Trademark Protection to Fictional Elements: An Emergent Reality

Protecting the fictional characters nowadays is a big challenge because of increasing commercialization in the field of television, cinematography, etc. The advertising agencies, directors of the film, etc show the fictional characters as a part of their film or add and make huge profit out of it. In the context of the same, it is very necessary to protect the fictional characters. Here are this article topics like what is a trademark, what are the advantages one does get after getting its trademark registered, laws governing trademark, etc are covered. Topics like trademark protection to the fictional characters and copyright infringement in context to fictional characters are being highlighted. Some related case laws are also being covered under the article.

Keywords-  Fictional Characters, Commercialization, copyright infringement, trademark protection

Introduction to Trademark

Definition

 Any word, design, logo, symbol or any combination of the same can be termed as a trademark.

Uses of Trademark

 The trademark is associated with the goods and services which one produces or offers and hence trademark itself becomes the brand identity.

Is registration of the trademark being mandatory?

Yes, one can use an unregistered trademark but registering a trademark can be beneficial for example if “A” started manufacturing a water bottle with a brand name as “XX” if it gets popular amongst the local people and it gets into demand. On the other hand, if some other person starts the same business with the same brand name. Here to protect the brand name, he (A) must have used the brand name (XX) as a registered trademark. Hence one can use an unregistered trademark but it is protected in a specific geographical area only.

Advantages of a registered trademark

The advantages of a registered trademark are as follows-

  1. Multiple recognition- it means that if one gets his trademark registered in India, then one does get the protection in India and many other countries too.
  2. Ownership- It means that if one does get his trademark registered then he shall be the user of it only.
  3. Popularity- If one (B) uses the already registered trademark of another (A), then A needs to prove the similarity between his trademark and B’s trademark only. He needs not to prove his trademark’s popularity amongst the locals.

Laws related to Trademark

The Trademark related laws are governed by Trademark act, 1999. Trademark is defined under section 2(ZB) of the act. According to section 2(ZB) ‘trademark’ means a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.

Types of trademark

The act does define various types of trademarks, such as Certification trademark defined under section 2(e) as a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as the proprietor of the certification trademark, of that person.

 Collective trademark defined under section 2(g) as a trademark distinguishing the goods or services of members of an association of persons [not being a partnership within the meaning of the Indian Partnership Act, 1932  which is the proprietor of the mark from those of others.

 Well known trademark defined under section2(zg) as – a “well-known trademark”, concerning any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark concerning other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark concerning the first-mentioned goods or services, etc. The act does provide the guidelines for using the trademark, defined under section 2(2) In this Act, unless the context otherwise requires, any reference—

  • to “trademark” shall include reference to “collective mark” or “certification trade mark”;
  • to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark;
  • to the use of a mark: (i)concerning goods shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; (ii) concerning services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;
  • to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 3;
  • to the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry.

Protection to Fictional Characters

Trademark protection

To get the protection given to a trademark under Trademark act, 1999, a fictional character must attain the distinctiveness and a secondary meaning too. Moreover, if any claim for the infringement does come into the picture in mere future then one must prove that if the restraining orders are not being passed by the court of law on the subject of using such an infringed fictional character then it may cause confusion in the mind of people or put a question mark on the brand name of the trademark.

The Indian laws (courts) have always upheld the rights given to the fictional characters. As we discuss the cinematographic film “HariPuttar” and the trademark protection given to the name “Harry Potter”. The similarity between the two is mentioned as “it will not create a sought of confusion in the mind of people”. The court added that “Harriputar” is a film based on Punjabi comedy whereas the series “Harry Potter” is a Hollywood directed film. People who are educated enough to learn how to distinguish between the two. Hence, we conclude that if one does aquires different name, fame, etc then the trademark protection can be granted to such a character. Further, the protection can be upheld as if the name, design, etc do creates confusion in the mind of people.

Copyright protection

The fictional characters are being given protection under copyrights laws too.  Concerning copyright protection to fictional characters, an article regarding copyright infringement in being highlighted in The New York Times. Here according to this article, a lawsuit was registered against Ms Pera’s publication Lo’s Diary alleging copyright infringement. Vladimir Nabakov was the plaintiff in the lawsuit who contents that the work by Ms Pia Pera (Lo’s diary) has allegedly used the word Lolita as one of its main characters. Ms Pera in her defence said that “Lolita is not just a part of literature but a part of everyday language too”, hence everyone can use the phrase “Lolita”.

Related case law

Nichols v. Universal Pictures Corporation

In the court of- United States Court of Appeals for the Second Circuit

Decided on- 10th November 1930

Citation- 45 F.2d 119 (2d Cir. 1930)

Judges- Learned Hand, Thomas Walter Swan, Augustus Noble Hand

Anne Nichols, the plaintiff in the case, was the author of a play “Abie’s Irish Rose”. The play was written in the year 1922. The content of the play was based on the young Jewish man who marries an Irish Catholic girl against the wishes of their family members which was an incidence of great amusement to their family members. On the other hand, the defendant produced publicity motion pictures play in the year 1926. The name of the motions picture play was ‘The Cohens and Kelly’s” which was referred to as “The Cohens and the Kelly’s”. The content of this film-based play was somewhat similar to that of the play written by the plaintiff. Here, the plaintiff contended that the content of his play (Abie’s Irish Rose) is been infringed by the defendant.

Issue: The question before the court or the issue arose was “is there any sought of infringement in the case”

Court’s viewpoint: The court was of the view that although the content of both play and the play-based movie does correspond in the plot very closely some elements are too different to prove infringement. Hence the defendant is not held liable for any kind of infringement.

Conclusion

Due to increasing demand of commercial ventures using fictional characters as the part of their television or net series, it is a necessity for the owner/proprietor of the fictional character to register his/her work under the Trademark laws. In today’s era, various private business entities tend to copy the fictional characters to make money out of it. Keeping these factors in mind there is a need for creating a balance between the conflict arising due to the rights of the creator of the fictional characters and the various business entities. 

References

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