Indian film industry has the greatest recognition in world market. The film sector also plays a vital role in the economy of our nation. A film is a blend of visual and audio. It contains a story in it. There might a single or several characters involved in a movie. These characters are acted by greatest stars in this industry. These characters develop a particular recognition and the stars also develop a particular fame and reputation in the industry. The legal protection for utilization of this character is achieved by the intellectual property rights because these characters are created due to human intellectual labor.
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 of a character in relation to a film with a view in creating prospective audience a desire to watch those films because of the audience affinity with that character . It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising. This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears. It is only when this is established on evidence as a fact, that the claimant may be able to claim a right to prevent any one else from using such a character for other purposes.
Character merchandising involves two types i.e. the exploitation of fictional characters or the fame of celebrities.
Fictional Character Merchandising:
The fictional characters merchandising is the oldest form of merchandising. Copyright exists also in this character. e.g., Cartoon (Chotta Bheem) and fictional character (Chitti in Robo 2.0) in a film.
Fame Of Celerity Merchandising:
This form of merchandising involves the usage attributes of real life person like Voice, image, name, video, etc. This is also known as personality merchandising. Celebrities are living beings who are otherwise very famous in any particular field, e.g.; film stars ( Rajini Khanth), sportsmen ( Virat Kholi). The true identity is exhibited in the film.
THE COPYRIGHT ACT 1957
The producer of a film is the first owner of the copyright of the Film . The producer or any person authorized shall only have the rights to exploit the works in the film. The fictional characters which revolved around the film is owned then producer. In case of exploitation of such work without authorization, the Copyright Act provides Civil as well as criminal remedies in case of infringement. The copyright holder is entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right. The infringer shall be punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3 years and with fine which shall not be less than 50,000 rupees but which may extend to 2 lakh rupees. The author also posses special rights where he can restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work if would be prejudicial to his honour or reputation . Such special right is also possessed by the performer with respect to his performance.
The Trade Marks ACT, 1999
In case of a name attributed to a particular character of a film which gives it a secondary meaning and is registered under trademark law, statutory protection for the particular name is provided trademark protection. CHAPTER XII of The Trademarks Act deals with offences and penalties. The law of passing off also protects such name and titles.
The Constitution Of India, 1950:
The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality traint, signature, voice, etc., An individual may acquire the right of publicity by virtue of his association with a film. Any effort to take away the right of publicity from the individuals would be violative of Articles 19 and 21 of the Constitution of India. No persona can be monopolised. The right of Publicity vests in an individual and he alone is entitled to profit from it. \
Relevant Character Merchandising Cases:
In Hexagon Pty. Limited v Australian Broadcasting Commission , the case was of fictional character of fantasy called ‘Alvin Purple’. On facts it was held that the plaintiffs had built up goodwill in the films entitled ‘Alvin Purple’, and the character in the rival film was the same character as ‘Alvin Purple’ In the plaintiffs’ film. On facts it was held that this was a case of passing off.
In Sholay Media And Entertainment Pvt Ltd vs Parag Sanghavi And Ors the defendant made a film Ram Gopal Varma Ki Aag, which had similar plot to the superhit old film Sholay. The characters in the impugned film namely Babban Singh, Narsimha, Raj-Heero, Ghungroo, Durga Devi And Tambhe bear striking resemblances to character traits of Gabbar Singh, Thakur, Jai-Veeru, Basanti, Radha And Sambha respectively. A synopsis showing that the characters in the impugned film are identical to the characters in SHOLAY. The movie was produced and released without authorisation from the owner and author i.e. plaintiffs. So the court held the movie was infringement of copyright
It was observed in Star India Private Limited v Leo Burnett (India) Private Ltd that to succeed in a case of character mechandising the plaintiffs must establish as a fact, by material and evidence, that the public would look at the character and consider it to represent the plaintiffs or to consider the product in relation in which it is used as has been made with the plaintiffs’ approval.
In Mirage Studios v Counter-Feat Clothing Company Limited the case was of a fictional cartoon character called ‘Ninja Turtles’. The plaintiffs had done extensive character merchandising of those cartoon characters with over 150 licenses having been granted to use those characters in respect of a wide range of goods. The Court after considering the facts and evidences held that the plaintiffs’ business was to license the reproduction of the said cartoon characters on goods sold by other, people, which licensing business they had extensively carried on. So public were aware that the characters were connected with the plaintiffs.
A particular character of a film is also protectable for e.g. The character of James bond, Rocky, etc but the portrayal must be unique and be differentiable. The question Arbaaz Khan Producation Pvt Ltd v Northstar Entertainment Pvt Ltd was whether Whether Chulbul Pandey character from the movie Dabangg starring Salman Khan unique and capable of copyright protection. The court declined the uniqueness of the character and further stated
“To say that both Chulbul Pandey and Gabbar Singh wear their uniforms in a casual manner is hardly unique. Both characters share a loving and protective relationship with the female lead. I imagine this is generally true of most on-screen romances. It might also be something of an exaggeration to put Chulbul Pandey today on the same platform as James Bond. I suspect Chulbul Pandey has some distance to travel yet before he can quite get to the shaken-not-stirred gold standard. But as to the general principal that the character is unique and the portrayal of that character, as also the “writing up” of that character in an underlying literary work is capable of protection is something that I think I can safely accept. It would be, I think, stretching it too far to say that such a fully developed and uniquely depicted character, because it is ‘merely a character’, falls wholly outside the realm of’ all protection.”
It was observed in Mr.Shivaji Rao Gaikwad vs M/S.Varsha Productions that if any person uses the name of a celebrity without his/her permission, the celebrity is entitled for injunction, if the said celebrity could be easily identified by the use of his name by the others.
Legislations for Copyright and trademark plays a vital role in curbing the cases of character merchandising. Right to life enshrined under Indian Constitution protects the personality rights of a person. There is no specific legislation or provisions particularly concentrating on the term character merchandising. But the existing laws provide remedy in case of violations. The specific and selective application of these laws will provide an effective remedy.