Fictional character – Protection through image trademarks?

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How can you protect fictional characters from exploitation? Considering the potential brand value that fictional characters have for creators in video games and books, the following questions spring to mind:

  • Does copyright provide an appropriate level of protection?
  • What else can I do as a creator to protect my fictional characters from exploitation?

The courts have struggled with why and how to protect fictional characters. Copyright and trademark are the two important methods of protection. Copyright provides some form of protection but it might not be the strongest. Image trademarks might be more appropriate because they are capable of registration. Further, when you register an image trademark, you get a degree of protection that is stronger than copyright.

What protection does copyright afford fictional characters?

Copyright only protects an idea that you have expressed into a material form. This is the essence of the idea-expression dichotomy in copyright. The creators of Batman had the idea to have Bruce Wayne dress up as a bat and fight Gotham’s underworld was not enough to have it protected under copyright.

The creators putting pen to paper is what is relevant here. Through the creators giving the character a name, drawing the character, creating the story and features associated with the character. All of these things are an expression of their idea. This expression is what attracts copyright protection.

Despite this there are many fictional characters who have tragic backstories, wear (often animal-themed) costumes and fight crime. Big Daddy from the movie, Kick-Ass is an example of this. Batman is a character that visually ‘inspired’ the Big Daddy character in Kick-Ass. Given that the underlying idea is somewhat generic, how do we protect the specific expression of that particular idea?

Position in the USA

The court in the US developed a test to determine whether there is sufficient development of a particular character to merit protection. The test is two-fold:

  1. How detailed and unique is the expression of a particular idea?
  2. By comparison how similar is the particular idea to the elements of the infringing idea?

Therefore, the more expressed an idea is, the more likely that it will be protected.

With this in mind, let’s construct an example with a literary character such as Harry Potter. When JK Rowling envisaged the character Harry Potter and all his features, once she put wrote it down, the character attracted (at least some) copyright as a literary character. Therefore, no other person could put pen to paper and write a book specifically about Harry Potter, his friends, and the universe they operate in without potentially being liable for copyright infringement as a literary work.

However, to what extent does this exclude someone ‘taking inspiration’ from those characters and settings? If someone draws a character using the descriptive features JK Rowling gave Harry Potter but put their own spin on it and call him Nigel Planter (from the children’s cartoon “The Grim Adventures of Billy and Mandy”), JK Rowling will have a hard time trying to prove copyright over the artistic expression of the character. The key difference here is that Harry Potter is a visual work and Nigel Planter is an artistic work.

Position in South Africa

In South Africa, the closest we have to relevant case law on this point is the Madam and Eve Case. The parties in the case were the creators of the Madam and Eve comic strip and the SABC. The creators alleged that SABC infringed their copyright in their work through an advertisement that embodied certain characteristics of their characters in the comic strip.  The court considered whether there was an adaptation of the fictional characters.

This means that even though the advert portrayed characteristics similar to those of the characters in Madam and Eve, this was not enough to warrant infringement of copyright on the part of SABC. Correctly put, the fact that Big Daddy from Kick-Ass shares similar characteristics to Batman, this does not necessarily mean that Big Daddy is a reproduction of Batman. Therefore, the fact that a certain character embodies the same or similar characteristics as another character will not necessitate an infringement of copyright.

An example of this closer to home is the video game Broforce. Broforce is a run and gun developed by South African independent studio Free Lives for various platforms. The game includes various caricatures of characters from famous films such as Rambo appearing in the game as Rambro. Should any dispute relating to the portrayal of these characters arise, Free Lives could possibly use the Madam and Eve case as a defense to a copyright infringement claim.

Registering an Image Trademark

By registering an image trademark you can protect your fictional characters. By using trademarks you will have the registration as proof of the protection.  This gives you a stronger degree of protection when persons exploit the design or characteristics of the image trademark. For example, should an artist construct a character based on Batman and there are confusingly similar characteristics between the two. The proprietor will have a stronger case than an individual who has rather claimed copyright over the expression of their character.

Image trademarks and other image rights make merchandising for literary and other fictional characters quite simple. If a creator has created some commercial value in their product they may also be able to rely on:

  • passing off, and
  • unlawful competition.

These remedies are available where a competitor wants to gain a reputation or tarnishes your brand.