What do Sherlock Holmes, Walt Disney and DC/ Marvel Comics have in common?
Authored by – Sanika Surve and Tressa Maria Joseph
221B, Baker Street, London. This fictional address will definitely ring bells in the minds of book lovers as well movie buffs. This is where the most famous detective Sherlock Holmes lived or probably still lives. The power of this address despite being a fictional one is so strong that it seemed to many to be a real one. The popularity of the detective novels written by Sir Arthur Conan Doyle is far and wide owing to many of its adaptations into series and movies starring famous actors such as Benedict Cumberbatch and Robert Downey Jr. loyal fans of the detective will own posters and t-shirts which describe their love for the smart detective. This is how character merchandising works.
According to the World Intellectual Property Organization, character merchandising is defined as
“Character merchandising can be defined as the adaptation or secondary exploitation, by the creator of a fictional character or by a real person or by one or several authorized third parties, of the essential personality features (such as the name,image or appearance) of a character in relation to various goods and/or services with a view to creating in prospective customers a desire to acquire those goods and/or to use those services because of the customers’ affinity with that character.”
In simple terms, character merchandising can be termed as the adaptation of a fictional character or a real person in various forms on the basis of its popularity and to utilize the same as a business activity. The first known use of character merchandising is by Walt Disney who used his world famous characters such as Mickey Mouse, Minnie and others to make products like posters, toys etc. The individuals or entities involved in character merchandising may or may not be owners of the characters on the basis of which the merchandise is manufactured and promoted. This activity is a major and prominent one especially in the entertainment industry which produces movies and shows taking into advantage the popularity and fan following attached to cartoon or superhero characters. DC Comics and Marvel Comics are now known not for the comics made by them decades ago but by visually brilliant superhero movies based on the characters created by them which continue to gain a lot of attention and curiosity. Batman, Superman, Iron Man, Hulk among many others are the best examples of character merchandising.
Types of Character Merchandising
Character Merchandising can be of three types; fictional character merchandising, image merchandising and personality merchandising. Let’s examine what each of these types of character merchandising means with the help of examples.
I. Fictional character merchandising
Under this type of merchandising, a fictional character is used to merchandise different types of products like cinematography movies, posters, cartoons etc. This is the prominent and one of the oldest types of character merchandising. Sometimes a few elements of these characters are used for this purpose or the whole character itself is used in a variety of forms.
To understand this concept better, let’s take a look at how the character of Batman is being used as a merchandise. The superhero Batman was created by Bob Kane and Billy Finger and appeared in DC Comics in 1939. From DC Comics to ABC Network to 20th century Fox, Batman is now owned by Warner Brothers and Fox owns the rights to Batman’s live action TV rights. Batman was used as a franchise and has been the basis for many TV shows such as Gotham and movie series such as The Dark Knight trilogy and the DCEU’s series of movies.
II. Personality Merchandising
In this type of merchandising, a person or his/her specific traits are made use of for the marketing of goods and services. Celebrities from different walks of life such as sports, movies, politics, music etc allow unique traits of their persona to be used in association with products and services. This form of merchandising is also known as ‘reputation merchandising’ since such persons normally are well known among a large section of people(1).
For example, Kay by Katrina is a famous line of makeup promoted and marketed by the famous actress Katrina Kaif who is known for her style. Similarly, actor Hrithik Roshan has a popular apparel brand by the name of HRX for men’s clothing and style.
III. Image merchandising
In this type of merchandising, characters of a film or a series played by an actor is used for the marketing of goods and services. This type of merchandising takes advantage of the familiarity of the character to the actor who portrays the character on screen in the minds of the audience. It can be termed as a hybrid of both fictional and personality merchandising. A product endorsed by an actor in the capacity of the character played by him will be a great factor in the determination of customer choices.
For example, a t-shirt which has Benedict Cumberbatch dressed as Sherlock Holmes has the effect to create a sense of affinity to a customer who is an ardent fan of the detective series. Similarly, a bag with Robert Downey in the iron suit of Iron Man will be preferred over another similar bag by a fan of the famous superhero.
Legal aspect to Character Merchandising
IPR can be monetised in various ways. A true owner can make good bucks based on this IP but sometimes even an unlawful owner takes away some chunk of it. This predominantly happens in the case of merchandising. The copyright for a certain character vests with one but somebody else can be monetising on it. Character merchandising can be governed by the Copyright law and Trademark Laws. The introductory part of this article already states how character merchandising increases the purchases of a certain commodity since it is associated with a certain famous character. But this same can also lead to copyright infringements of the rights associated to the character. If seen in totality, character merchandising is a bundle of rights. It is not restricted to only the rights of the copyright owner but has rights of other individuals associated to it.
For instance,a character played by a certain individual is used on a certain merchandise without the authorisation of the rightful owner, will lead to infringement of rights of the copyright owner and the individual who has played such character. The individual has his personality rights attached to such a character. It is necessary to note that Personality rights are not a part of copyright protection since copyright protection protects the creation of the work and not the person himself. And thus in the event, there is an infringement of a certain character, the person who plays such a character can claim for his personality rights which is distinct from the copyright of the creator of the character.
As already mentioned Character merchandising is of three types; other than fictional merchandising, the other two types involve an individual in person as a character. Personality rights which include right to publicity and right to privacy are the rights that an individual has over personality merchandising and image merchandising. The celebrity or a person who plays a certain character and has gained recognition over the same has a personality right over such a character. So when such a character is misappropriated for a merchandise or has been used in the merchandise without the authorization of the creator of such character, the celebrity along with the copyright owner of the character can claim for infringement. However, since copyright does not provide protection over an image of a person, the creator of the character often is in a conflict with the person who enacts a character and helps to build on it. The misappropriation of the character is not limited to printing its visuals on merchandise but also involves other aspects such as sound and other media.
While there is a disguised conflict between the copyright owner and the person playing the character in terms of infringement through image merchandising, there is a clear allocation of rights in personality merchandising. Such merchandising allows the person whose image or personality has been used without his consent for any merchandise. Such a person can claim the Right to Publicity and Right to Privacy. These rights allow the personality to prevent others from using his name, likeness, image or a photograph for a commercial use without his consent. Right to Publicity is an age old term which was coined by Judge Jerome Frank in 1953 in the case of Haelen Laboratories vs. Topps Chewing Gum, Inc(2). In Haelen, the court pointed out the right of publicity was not based on protecting a person’s privacy, but on preventing the unauthorized use of a person’s name or likeness(3).
The Indian Superstar Rajnikanth filed for the injunction for the release of the movie titled “Main hoon Rajnikanth” invoking his personality rights.The Court ordered temporary injunction and put a stay on release of the film(4).
In Titan Industries Ltd. v. M/S Ramkumar Jewellers, the Court observed “When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity.”(5)
No country has a legislation primarily restricted to govern character merchandising.Trademark law and copyright law both find its application in the same. As explained above, Copyright law allows the copyright owner and the individual playing a certain character to claim their rights. Trademark law comes to the rescue when a trademark of a certain character is misappropriated on a merchandise.
This can be well explained by a case filed by DC Comics against a clothing company Mad Engine Pvt Ltd. DC comics filed a suit for counterfeiting and trademark and copyright infringement over a shirt substituting the word “dad” for the “S” in the iconic five sided diamond Superman logo. Defendant Mad Engine, Inc., is a California apparel company that sells to retailers such as Target, Wal-Mart, and Amazon.com. Mad Engine claims on its website that it is a licensed apparel wholesaler of various recognizable brands such as Star Wars and Marvel Universe but has been producing and distributing their “Super Dad” t-shirts without the plaintiff, DC Comics permission. DC Comics produces its own Super Dad t-shirt with the word “dad” printed in red below the Superman logo. The Plaintiff claimed damages, costs including attorney’s fees along with the destruction of Mad Engines’s “Super Dad” t-shirts (6).
Thus while there are lawsuits filed by personalities towards their personality rights infringement, celebrities are also making maximum use of the same by monetising their image rights and also entering into endorsing agreements.
An example of the power of image or personality rights is the of appointment of Jose Mourinho as manager of England’s Manchester United, bringing two superpowers of the sport, Chelsea and Manchester United, to a halt over the issue of his image or personality rights, as Chelsea held a number of EU trademarks for his name, signature and various other goods, and also owned his image rights. Manchester United finally had to pay an undisclosed sum running into millions of pounds to obtain the image rights(7). Players such as David Beckham, Wayne Rooney and even Sachin Tendulkar have found ways to be tax-efficient by incorporating companies to hold their image rights.
Character merchandising is a very prominent technique of exploiting the value and popularity attached to a fictional character mostly by means employed by the entertainment industry. It is used in the marketing of customer goods and services as well. It can be seen as a healthy step to infuse greater innovation and creativity in the industry since many players are given the opportunities to create their own adaptations of famous characters and offer better cinematic experiences to the audience. On the other hand, such sought after characters are vulnerable to scrupulous exploitation by entities which have no legal and authorized rights to do so. It is imperative that concrete steps need to be taken to legalize the concept of character merchandising. A closer look at cases of the past have revealed that this trend has hugely suffered from the lack of a comprehensive legal framework. Innovation which is the lifeblood of business can be truly protected only by bringing it under the purview of a well articulated protection scheme.
(1) Kewalramani N, Hegde S, Character Merchandising, Journal of Intellectual Property Rights, Vol. 17, 2012
(2)202 F.2d 866 (2d Cir. 1953)
(3) Micheal Hoisongton, Celebrities sue over unauthorised use of identity,Attorney Articles, Higgs Fletcher Mack, August 20, last visited on July 20,2020.https://higgslaw.com/celebrities-sue-over-unauthorized-use-of-identity/
(4)Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Productions, CS(OS) 598/2014 (Madras High Court)
(5)CS(OS) 2662/2011 (Delhi High Court).
(6)Jessica Nam, DC Comics: Trademark Police, American Bar Association, July 31,2015, last visited on July 20,2020. https://www.americanbar.org/groups/litigation/committees/intellectual-property/practice/2015/dc-comics-trademark-police/
(7)Lakshmi Kruttika Vijay and Rohan Sharma,Celebrities:Just what are their personality rights? Asia Business Law Journal, December 27,2016,last visited on July 20,2020. https://www.vantageasia.com/celebrities-just-what-are-their-personality-rights/