Cartoon characters are everywhere these days. In movies, video games, television, software, toys, blankets, food, beverages and clothing just to mention a few. Many of these are based on a fictional character which was originally created as part of a graphic work like a comic book. From a value perspective, these characters are assets for large media companies and represent billions of dollars in revenue. According to some reports the top-ten fictional characters grossed more than $25 billion in 2003. Media giants like Disney, Viacom and Hallmark are some of the largest companies who have cartoon characters but most video game makers, media companies, and toy makers such as Mattel and Hasbro are also involved.
Under traditional copyright law, the original work associated with a graphic novel is often a book or magazine which includes pictures and text. Pulling out a character from a picture in the book and giving it “life” isn’t traditionally covered as the original work. In addition, the comic book is often a joint work with an illustrator creating the visual characters and the writer creating the story or plot. In some cases, the writer describes the comic characters. Creating a comic book may generate questions about who is the author of the character.
Once the character has been given “life,” the character may have enormous value not just as a character in a comic book, but may include other media formats and merchandising activities. The comic character may be protected based on copyright and trademark law. In some cases, these rights extend to the character’s likeness or uniqueness; a name, physical appearance, and attitude or character traits outside the comic book or film including toys, games, software, along with other products and services.
Generally, to protect a cartoon character against someone attempting to misappropriate it, the law utilizes a combination of copyright, trademark and unfair competition laws.
In the United States Copyright law a protectable work must be original and must be fixed in a tangible medium. You cannot copyright mere ideas or facts, but only the tangible expression of those ideas or facts. Copyrights protect the created cartoon characters 70 years beyond the life of the artist. In some cases, the term may expire 95 years or 120 years depending on the nature of the authorship.
Figuring out how to Copyright Cartoon Characters is not clear. While the Library of Congress allows for protection of Cartoons and comic strips. This protection extends to any copyrightable pictorial or written expression contained in the original work like a drawing, picture, depiction, or written description of a character. So you may copyright cartoon images or copyright cartoon picture. Protection does not, however, extend to the title or general theme for a cartoon or comic strip, the general idea or name for characters depicted, or their intangible attributes.
While Cartoon Characters are not specifically identified as protectable under Copyright law, the Courts protect these characters as a part of the larger work and not as independent creations. Historically, they were regarded as ‘components in a copyrighted works’ and eligible for protection as a component. Under this theory, copyright protection extends beyond the mere expression of the character to the character’s physical appearance, the specific name, physical appearance, and character traits of that character.
Liability for unlawful use can extend to depictions of a similar character alone because Copyright law protects graphic characters based on the original character. Copyright law may also extend to someone who copies the appearance and unique character traits that distinguishes the particular character.
Recognition of characters as independent works separate from the plot in which they were embodied originally resulted from a court case in 1930. Today, the courts typically utilize two main tests to determine whether a cartoon character in a work is eligible for copyright protection
Because there is a balance between protecting an idea of a character (sometimes referred to as a prototype or mere chessman) versus protecting the expression of the idea, Courts utilize a test in determining if a fictional character is copyrightable. Generally, the less developed the character, the less the character is copyrightable. The more developed, the greater copyright protection it will enjoy.
Under the Well-Delineated Test, a fictional cartoon character is protected if it is determined that the character is found to be “sufficiently delineated.” Under this test, three questions must be answered. Firstly, the character must possess physical and conceptual attributes. Secondly, the character must be “sufficiently delineated” to be identified as the same character across multiple occasions. The character must have consistent traits. Lastly, the character must be “especially distinctive” and “contain some unique elements of expression. The consistency of the character’s traits and attributes is considered the key factor for whether the character qualifies for copyright protection.
Under the Story Being Told Test, a character can receive copyright protection if it “constitutes the story being told.” Usually, if the character is simply a vehicle for furthering or carrying the story forward, it will receive no copyright protection. This is also referred to sometimes as the Sam Spade Test, after the fictional character Sam Spade in the Maltese Falcon detective novel which held to be a “mere vehicle” for carrying the story, and thus no copyright protection was available for the character. While an author may assign their copyrights in a work, they are not prevented from reusing the same characters in other works unless the characters constitute the story being told. Thus, if a character is simply a vehicle for furthering the story, the author may reuse these characters in other works even if they assign their rights to the original work. Because the characters are simply vehicles for the story being told they do not go with the sale of the story. Under the Story Being Told Test, no copyrightability is allowed if the character is a “mere chessman in the game of storytelling.”
Under either the Well-Delineated Test or the Story Being told Test, the critical issue in determining if protection exists is whether the particular character is sufficiently and distinctively expressed so that it warrants protection as something more than merely an idea. Copyright law does not protect ideas from infringement, only the expression of those ideas. Therefore, specific types of characters is not protected. While a court won’t prevent others from creating a character with a particular super power, they will protect the specific expression of Superman and Batman. Therefore, the best way to protect a graphic character under copyright law is to ensure that the character’s appearance and personality are specific and unique.
Another way to protect a cartoon character, is to protect it under trademark and unfair competition law. Federal, state and common law protection will protect the cartoon character from unauthorized use by another when the character functions as an identification and receives general acceptance by the public as an identification of a brand. This protection could prevent not only the exact duplication of the trademark owner’s character but also the imitation of that character where the use would be likely to cause public confusion, mistake or deception with regard to the source of the products or services. The scope of trademark protection is based on federal trademark law, state common law for trademarks or unfair competition, or under relevant sections of the Lanham Act which protect against false designations of origin.
Trademark law will allow protection of the cartoon character not as a character but to the extent the character’s name and likeness function as a trademark to indicate the source of a product or service.
Unfair competition laws at both the state and federal level provides protection for someone who has created a name or symbol used by the public to identify their goods or services. Unfair Competition generally involves a variety of different causes of action that fall within three categories of actions:
Misrepresentation occurs when someone represents that a particular character is associated with their product or service, when, it is not. Sponsorship can occur when someone indicates that a particular character has endorsed its product or service when it has not and Misappropriation, can occur when a party uses someone else’s cartoon character without permission in order to associate it with their product or service.
In some cases, to bring an unfair competition claim, the injured party must claim that their character was wrongly associated with another’s product, service, person, or company.
Additional Protections for Cartoon Characters may also be based on the Right of Publicity and Trademark Dilution.
Right to Publicity: The right of Publicity has traces it roots to tort of trespass and includes the tort of right to privacy. Generally, it prevents others from from commercially exploiting one’s name and likeness.
Trademark Dilution: Trademark dilution allows one to prevent another from eroding the value of ones trademark. Under the theory of Trademark Dilution, the trademark owner can prevent others from creating alternative cartoon characters which diminish the value of the character.
If you have questions about protecting a cartoon character or about your rights in a cartoon character, please contact one of our attorneys.
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Linda Joy discusses the aspects of cartoon characters that are protected by copyright and trademark law, and how they can be infringed.
Q. I have a question regarding “style” issues in a copyright “buyout” clause. I have a client who wants exclusive rights to a cartoon character I proposed to them. They now tell me they would need to “copyright” the character. The financial terms seems favorable but my concern is that I would no longer be able to draw any character in a similar style. I understand the difference between a “buyout” versus maintaining the copyright and granting the rights. What I am unclear about are the implications and ramifications regarding the actual cartooning style.
If I sign away my character can I still draw a similar character without the threat of legal action? The differences in the two characters are essentially a blob of hair, glasses and a bow tie.
A. You are wise to be concerned. Cartoon characters can be protected forms of intellectual property under both copyright and trademark law. If you give your client a “buyout” of all rights in the character, it is possible that new characters drawn in a very similar way could be seen as an infringement of the original character that your client now owns. If your work for this client also involves developing dialogue or a story line that suggests the character’s traits (such as in a comic strip or animation of the character), then those character traits may also be part of your client’s rights. It may not be sufficient to change the hair, glasses and bow tie, if other traits of your new character remain similar.
1. Copyright Infringement: “Substantial Similarity”
The standard for copyright infringement is “substantially similar” artistic expression. “Substantial similarity” is measured by whether a normal observer would recognize the second work as a copy of (or derived from) the original. For cartoon characters, courts consider not only the visual resemblance but also narrative aspects of a character, such as their personalities, behaviors, biographies, and story lines (I’ll call these narrative aspects “literary traits”.) This is because copyright infringement standards for characters were first developed in the context of literary works (such as the novels that created Tarzan and Sherlock Holmes). One court, which was considering alleged infringement of Superman, explained it this way: “The graphic rendering of a character has aspects of both the linear, literary mode and the multi-dimensional total perception. What the character thinks, feels, says, and does and the descriptions conveyed by the author through the comments of other characters in the work episodically fill out a viewer’s understanding of the character. At the same time, the visual perception of the character tends to create a dominant impression against which the similarity of a defendant’s character may be readily compared, and significant differences readily noted.”
This means that courts dealing with alleged copyright infringement in a cartoon character must make a distinction between “a substantially similar character that infringes a copyrighted character despite slight differences in appearance, behavior, or traits, and a somewhat similar though non-infringing character whose appearance, behavior, or traits, and especially their combination, significantly differ from those of a copyrighted character, even though the second character is reminiscent of the first one.”
I’m quoting so much language from the court opinion to show how difficult it is to evaluate infringement issues about visual works based on legal standards that are expressed in words. Lawyers and judges can generate a lot of semantic arguments about whether the work meets the written standard for infringement quoted above, but whether your new character will infringe the original character ultimately depends on a subjective, visual comparison.
The sliding scale between visual and literary similarities
Generally speaking, it seems that courts evaluate “substantial similarity” for cartoon characters on a sliding scale between visual and literary similarities: the more similarities in one, the less similarities you need in another. On one side of the scale, the more similar the character is visually, the more likely it will be held infringing even if its literary traits are very different from the original. For example, one court had no trouble finding that comic books showing Mickey Mouse and other Disney character engaged in sexual activities, drug abuse and other “depraved” behavior infringed Disney’s copyrights, even though such activities have not been part of the original Disney characters’ story lines. On the other side of the scale, if the character is very different in appearance, it takes more similarity in literary traits to find substantial similarity. Superman would be infringed by a superhero named “Ralph Hinkley,” who looks very different (he wears a red and black costume with a giant “H” on his chest), only if Hinkley shared much of Superman’s story, for example, if he too worked as a mild-mannered reporter, hid his identity, and used his powers to expeditiously to save his city from super villains.
If your new character has significant differences in both appearance and literary traits, you are more likely to avoid an infringement finding. For example, in the Superman case, the court ultimately found that the Ralph Hinkley character was not an infringement: “The total perception of the Hinkley character is not substantially similar to that of Superman. On the contrary, it is profoundly different. Superman looks and acts like a brave, proud hero, who has dedicated his life to combating the forces of evil. Hinkley looks and acts like a timid, reluctant hero, who accepts his missions grudgingly and prefers to get on with his normal life. Superman performs his superhuman feats with skill, verve, and dash, clearly the master of his own destiny. Hinkley is perplexed by the superhuman powers his costume confers and uses them in a bumbling, comical fashion. In the genre of superheros, Hinkley follows Superman as, in the genre of detectives, Inspector Clouseau follows Sherlock Holmes.”
A recent case determined that an ad campaign which featured actors dressed in dollar bill costumes, including one character named “Bill,” did not infringe a competitor’s ad campaign which also featured an actor in a dollar bill costume named “Bill.” The court relied on visual differences in the way the dollar bill costumes were shaped (one was a box; the other was an envelope), as well as differences in the respective characters’ literary traits (the plaintiff’s character was always shown in lazy behavior, such as sitting in front of the TV; the defendants’ characters were shown in productive activities, such as athletic training).
Its important to note that in both these cases, it didn’t matter that Hinkley reminded viewers of Superman (indeed, the TV show made specific comparisons to Superman), or that the second dollar bill characters reminded viewers of the first Dollar Bill. As the Superman court stated: “Stirring one’s memory of a copyrighted character is not the same as appearing to be substantially similar to that character, and only the latter is infringement.”
The difference between copyrightable expression and uncopyrightable ideas
The cases also talk about another important consideration for cartoon characters: the difference between copyrightable expression and uncopyrightable ideas. In the context of literary characters, courts have often stated the rule that “in order for a character to obtain copyright protection, it must be especially distinctive.” The point is to distinguish between the artistic expression comprising well-developed individual characters, such as Godzilla, James Bond and Rocky (which have all been held protectable) and the general ideas of “stock” or “basic” character types such as film noir detectives, wizards or super heroes (which courts have held to be unprotectable archetypes). Stated another way, only a well-developed character will be protected, and then only the specific individual and unique character traits of that character. In the Dollar Bill case, the general idea for a character comprised of a human actor in a dollar bill costume was an unprotected idea. The specifics of the costumes and character traits comprised the protected expressions, and they were different enough to avoid infringement.
For visual works like cartoon characters, this means that only the specific and unique way you draw your character is protected. For example, the copyright in Charlie Brown would not prevent others from drawing children with large round heads. Many cartoonists use that general round-head feature. On the other hand, Matt Groening’s copyrights in the Simpsons may prevent others from drawing the same unique square-shaped heads with no chins and triangular spikes for hair, because those features of his characters is much more unique.
2. Trademark Infringement: “Confusing Similarity”
In addition to copyright, the cartoon character you are giving your client may also be protected under trademark law. A trademark is any word, symbol, or image (or combination thereof) that functions as a brand, that is, as a designation of the source of goods or services. Characters are often used as trademarks. Think of, for example, Betty Crocker, the Quaker Oats guy, the Pillsbury Dough Boy, the Michelen Tire man, Aunt Jemima, the Keebler Elves, Tony the Tiger, the Trix rabbit, Toucan Sam, Captain Crunch, Ronald McDonald, the Energizer Bunny, Mr. Peanut, Mr. Clean, and the California Raisins. Characters that are part of the products themselves, rather than just packaging or advertising, can also be trademarks. For example, Superman and other comic book heroes are trademarks for their respective comic book companies, Mickey Mouse is a trademark for Disney, and the name and image of Hello Kitty are trademarks for my client Sanrio’s merchandise.
If your buyout client uses your cartoon character as a trademark, you need to be careful that you don’t give competing clients an infringing character. The standard for trademark infringement is somewhat different than copyright infringement. Instead of “substantial similarity,” trademark law looks at “confusing similarity” or “likelihood of confusion.” Likelihood of confusion means that consumers are likely to believe that the two trademarks designate the same source of goods or services. While the similarity of the characters is part of the evaluation, it is not the only consideration. Several other factors are part of the analysis:
Courts will always look at the relative strength of the plaintiff’s trademark to determine how wide a scope of protection it deserves. “Strength” means how unique or unusual the mark is in connection with the goods or services. For example, cows are an obvious choice for milk products, so no one dairy can have a monopoly on using a cow for a trademark. Thus, Borden’s Elsie is not infringed by Clover Stornetta Farm’s Clo. Each dairy has trademark rights in its cow, but its rights are narrowly limited to its own cow character’s appearance and traits. On the other hand, a tiger is a totally arbitrary choice for cereal. So Tony the Tiger has a broader scope of protection. Kelloggs can prevent other cereal companies from using cartoon tiger characters on cereal and other packaged foods, even if they look and act quite different from Tony.
Another factor is the similarity between the parties’ goods and services. A trademark is not a pure monopoly. Rather, trademark owners have exclusive rights only with respect to goods and services that consumers would assume come from the same source. Thus, different companies can use similar or even identical trademarks if their goods and services are not related. Tony the Tiger for foods can coexist with Exxon’s Tiger in Your Tank for gas.
Several other factors are also considered, including the relative sophistication of the parties’ customers, whether the parties’ goods and services are marketed to different consumers through different channels of trade, whether there has been any evidence of actual confusion, and whether the defendant actually copied the plaintiff’s trademark with an intent to trade on the plaintiff’s goodwill.
Note that intentional copying is only one factor to be weighed. Unlike copyrights, trademarks can be infringed innocently. That means if you create a similar character for another client, and the other trademark infringement factors weigh toward infringement, your second client could be liable for infringement even if it did not know about your buyout client’s character. And you could be liable for contributory infringement.
3. Conclusion
Under copyright infringement standards, your second character might be substantially similar to the original – the small differences in hair, glasses and a neck wear might not make it less obvious to observers that the second character was derived from the original. In that case, you would be liable for infringing the copyright that your buyout client owns in the original character.
I have solved this problem by adding to a “buyout” agreement an explicit provision which allows artists to continue to create new works in the same style, such as:
“Artist’s Right to Create Similar Works: Client recognizes and acknowledges that the Artwork is one of several artworks created by Artist embodying a similar concept and artistic style, and Client agrees that Artist shall retain all rights to create and assign or license to other clients new artworks which may be considered “substantially similar” to or “derivative works” of the Artwork, as those terms are defined under the Copyright Act.”
(Note that “Artwork” is a capitalized defined term—you should substitute the wording used in your agreement to identify the cartoon character that is the subject of the “buyout.”)
If you are expecting to create similar characters for subsequent clients, you should talk with your current buyout client about trademark implications. You may want to include contract language to protect your right to create characters in a similar style for new clients, while at the same time reassuring your buyout client that its trademark rights will not be compromised. For example, the following phrase can be added at the end of the contract provision quoted above:
“provided that Artist shall not, except with Client’s prior written consent, assign or license rights in such works to entities doing business in the same areas of trade as Client.”
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You are invited to submit questions for upcoming Legalities columns. Please send your questions to Legalitities@owe.com.
Legalities is a service mark of Linda Joy Kattwinkel. © 2006 Linda Joy Kattwinkel. All Rights Reserved. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists in San Francisco. She can be reached at 415-882-3200 or ljk@owe.com.
See the index of previous columns for more answers to your questions.