Re: Character protection (Was: Lolita's copyright)

Tyler Ochoa <tochoa[_at_]law.whittier.edu> wrote:
>
> True. Trademark liability, if any, will be determined independently
> of copyright liability (although they often go together).

The test under trademarks is more more stringent though. Unless the character is a registered mark, which I can't imagine for these types of characters, the test for common law passing-off requires that the public be confused as to the source of the goods (I'm basing this on Canadian law - correct me if the US test is different). In these types of situations, the court will ask if the use implies that the "owners" of the characters have authorized (licensed) or sponsored the new use. Because this doesn't really fit nicely under copyright or trademark per se, some common law jurisdictions have essentially developed a separate tort of misappropriation of character. The problem is that this is difficult to apply to fictional characters (there are no problems for actual persons). The problem is easier for cartoon/animated characters because copyright attaches so easily. It is harder for human fictitious characters. If protection derives as a derivative work or performance of a script, would "improvised" characters be protected? Only after fixation?

> On 10/15/98, Daniel J. Schaeffer <daniel_schaeffer[_at_]kirkland.com> wrote:
> >
> > If I write a story about Kramer that involves no plot or dialogue from
> > any "Seinfeld" show, have I made a derivative work of the show? Have I
> > made a derivative work of Kramer? What am I infringing? What if I make
> > a TV show with a wacky neighbor with wild hair, crazy get-rich-quick
> > schemes and an unusual sense of personal space, name him Kramer, but
> > make him 5'5" and portly? Is he the same character, a derivative, or
> > what?
>
> Philosophically, this is an interesting question. Certainly the
> "character protection" cases are not very well reasoned or explained.
> As a practical matter, however, a court will undoubtedly find that you
> are infringing. You will be deemed to have made a derivative work of
> one or more episodes of the show. If you change his physical
> attributes, it might be deemed to be a derivative work; but the more
> likely cause of action is one for either unfair competition [Section
> 43(a)] or dilution.
>
> What is really going on is that the court is determined to punish what
> it deems to be unjust enrichment or misappropriation, even though if
> you tried to bring those causes of action directly under state law,
> they would be preempted. Federal IP laws are used to punish unjust
> enrichment all the time, even though the rationales underlying those
> laws are based on other theories.

Exactly. This is why other jurisdictions have expressly recognized a common law tort of misappropriation in respect of characters that is separate from trademark law. Would this be impossible in the US due to preemption? It seems that in Australia, UK, and Canada the same problem exists as to federal law occupying the area generally, but obviously inadequately (as you said, the court's reasoning is weak in these cases). Has there been any talk of adding a specific clause to the Copyright or Trademark Act to deal with this?

-cd

Cappone D'Angelo
<cappyd[_at_]uvic.ca> Received on Sun Oct 18 1998 - 11:06:51 GMT