endless array of merchandising projects - clothing, toys, stationery, vitamins, food, bed linens, glassware --- and even more unexpected service businesses (Snoopy endorses insurance, The Simpsons appear on the tail of a jet.) Further a popular character can be put to work in other media -books, television cartoons, live action television, motion pictures, video games, on-line multimedia sites, live action television, CDs, live promotional appearances, etc., each of which can generate its own cycle of related merchandising. When successful, a character will generate hundreds of millions of dollars in revenue for its owner, all without the disadvantages inherent in using "flesh and blood" celebrities and sports figures. Fictional characters do not age or die, they don't try to renegotiate their contracts or seek a percentage of the gross and they are extraordinarily unlikely to check themselves into the Betty Ford Clinic or be appear as a central figure in an embarrassing sexual scandal.

Authors have always recognized the on-going value of a fictional character as a "hook" to attract an audience to a subsequent work. While extensive multimedia exploitation of characters may be an invention of the late 20th Century, the use of fictional characters in multiple works has a long history, going back from Bart Simpson and Captain Kirk through Buck Rogers, Mickey Mouse, and Betty Boop to Sherlock Holmes, Paul Bunyan, King Arthur, Scheherazade and Oedipus.

It is only in the last few decades, however, that the legal protections available to the owners of these characters have become clear. Given the seemingly limitless value fictional characters may have in the promised digitalized, networked and hyperlinked world of the 21st Century these protections are increasingly important.

Characters are primarily protected under copyright law. While there is no specific reference to characters in the Copyright Act, it is well-settled that the Act provides protection for at least some characters. That being said, it can still be difficult to determine whether a specific character is protectible and, if so, whether it is being infringed.

It is important to distinguish between the protection of a character and the protection of a work in which a character appears. Clearly, unauthorized reproduction of an episode of "Friends" is likely to violate a copyright in the work regardless of whether Rachel, Ross, Joey, Phoebe, Chandler and Monica are protectible characters, just as making an unauthorized copy of "Tomb Raider" software will subject the copier to liability regardless of the copyright status of Lara Croft. The question here is to what extent a character has a protectible "life" (as it were) separate from the work in which it originally appears. Even from a lay perspective, it seems evident that certain fictional characters may have such a "separate life" (Agatha Christie's Hercule Poirot, for instance) while it is less evident that others (any number of the loveable spinsters, supercilious butlers and doltish police officers Poirot encounters in his investigations) do. But why?

The answer lies in the copyright law's attempt to distinguish between "ideas," which are not protectible and "expressions of an idea," which are not (the so-called "idea/expression dichotomy.) In this context it could be said that Hercule Poirot is more clearly "expression," more specifically drawn with more distinct characteristics, than the various "stock" figures that surround him.

As is usually the case in copyright matters, the Second and Ninth Circuits have taken the lead in addressing these issues surrounding protection of copyright and (as is often the case) have taken different approaches to resolve them.

In an early Second Circuit case, Nichols v. Universal Pictures Corp. 45 F.2d 119 (2d Cir. 1931) Learned Hand was presented with two plays which, at least in a general sense, shared a structure and characters. In explaining why a second work may be similar to an earlier one (even deliberately), yet not infringe it, Hand offered this formulation of the "idea/expression dichotomy":

Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended.

45 F.2d at 121 (citations omitted)

Admittedly, Hand's formulation does more to describe the problem than to resolve it. However, based upon the reasoning in Nichols, the Second Circuit has consistently offered protection to a character when it is satisfied that the degree of specificity with which the character is delineated takes it beyond a mere general idea of a character. See Warner Bros Inc. v. American Broadcasting Cos. 720 F.2d 231 (2d Cir. 1983) (the "Greatest American Hero" case,) ("Superman" found to be a protectible character based upon the totality of the various traits specific to the character: background, physical looks, costume, physical attributes and "superpowers", behavior and language.)

The Ninth Circuit originally took a different approach. In Warner Bros. Pictures, Inc. v. Columbia Broadcasting Sys., Inc., 216 F.2d 945 (9th Cir. 1954) (the "Sam Spade" case.), the court was asked to determine whether the "Sam Spade" character appearing in the Dashiell Hammett's novel "The Maltese Falcon" was entitled to protection. Among other arguments, defendants' asserted that protection was not appropriate since nothing in the Copyright Act specifically offered protection to characters. Without addressing this point directly, the court reasoned that the Copyright Act did protect stories and that a character may be entitled to protection when the character "constitutes the story being told" rather than being a "chess man in the game of telling the story." The court found that "Sam Spade" did not meet that standard.

Sam Spade is still law in the Ninth Circuit. However, later decisions in the circuit's district courts, and even by the Ninth Circuit itself, have significantly distinguished that decision and seem to have created a less stringent standard. For example, in Walt Disney v. Air Pirates 345 F.Supp 108 (N.D. Cal. 1972) aff'd 581 F.2d 751 (9th Cir. 1978), the court found that Disney's Mickey Mouse character was entitled to copyright protection under the Sam Spade standard since the plots of the stories were "subordinated to the character's role." The court also distinguished literary characters (such as in the "Sam Spade" case) from characters which exist visually, suggesting that "expression" is more likely to be present when a character includes strong visual elements.

Obtaining a finding that a character is entitled to protection is, of course, only half the battle. Having proven that its character meets the tests for protection, a plaintiff in a copyright case must still show that the character has been infringed, i.e. that there is "substantial similarity" between the works at issue.

In the Greatest American Hero there was little question that defendants' "Greatest American Hero" character shared some of Superman's traits -- many of his "super powers" were identical (the ability to fly, great strength, imperviousness to bullets, extraordinary hearing and eyesight), his "superhero" costume seemed modeled on Superman's and his crime fighting obligation as a "super hero" (while somewhat forced upon him) was similar to Superman's self-imposed duty to fight evil throughout the world. The Second Circuit, however, upheld the district court's grant of summary judgment to defendants, stating that when evaluating substantial similarity of characters courts must consider "not only the visual resemblance but also the totality of the characters' attributes and traits." 720 F.2d at 241. Notwithstanding the many similarities, the court found no infringement because much of the basic personality traits of the characters differed significantly. "Stirring one's memory of a copyrighted character is not the same as appearing to be substantially similar to that character, and only the latter is infringement." Id. at 242.

A happier result for the plaintiff was obtained in Metro-Goldwyn-Mayer Inc. v. American Honda Motor Corp. 900 F.Supp. 1287, 1291 (CD Ca. 1995). In 1994, Honda had created and aired a television commercial in a helicopter is engaged in a chase with a (Honda) automobile occupied by a beautiful young woman and driven by a handsome man with a British accent, attired in a tuxedo showing extraordinary calm, exhibiting a dry sense of humor and wit. Upon learning of the commercial, MGM sought a preliminary injunction from the court, claiming that the commercial infringed its copyright in the James Bond character. Defendants claimed, among other things, that the James Bond character was not a protectible character and that, even if it was protected, defendants had not taken the protected expressive elements but only the broader outline of a dashing British spy, which, as an idea, was unprotectible.

First, the court found that the James Bond character was protectible under either circuit's standard. Importantly, the court seemed to offer a more workable version of the Sam Spade standard:

"[l]ike Rocky, Sherlock Holmes, Tarzan, and Superman, James Bond has certain character traits that have been developed over time through the sixteen films in which he appears. Contrary to Defendants' assertions, because many actors can play Bond is a testament to the fact that Bond is a unique character whose specific qualities remain constant despite the change in actors…. Indeed, audiences do not watch Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they watch these films to see their heroes at work. A James Bond film without James Bond is not a James Bond film. Id at 1296. [emphasis added].

To the extent that Sam Spade is still the law in the Ninth Circuit, the American Honda approach to the rule --- suggesting that copyright protection adheres to characters when they are the central cause or purpose of the work in which they commonly appear --- may be a more easily applied and understood standard than the "story being told" formulation. Applying this formulation to the examples given above, Hercule Poirot, Lara Croft or Rachel, Ross, Monica et al. are central to the works in which they appear; one reads Agatha Christie, plays "Tomb Raider" or watches "Friends" in significant part in order to experience these particular characters. Conversely, the attendant chambermaids and butlers, or janitors and cabdrivers in those works are not the purpose of the works in which they appear and would apparently not be afforded protection.

The American Honda court also made it clear that a finding of infringement could be made even when the copying of the character was not literal. In this case, the character in the Honda commercial was not an exact copy of James Bond. Some standard significant identifying "Bond" elements (such as the "shaken not stirred" martini, the character name or the "Bond…James Bond" catchphrase) were not copied. The court looked beyond the specific attributes of the James Bond character itself and considered the fact that the Honda commercial also adopted a setting, music, mood and pacing similar to those used in James Bond pictures. The decision suggests that the universe in which the character lives can be an important element defining a character and that use of elements of the character's universe may be taken into account in determining substantial similarity. This broad approach is clearly of help to the copyright owner seeking to assert a claim of misuse of his character and could be read as softening further the hard edge of the Sam Spade standard.

As may be true with all legal matters, many of the new issues on the horizon concerning protection of characters are rising from the Internet and other digital enterprises. The Internet and the gaming software industry have become fertile fields for increased exploitation and growth of existing characters (see http://www.laracroft.com), as well as the basis for original on-line characters. Agencies are experimenting with original digital fashion models. Corporations are beginning to incorporate these characters in their advertising (see Macy's Fashion Show - http://www.exciteextreme.com/fashion/.) Furthermore, the use of phantom personalities and avatars by all members of the on-line community brings an entirely new set of potential character owners to the copyright table. (See Alpha World and other Active World sites (http://www.activeworlds.com/).

All of these potential digital character sources raise the same types of character protection issues that literary, comic and filmed characters have done. To the extent that some of these characters are very similar to non-digital characters, i.e. they exist within unique and specific storylines and universes (as in motion pictures such as "Toy Story" or "A Bug's Life" http://www.pixar.com/feature/feature.html), the protection available is likely to be identical to that current offered non-digital characters. The more interesting question, perhaps, is how to handle the development of characters that exist outside the usual fictional setting. Avatars created by individuals on the web certainly take on specific personalities on some occasions. In fact, individuals have been creating "literary" avatars for many years now on bulletin boards and chat rooms (and as hackers) where many adopt pseudonyms and entirely invented personas in their on-line interaction with others. It is not difficult to imagine some of these personas developing a following and gaining some commercial value. Just as in the "real" world, to the extent that those avatars remain "literary", e.g. without a visual element, they are less likely to be afforded protection.

Similarly, for some time it has been possible on some websites to select a visual representation of one's on-line self, visible to others with whom one is interacting. To the extent these representations are selected from a pre-designed list, there is likely no protection issue. However, there are those who now create their own avatars from scratch, avatars which can then interact with others on-line in chat rooms or at conferences (see the Avatars 98 Conference Pages http://www.ccon.org/conf98/index.html.)

An original avatar representation combined with a detailed invented persona (or even combined with one's real persona) seems more likely to qualify for protection, at least under the Second Circuit standard.

Given the state of the law in this area, there are a number of ways in which one should proceed with a character (whether on-line or off) in order to increase the likelihood that the character will prove protectible:

1. Visual elements - The use of a graphic version of the character aids significantly in the creating a character that the courts will find protectible. Even literary characters can benefit from use of a graphic version in advertising and packaging. Absent a visual element a court may find it more difficult, on both a practical and conceptual level, to grant protection or determine that another character is substantially similar. In the Ninth Circuit there is still a particular risk that a literary character will be found to be unprotectible.
2. Repetitious use - On-going use of a character in a variety of media will establish the character in both the public and the court's mind. It seems clear from the case law that the characters which most easily obtained protection (Superman, Rocky, James Bond, Mickey Mouse) are those which wormed their way deep into popular culture.
3. Consistent use - In many respects, a fictional character is nothing but a set of consistent attributes. Once a character is established, it is crucial that the character's key elements be identified and used consistently. This consistency should also be applied to the character's "universe."
4. Use in a variety of settings - To the extent possible consistent with the nature of the character, it is very helpful to use the character in different settings and plots. Such use will generally add to the sense that the character is the central element or the "story being told." Furthermore, such use of the character will likely result in a clearer sense of what elements are integral attributes of the character that cannot be copied without infringing.
5. Registration - As with all works protected by copyright, registration with the U.S. Copyright Office, while no longer mandatory, offers significant benefits in terms of the owner's rights to statutory damages, damages for willful infringement and attorney's fees and costs. These types of awards can be particularly important in copyright cases where actual damages can be low or speculative. While it may be possible to obtain a registration for a character separate and apart from the works in which the character appears, there is really no particular need to do so. Moreover, with an on-going character addition iterations of the character will continually be issuing. In most cases, the copyright registration for a character is represented by the collection of registration for each of the works in which the character has appeared.
6. Renewal - It is important to track renewals relating to older characters. Copyrights first issued before 1978 had a first term of 28 years and were entitled to second term of (now) 67 years upon renewal. Renewal is now automatic, but there are still certain incentives to file a renewal application. The copyright status of a character which appears in a number of different works may be substantially controlled by and subject to the copyright status of the first work in which it appeared, which should therefore be monitored carefully.
7. Design - Most often attorneys are presented with character protection problems long after the character has been placed into use. However, on occasion it may be possible to participate in the character design process. Such a situation is a golden opportunity to encourage the designers to create a very specific character, stressing attributes that will set it off from any "stock" characters, as well as a universe with some consistent tone, setting, look and with specific other characters with which the character can interact.

YADDA, YADDA, YADDA

1. For more information go to http://www.legalelite.com/index.htm

2. If you need help or have a comment, please E-mail us at
questions@legalelite.com.

* MCLE * MCLE * MCLE *

*PROVIDER: Legal Elite Online, LLC
Provider has been approved by the State Bar of California as a continuing legal education provider.

MCLE INFO: click here.