Nicole O'Hara, Gross McGinley Nicole O’Hara, Gross McGinley

If you’ve ever walked around Times Square in New York City for more than 30 seconds, you know that while SpongeBob SquarePants lives in a pineapple under the sea, SpongeyGuy SquareFace likely takes the PATH in every day from Hoboken. The dedicated professionals who portray beloved costumed characters and often slightly askew versions thereof have faced some trials of late, including confinement within specific “activity zones” in Times Square by the city’s Department of Transportation, arrests for minor disagreements over tips, and brawls with each other and passers-by, see Vera Haller, “After Years of Bad Behavior, the Costumed Characters of New York’s Times Square No Longer Roam Free,” LA Times, Aug. 3, 2016. Yet these costumed characters and the spirited performers within the oversized heads persist, for the love of the adoring fans who stop to take a selfie with them and for the money they subsequently expect, solicit or demand.

Intellectual property law protecting fictional—or literary—characters has evolved to recognize that it is often the protagonist or antagonist within a creative work that leave the longest-lasting impression on the audience. A positive response to such characters by the intended audience is the genesis, not surprisingly, for alternative and expanded commercialization by the author of the underlying work, and, maybe even less surprisingly, similar efforts by fans or impersonators of the author’s work. This can range from the fanfiction paradigm (see: the “Twilight” series inspiring the next-level spice of “Fifty Shades of Grey”) to the trademarkian efforts used to keep an owner of a movie theater from jumping out of a helicopter dressed as Batman the day the movie premiered in 1989. As set forth herein, there are multiple avenues for intellectual property (IP) protection of literary and graphic fictional characters, which include comprehensive copyright registrations, strategic trademark protections, and unfair competition and other state and common law claims.

Copyright Law Is to Fictional Characters as Spinach Is to Popeye

Copyright law gives life, in the form of IP protection, to graphic and literary characters, as it is the most natural and common form of protection for the creative works in which the characters appear, e.g., movies, books and other narratives. Copyright has as its purview over all original works of authorship fixed in a tangible medium of expression, and it has been well established that protection can be obtained for all copyrightable components within a work, U.S. Copyright Act, 17 U.S.C. Section 102(a). Despite the fact that physical, mental and emotional characteristics are prototypical ideas and concepts statutorily barred from copyright protection (subsection (b) of the Copyright Act), fictional characters are eligible for copyright protection as an expressive amalgam of traits specifically combined by the author or creator. Case law has worked to differentiate these protectable and well-crafted combinations of attributes from stock or undeveloped characters with stereotypical commonalities, considered unprotectable scènes à faire. See Warner Brothers Pictures v. Columbia Broadcasting Systems, 216 F.2d 945 (9th Cir. 1954), Nichols v. Universal Pictures, 45 F.2d 119 (2d Cir. 1930). One illustrative comparison would be the formulaic (yet terrifying) evil clown characters in countless movies, TV shows, comics and books to Pennywise from Stephen King’s famous book, TV movie and remake for the big screen, “It.”

It is important to note that while literary characters can be isolated from textual descriptions and legally protected as intellectual property of the creator, a visual representation of a character is much more easily and rigorously protected under copyright law. As an example, Disney was fortuitously able to save Mickey Mouse from a role in a parody cartoon wherein he and his friends lived their best life, bucking society’s expectations in a pro-drug, sexually open-minded alternative reality. In Walt Disney Productions v. Air Pirates (581 F. 2d 751 (9th Cir. 1978), Mickey may not have been rescued from his fate at the hands of parodists in the name of provocative social satire, if it were not for the precise copying and too-close resemblance between the graphical depiction we all know as “Mickey Mouse” and his Bizarro counterpart.

Trademark Law and Another Clown Reference

Distinctive character names and physical identities can be protectable as trademarks when they serve to indicate a source of goods or services. See generally Lanham Act, 15 U.S.C. 1127; Silverman v. CBS, 632 F. Supp. 1344 (S.D.N.Y. 1986), decision supplemented, 675 F. Supp. 870 (S.D.N.Y. 1988), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989). As an example, black cats have widely known superstitions and meaning to society generally, but little to no trademark value. In contrast, there are 16 live trademark applications for Black Panther, and understandably so, as that movie is phenomenal. (See also Felix the old-timey cartoon cat, with trademark registrations for DVDs, comic books, cat food, and clothing, and Sylvester of Looney Tunes fame—whose full name is apparently, Sylvester James Pussycat Sr.— registered in connection with T-shirts and toys.) The goods and services with famous characters are often entertainment and merchandise related—a la movie and book villains, superheroes, cartoon and comic cats. However, the situation can be somewhat murkier when the goods/services are less directly or intuitively related to the character mark used to sell them, especially in cases where the character is either no longer protected by copyright law as part of a larger narrative work or when s/he did not originate in one. In such an instance, if the nexus between the character and the goods/services is not apparent, courts have often required a showing of “secondary meaning,” i.e., that the character’s primary significance, in the minds of the public, is to identify the source of the goods/services. Walmart Stores v. Samara Brothers, 529 U.S. 205 (2000). One example of successful and indelible secondary meaning can be found in the ordinary party clown transformed into a worldwide brand—Ronald McDonald. Since his birth (or fully formed materialization) in the 1960s, he has risen to incredible trademark fame and recognition by consumers, notwithstanding the potential hindrances to his distinctiveness, including his start as nothing more than a fictional clown, as well as a splintered existence as a cartoon character and simultaneously a human man, portrayed on TV by several people over the years and simultaneously at any given time, in countless countries around the world.

Claims based on dilution and state unfair competition laws can expand upon the ability of a fictional character to effectively serve as a trademark and represent the goodwill associated with a source of goods and services in cases of misleading or misappropriating uses by third-parties. The penumbra of details, distinctions, and fictional cohorts that surround a well-known character are also protected from those who seek to harm them. A singing telegram franchising company was found to be engaging in unfair competition in portraying a character removing his glasses and unbuttoning a boring collar shirt to reveal a Superman-like costume underneath (DC Comics v. Unlimited Monkey Business, 598 F. Supp. 110 (N.D. Ga. 1984). Similarly, courts have found unfair competition and misappropriation in third-party uses of a combination of evocative phrases such as “faster than a speeding bullet” and “it’s a bird, it’s a plane …”; the “signature sounds” of the high-pitched, squeaky singing voices of the Chipmunks; and even nonexistent or potentially descriptive locations, like the “Bat Cave,” see DC Comics supra; and Bagdasarian Products v. Audiofidelity Enterprises, Phoenix Entertainment & Talent, d/b/a Holiday Records, Pugliese, 1984 WL 1565 (D.N.J. Oct. 3, 1984); and DC Comics v. Reel Fantasy, 696 F.2d 24 (2d Cir. 1982).

Enter, Stage Left, the Constitution

As noted above, ideas are expressly excluded from copyright protection, a notion formalized in the Copyright Act but born largely from the First Amendment of the U.S. Constitution. As with any IP regime, there are limitations to the monopolies creators and commercial entities may exert over their works. The doctrine of Fair Use will come into play when copyrighted works or elements thereof, including characters, are utilized and transformed by some third-party, barring or hindering the creators of the character from absolutely prohibiting some uses. Similarly, trademark law, with its foremost #squadgoals of commercial source identification and avoiding consumer confusion and deception, will defer to the First Amendment when it comes to speech that is purely or mostly creative. One hard-hitting example involved the WWE in the Western District of Pennsylvania. The First Amendment body-slammed both the copyright and trademark claims made by the WWE against the maker of chic “Paw Per View” T-shirts featuring “dogified” characters—“Hollywoof Hound Hogan” and “Bone Cold Steve Pawstin” in World Wrestling Federation Entertainment v. Big Dog Holdings, 280 F. Supp. 2d 413 (W.D. Pa. 2003).

To avoid experiencing such a gut-punch, creators of fictional characters who are destined for great creative and/or commercial heights, should strive to utilize various methods of protection and enforcement, as described herein, which may include:

  • Obtaining copyright registration for the underlying work(s) which feature and describe the fictional character;
  • Focus efforts on well-defined and delineated characters with detailed, consistent and recognizable traits and likenesses;
  • Develop a graphic representation of the fictional character, and protect it via copyright and trademark registration; and
  • Whenever possible, pursue trademark registrations for the character’s name or unique taglines or other expressions (think Lone Ranger’s Hi-Yo, Silver! Away! Or Marvel’s/Captain America’s Avengers Assemble).

Imitation may be the sincerest form of flattery, especially in the world of characters. However, without diligence, our characters risk having less character than the imitators.

Nicole J. O’Hara is an intellectual property attorney with Gross McGinley in Lehigh County. She works with businesses large and small, advancing and managing patent portfolios, drafting patent applications, and resolving trademark, copyright, trade secret, and patent-related issues. Contact her nohara@grossmcginley.com or 610-820-5450.