Fictional Characters & the Law

Lloyd L. Rich
November, 1998

Introduction

On my Web site, I have an article regarding the legal protections provided for a graphic character-such as Mickey Mouse or Superman-that is depicted by a cartoon or other graphic representation.¹ However this article will focus on the protection available for a "fictional character" (also referred to as a "literary character")-such as James Bond, Sam Spade, Sherlock Holmes, or Hopalong Cassidy-who is first represented by a "word portrait" and then possibly at some later date by a graphic representation.

Even though most stories and plots are forgotten, the nature of a fictional character frequently remains fixed in a reader's imagination; this fixation may then provide the true underlying value of a particular literary work or series. Because of the "value" that may be inherent in a fictional character, the creator and/or publisher should always take steps to ensure that the fictional character is protected, especially if there may be possibilities to use the fictional character in book sequels, or to license the use of the fictional character for films, television programming, electronic or other media, or merchandising. It is only by maintaining control and protection of the fictional character that revenue streams may be maximized for the creator/publisher of that character.

Three distinctive bodies of law-copyright, trademark, and unfair competition-provide overlapping protection for a fictional character. This has led one commentator to conclude that the current situation that exists in many courts has resulted in a convergence of these distinct bodies of law into a new body of law formulated solely to protect characters. However, although the convergence theory exists for fictional characters, it is not as demonstrable as it is for graphic characters.²

Fictional characters have the same basic characteristics as graphic characters in that they portray the uniqueness of a particular character; the character has a name, physical appearance, and attitude or character traits. The primary difference between the fictional and the graphic character is that the physical appearance and characterization of the fictional character resides in the imagination of the reader and is continually being developed in the reader's mind by the author's description of the character as the story unfolds. This is in contrast to the graphic character where the physical appearance and characterization are visually apparent for the reader. Although this is a rather self-evident difference, it is an extremely significant one when evaluating the scope of protection that is available for fictional characters as compared to the protection available for graphic characters. This is because the fictional character presents a unique recognition problem since no two minds will see a particular character in the same way unless that character has been visually depicted. The protection problem may also exist when a later graphical representation of a fictional character is portrayed very differently than from the word portrait that initially appeared.

Copyright Protection

Copyright law will only protect the characterization of a fictional character if the character is portrayed in a copyrighted work. One difficulty in protecting a fictional character under copyright law is that frequently a fictional character takes on a "life of its own" that is independent of the story in which it first appeared. The problem is how to protect the fictional character that takes this independent life. Another difficulty is that sometimes a fictional character, even when it is incorporated in a copyrighted work, is deemed by the court to not be entitled to copyright protection. Furthermore, even when the fictional character is protected, it frequently receives less protection than that accorded to graphic characters.

The underlying reason for this varying degree of protection stems from the fact that similarities between fictional characters are frequently less concrete than those for graphic characters. Usually fictional characters are not represented by a singular physical image but instead are merely representations that appear in the reader's imagination and therefore different fictional characters are only abstractions that cannot easily be compared.

It is rather evident that copying of a particular fictional character has occurred if one uses identical or substantially similar language to describe their fictional character. But what more frequently occurs is a taking of the more abstract character traits and elements that only conjure up a mental image of that character for the reader. In reality, none of the verbally described characteristics of the fictional character are as dominant as the visually depicted characteristics of a graphic character and therefore the copyright law distinction between an unprotectable idea and protectable creative expression may prevent copyright law from protecting the fictional character.

Copyright protection for fictional characters appears to have had as its genesis, a subsequently much quoted statement by Judge L. Hand. He suggested that characters might be protected independent from the plot of a story. "It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinct."³ Although the decisions in cases involving the protection of fictional characters have not been consistent, the prevailing view has been that fictional characters are copyright protected. However, the general trend with respect to copyright protection must be categorized as one of restrictive protection rather than an all-encompassing scope of protection. Generally in those cases where the fictional character was found to be protected, the character that was copied was "distinctively delineated" (or fully developed) in the original work and the character's delineation was misappropriated in the copier's work. But even in those cases where the fictional character was protected, the courts have had difficulty in explaining why the fictional character was distinctively developed. On the other hand, in those cases where the fictional character was found not to be protected, the character was not distinctively delineated in the original work and therefore that fictional character was only a particular "character type" and was not entitled to copyright protection. Thus any inquiry concerning the protection of fictional characters involves two questions. "First, was the character as originally conceived and presented sufficiently developed to command copyright protection, and if so, secondly, did the alleged infringer copy such development and not merely a broader and more abstract outline."4

Some courts have adopted a "character delineation" test to help them decide whether fictional characters deserve copyright protection. This test analyzes whether a fictional character is developed specifically enough to warrant protection of the character as copyrightable expression or, instead, does the character's depiction only describe a character type that it is nothing but an idea and thus undeserving of copyright protection. As one commentator has stated, "[f]ully realized characters in literature are little different than fully defined personalities in daily life.... A literary character can be said to have a distinctive personality, and thus to be protectable, when it has been delineated to the point at which its behavior is relatively predictable so that when placed in a new plot situation, it will react in ways that are at once distinctive and unsurprising."⁵

Therefore, to warrant copyright protection, a fictional character must be specifically described and fully developed. At times overcoming this "description hurdle" may be difficult to achieve. This is because some courts are very skeptical of protecting "word portraits" since they are unable to "see" the differences between one fictional character and another.

Other courts have adopted what is referred to as the "story being told" test. Some courts use this test by itself or sometimes in conjunction with the character delineation test when analyzing whether a fictional character deserves copyright protection. The story being told test was first used when a court determined that Dashiell Hammett's character, Sam Spade, in the novel The Maltese Falcon was not entitled to copyright protection. The court stated that the character, Sam Spade, was merely a vehicle for telling the story, rather than an essential part of the story itself, and therefore Sam Spade as a fictional character could not be protected under the copyright law.⁶ For those of us who have read The Maltese Falcon and intimately know Sam Spade, this result reveals how difficult it may be to develop a fictional character so that a court will not merely view the fictional character only as the vehicle for telling a story. One may even wonder whether the court overlooked the fact that a reader of mystery fiction may be more interested in the protagonist than in the plot, and instead simply reasoned that Sam Spade was only the typical "detective" found throughout the mystery genre.

The proof required to demonstrate that copyright infringement of fictional characters has occurred is basically the same as that required for graphic characters. The publisher/creator must first prove that the alleged infringer had access to the fictional character. This element is frequently and easily achieved because the court will infer that the infringer had access to a fictional character if the copyrighted work in which that character appeared was widely distributed. Next, one must prove that there is a "substantial similarity" between the original fictional character and the infringing character. The courts use a variety of different methods to ascertain substantial similarity. These methods include the character delineation test, the story-telling test, an extrinsic test that ascertains whether there is a substantial similarity in the theme, plot and sequence, settings, mood, dialogues, and characters, and finally an intrinsic test that looks at the total concept and feel of a fictional character to determine if that character has been copied and whether there is a substantial similarity in copyrightable expression. Comparing fictional characters to determine whether there is sufficient substantial similarity between them to result in a finding of copyright infringement is difficult; similarities and dissimilarities in the respective characters are relevant and "substantial similarity must exist not between names or types of characters, but in the complex of characteristics that amount to creative expression."⁷

There is one exception to the substantial similarity analysis that is particularly relevant to fictional characters. This exception is known as the scŠnes … faire doctrine that prohibits a court from protecting material that is standard or common to a particular subject or topic. Thus a stereotyped fictional character, unless one copied the "exact" word portrait of that character, is not likely to be copyright protected. For example, it is unlikely that a court would find that an alleged infringer had infringed a mystery novel's main character just because both smoked a cigar and spoke with a New York accent. In this instance, the court would probably conclude that the fictional character's characteristics of "smoking a cigar" and speaking with a "New York accent" were standard or common to the mystery genre.

Trademark Protection

A fictional character, similar to a graphic character, cannot obtain trademark protection for its own protection, but may only be protected when the trademark indicates a particular source of goods and services. However, unlike for graphic characters, courts have not fully embraced trademark protection for fictional characters. This attitude may be due less to the courts' unwillingness to utilize trademark law to protect a fictional character than to the likelihood of such a case arising since it is highly unusual for a character that had never previously been depicted graphically to be used in a commercial fashion.

A fictional character's "name" may be a trademark if the character's name is used as a title of a book, movie, or series and therefore indicates a single source of the entertainment product or service or it is used on other then entertainment goods or services. Trademark protection may also be available for a fictional character's unique verbal expressions, such as the Lone Ranger's "Hi-yo Silver Away." Therefore, while the full spectrum of trademark protection may be available for highly successful graphical characters, such a possibility, other than for the unauthorized use of a fictional character's name or verbal expression, is highly unlikely for most fictional characters. Furthermore, trademark protection may be precluded in those instances where there is a problem associated with relating the trademark to a single source such as in the entertainment industry where a character may be associated with an author, artist, film producer, sponsor, or even with the character itself. If the source is fragmented then trademark protection may not be appropriate.

Unfair Competition Protection

Unfair competition protection involves a variety of different causes of action that are found in the Federal Lanham Act and in state law and basically fall into the categories of misrepresentation, false sponsorship, and misappropriation. Many courts have permitted various aspects of unfair competition law to protect fictional characters. However, as with trademark law, unless a fictional character is used wrongly in a commercial context, it is unlikely that unfair competition laws would provide protection for the fictional character.

Conclusion

While there may still be some degree of uncertainty and inconsistency regarding the legal protection of graphic characters, the legal protection available for fictional characters is even less uncertain and more inconsistent. Therefore, as a generalization, fictional characters have less legal protection than graphic characters. This is due to several factors.

Courts are uncomfortable affording protection to fictional characters that they are unable to see. The scope of legal protection is not as broad for fictional characters in that copyright law is the dominant form of protection for fictional characters while graphic characters may be broadly protected by a combination of copyright, trademark, and unfair competition law. In addition, intellectual property law is usually used to prevent a diminution in the value of intellectual property. Therefore, unless an infringer blatantly misappropriated a fictional character's name and exactly duplicated a character's characteristics, the damages complained of would often be more of an artistic and subjective nature rather than commercial damages, and courts frequently do not know how to compensate for these types of damages. Thus, the protection of a fictional character for artistic rather than commercial purposes may encounter particular difficulty. In fact, the most difficult aspect of protecting a fictional character is that one may be required to demonstrate that the value of the particular fictional character has decreased, and not that one has been harmed artistically since many courts would be unsympathetic to such a plea.

(1) Lloyd L. Rich, "Protection Of Graphical Characters," (1998) http://www.publaw.com.
(2) Michael Todd Helfand, "When Mickey Mouse Is as Strong as Superman: The Convergence of Intellectual Property Laws to Protect Fictional Literary and Pictorial Characters," 44 Stanford L. Rev. 623 (1992).
(3) Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).
(4) Leslie A. Kurtz, "Independent Lives of Fictional Characters," 1986 Wis. Law Rev. 429, 453 citing M. Nimmer, Nimmer on Copyright §2.12.
(5) Helfand, Ibid. Citing Paul Goldstein, "Copyright: Principles, Law and Practice," § 2.7.2 at 128 (1989).
(6) Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955).
(7) Kurtz, Ibid. at 467.

This article is not legal advice. You should consult an attorney if you have legal questions that relate to your specific publishing issues and projects.

Lloyd Rich is an attorney practicing publishing and intellectual property law. He can be reached at 1163 Vine Street, Denver, Colorado 80206. Phone: 303/388-0291; fax: 303/388-0477; e-mail: rich@sni.net; Web site: http://www.publaw.com. Jennifer L. Connolly, a recent graduate of the University of Denver School of Law, provided the research for this article.

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