Author: Tamanna Gupta from Rajiv Gandhi National University of Law, Punjab.
Reading time: 8-10 minutes.
Due to the increasing commercialization of television series & cinematic experiences, several new challenges in protecting the fictional elements presented in such works emerges. Television series & films profit from displaying such characters not only as a part of visual presentation, but also as a part of advertisements, franchising, feature films, mobile apps, outreach programs etc., thus it is no surprise that private entities often try to copy the themes presented in such shows in order to increase their outreach & appeal. Several courts have ruled that trademark protection extends to characters or elements in the “fictional” form also. This article analyzes the decision of the court in Viacom International v IJR Capital Investments (2018)(Hereinafter, Viacom’s Case) & other cases, in light of established precedents, in order to analyze to what extent a trademark over a “fictional entity” can be claimed.
The Tussle over Fictional Elements
According to the Lanham Act (1946), the term “trademark” includes any word, name, symbol, device or any combination thereof”. Trademarks are generally words, phrases, logos and symbols used by producers to identify their goods. However, shapes, sounds, fragrances and colors may also be registered as trademarks, as has been stated by the court in the case of Qualitex v. Jacobson Products Co. Inc.
However, the court has broadened its horizons when interpreting the term due to need for distinctive analysis. In cases involving fictional entities, it has been stated in the case of Union Nat’l Bank of Tex., Laredo v Union Nat’l Bank of Tex., Austin (1990) that while registration of a trademark can be construed as a “prima facie” evidence of ownership, ownership can be established by “use” of the trademark rather than registration. In most cases wherein trademark infringement of fictional elements is alleged, the prior use of the said element is what aids the aggrieved party. In the case of Viacom International v IJR Capital Investments (2018), the court dealt with the question regarding whether specific elements within television shows, other than the title of the shows, receive trademark protection. The court concluded in the affirmative, stating that trademark protection may be granted to certain characters, places, & elements of an entertainment entity.
Laws Governing Trademark
In India, The Trademark Act (1999) is the law governing Trademarks. Section 2(zb) of the Act defines trademark as follows- “Trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.
Furthermore, the act provides for the definition of various types of Trademarks, such as Certification Trademark, defined under Section 2(e), Collective Mark, defined under Section 2(g), Registered Trademark under Section 2(w), Well-Known Trademark under Section 2(zg) of the act. Furthermore, Section 2(2) of the act lays down guidelines with regards to the use of the trademark.
In the United States, The Lanham Act (1946) governs Trademarks. Section 2 of the act defines trademark as a mark used in commerce, or registered with a bona-fide intent to use it in commerce. According to the act, the mark’s eligibility for trademark protection is limited by the application of the categories laid down under the act. The act also lays down detailed guidelines for registration, certification, renewal of registration, appeal, and other procedures under the act.
Juxtaposition of Owners Right vis-à-vis Other Claimants
In the case of Warner Bros., Inc. v. Gay Toys, Inc. (1981), it was held that trademark protection may be accorded to the specific ingredients of a successful T.V. Show. The court stated that trademark protection extends to a case where “General Lee”, an orange car with a confederate flag emblem that was “prominently featured” on the successful television show, “The Dukes of Hazzard”, thus according protection solely on the basis of featuring on a show.
In the Viacom’s case, Viacom sued IJR Establishments due to their alleged trademark infringement of the “Krusty Krab”, a fictional restaurant featuring in the show “SpongeBob SquarePants., after IJR proposed to open a seafood restaurant with the same name, further filing an intent-to-use trademark application with the name “Krusty Krab”. Viacom had not previously registered the “Krusty Krab” trademark. The court stated that Viacom had rights over the trademark, based on the following considerations-
- Viacom established its “use” of the trademark by way of licensing & sales of products involving the fictional “Krusty Krab”.
- Viacom proved that “Krusty Krab” had acquired distinctiveness, and its name can be sourced back to the show of “SpongeBob SquarePants”, which was produced by Viacom.
- Likelihood of Confusion could arise by IJR’s subsequent use of the trademark.
Interestingly, the court has broadened its horizons regarding “use” of trademark, after its decision in the case of Paramount Pictures Corp. v. Romulan Invasions (1988) (Hereinafter, Paramount Pictures Case) wherein Paramount Company claimed trademark protection regarding “Romulan Mark”, a fictional alien race in the popular “Star Trek” series. The “Romulan Mark” was featured on television, in movies, books, licensed plastic spaceship models as well as figurines & dolls, puzzles, games, etc. The Trademark Trial & Appeal Board (T.T.A.B.) concluded that the mark was merely “used from time to time” and held that Paramount failed to establish any clear use of the term “Romulan Mark” to distinguish its services. Despite the clear use of the “Romulan Mark” in various contexts, the court denied the claim of trademark infringement, which it subsequently broadened in the present context, as could be ascertained from the decision of the court in Viacom’s case.
The Road Ahead for Protection of “Fictional Elements”
From a perusal of the abovementioned judgments, it can be ascertained that even in cases wherein the party fails to register a trademark based on the television show aired, protection can be accorded if a party can prove consistent “use” of the trademark. However, the jurisprudence regarding the interpretation of “use” is riddled with subjectivity, as can be ascertained from the Paramount Pictures Case, wherein despite showing clear use of the trademark, the appellant Paramount Pictures Corporation was denied relief.
However, with the increase in commercialization of television series, the courts are taking into consideration broader factors such as the use of trademark, in addition to primary factors such as appearance & distinctiveness of the mark. Thus, it can be ascertained that it is imperative to widen the ambit of trademark infringement cases with the inclusion of fictional entities in the gamut, in order to ensure that the trademark owner rights are not infringed. Only with the inclusion of wide ranging tests such as the test of “use” can the rights of such parties be redressed, which shall remain an issue of contention in the times to come.
With the emergence of commercial ventures using fictional entities from television, there is an increasing need for television and online platforms to duly register their characters & symbolisms as trademarks. However, even if a fictional character is not registered with the trademark office, it does not spell a death knell on the rights of the creator of the character, etc. Fictional entities are now accorded equal protection vis-à-vis other entities. In the present day and age, various businesses attempt to copy themes, colors, and patterns that give a layperson the impression of a resemblance with a particular Television program. In light of these factors, there is a need for creating a balance between the rights of the owner/creator of the character accorded trademark, and that of third parties. However, with an influx of litigation regarding protection to fictional entities, it can be inferred that the owner of the fictional entities have an upper hand in the present scenario. Only with a proper balance or “harmonious construction” of the conflicting interests of various stakeholders, such as creators, owners, and users, can a middle path be reached in the present state of affairs.
Author: Tamanna Gupta, Student, Rajiv Gandhi National University of Law, Punjab.