WIPO defines Character Merchandising as “the adaptation or secondary exploitation by the creator of the fictional character or by one or several authorized third parties. This exploitation is in relation to the essential personality features of the character such as name, image or appearance and is done to create an association between the products and such personality traits so as to create a desire in the minds of the customers to acquire such product or avail such service because of customer’s attachment with the character”. In other words, it is the practice of associating characters with goods in order to increase their sales.
This merchandising is of 3 types:
I. Merchandising of fictional characters
This involves use of name or image of a fictional character i.e., cartoons, puppets, etc. Their name or 2D or 3D image is used on various products and services and their advertisements. E.g., mickey mouse, Snoopy, etc.
II. Merchandising of real personalities
This involves use of attributes of a real person while promoting goods and services. In this method of marketing celebrities and sportspersons are used to lure people who idealize them or their qualities. E.g., Usain Bolt endorsing Puma.
III. Merchandising of image
This involves real people portraying fictional characters while promoting brands, e.g., Robert Downey Jr. promoting a brand while wearing costume of Iron Man. This also involves use of specific movie scenes or themes, e.g. Thanos actor Josh Brolin snapping his fingers to re-enact an iconic scene while promoting merchandise.
Use of characters in promoting products also comes under ambit of exercising intellectual property rights. This is because the creators of these cartoons and images have copyright over them. Section 13(1) of the Copyright Act, 1957 states that the copyrights exist over following types of work:
· original literary, dramatic, musical and artistic works
· cinematograph films
· sound recording
While using the Character merchandising through fictional characters, or image of a movie or television character, copyright license has to be obtained otherwise it would amount to copyright infringement. Apart from the Copyright Act, Berne Convention for the Protection of Literary and Artistic Works (1886) Article 2(1) also suggests protection for literary works produced in any manner thus mandating that the permission of creator or owner must be taken.
With regards, to ownership over character, section 17 of the copyright Act states that author/creator of the work enjoys ownership over such characters. However, section 17(c) states that if the author created those works in furtherance of employment, then the employer is the owner. Dispute on ownership in case of employment was talked about in the case of V.T. Thomas And Ors. vs Malayala Manorama Co. Ltd (AIR 1989 Ker 49). Here the publishing company Manorama claimed that artists cannot use the works they published because he was no longer an employee and the artistic works belongs to Manorama. The court noted that A] the cartoons were created before the artist was hired by Manorama, B] the employment had already ended. Therefore, section 17 (c) is not applicable in the present case.
Trademark law also has run-ins with character merchandising. Sometimes, companies trademark the name and designed image of fictional character, and there can be unauthorised use of such characters e.g., a local company using Mickey Mouse drawing on its T-shirts without obtaining license from Disney. Even real people can trademark their name and enjoy the sole right to use it for promotion. In the case of DM entertainment v Baby Gift House and Ors., the defendants were sued for selling miniature toys whose looks were based on Singer Daler Mehendi. The defendant company profited of the Singer’s popularity but this form of personality merchandising was unauthorised. The defendant had to pay compensation for it.
In case of merchandising of personality, publicity rights are to be considered. International Trademark Association defines the right of publicity as an “intellectual property right safeguarding against the misappropriation of the name, likeness, or other indicia of personal identities- like nickname, pseudonym, voice, signature, likeness, or photograph of a person, for the purpose of commercial benefit, by any other person”. Although in India there is no specific provision for publicity rights, section 14 of the Trademarks Act 1999 restricts the use of persona in association with any product, unless authorised by that person or his legal representatives, this applies even in case the person’s name has not been registered as a trademark.
The case of Titan Industries Ltd. vs M/S Ramkumar Jewellers also dealt with publicity rights. Here, the defendants used pictures of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan in their jewelry advertisement without their permission. The court held that “The defendants use of the personality rights of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan in its advertisement itself contains a clear message of endorsement and the message is false and misleading.” An order of permanent injunction was passed against the defendants.
Character Merchandising is a clever marketing practice which takes advantage of consumer attachment to popular characters. Here, one party gains benefit because of other’s popularity, at the same time the popular character/person also gets endorsement opportunities. However, this marketing strategy would be beneficial only as long as the publicity and ownership rights are not infringed.
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