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

On 10/18/98, Cappone D'Angelo <cappyd[_at_]uvic.ca> wrote:
>
> The test under trademarks is more more stringent [than copyright]
> 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.

Actually, my impression is that many cartoon characters ARE registered trademarks in the U.S. Regardless, you are correct that likelihood of confusion is the test, whether registered or not. In the U.S., though, likelihood of confusion as to sponsorship or authorization is pretty easily satisfied if the character is the same.

> 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?

I think that is what is actually occurring in the U.S., even though the courts would deny that is what they are doing. Improvised characters would be protected under U.S. copyright law only after fixation. I think a court would still enjoin borrowing of an unfixed character if it was sufficiently clearly delineated, under either a state common law copyright theory [not preempted for unfixed works] or a state or federal unfair competition theory.

> > 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?

This is not the first time that I have run across Canadian law being much more sensible [or at least more realistic] than U.S. law on a copyright subject. I think a common-law tort of misappropriation of character would be preempted in the U.S. by the Copyright Act, in light of the many copyright cases that have given protection to characters. To my knowledge, there is no discussion concerning amending U.S. copyright or trademark law to deal with this. The only organized lobbying would come from content providers, and they are getting all the protection they want through strained interpretations of copyright and trademark law.

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Mon Oct 19 1998 - 20:03:43 GMT