Fictional Characters in Intellectual Property Litigation
Logan Marx
Copyright laws protect an author’s exclusive rights in “original works of authorship fixed in any tangible medium of expression.”[1] This means that a creator has full control over their works for a certain period of time.[2] Under the current version of statute, copyright will exist in a work for somewhere between 70 to 120 years after its initial creation, depending on the status of the work.[3] Once copyrights in a work expire, the work transfers to the public domain, in which the work has no owner and may be used by anyone.[4] The scope of existing copyright law generally covers literary works, musical works, and any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, or sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.[5] Missing from this list are fictional characters, like Mickey Mouse or Sherlock Holmes, which can exist independently from the works in which they appear, and appear in several subsequent works So how do these protections apply to fictional characters?
Fictional characters are an interesting topic within the field of intellectual property law and present unique legal difficulties. First, while copyright code does not expressly include copyright in characters distinct from the works they appear in, courts have recognized such rights through applying fact-intensive tests to determine the level of creativity and distinctiveness of the character, and the consistency with which they are used over time in subsequent works.[6] Circuit Courts are currently split on how to determine character copyrightability and the U.S. Supreme Court recently denied cert on the question.[7] The two most commonly used tests are the “sufficiently delineated test” and the “story being told test.”[8]
The “sufficiently delineated test” asserts that a character is copyright protected if “the character has physical as well as conceptual qualities, (2) the character is sufficiently delineated to be recognizable as the same character whenever it appears and display[s] consistent, identifiable character traits and attributes, and (3) the character is especially distinctive and contain[s] some unique elements of expression."[9] The “story being told test” was explained by the majority opinion of Warner Bros v. Columbia Broadcast Systems as follows:
When a study of the two writings is made and it is plain from the study that one of them is not in fact the creation of the putative author, but instead has been copied in substantial part exactly or in transparent re-phrasing to produce essentially the story of the other writing, it infringes.[10]
Character copyright test divisions amongst Circuits, the fact intensive process involved in using the tests and the very nature of copyright litigation has caused character copyright cases to be difficult, expensive, and unpredictable.[11]
Second, characters can appear in several derivative works, and their depictions or traits can vary or evolve across the works in which they appear.[12] Only new features, traits, or depictions will be able to potentially secure copyright protections in derivative works.[13] For example, Steamboat Willie, The Walt Disney Company’s first portrayal of Mickey Mouse as a black-and-white steamboat captain, recently lost its copyright protections.[14] Does this mean Mickey Mouse is free for the public to use? Yes, but only that version. Later portrayals and traits of Mickey Mouse cannot be used because these features have copyright protections of their own. For example, Mickey Mouse also appears as a wizard in technicolor in a later derivative work, Fantasia. The new colors, wizard role, music, and even the tweaks to Mickey Mouse’s design can all be subject to copyright protections, each having independent protection terms with a life distinct from that of the original work. But remember, the copyrightability of the traits are determined by the unpredictable tests described above.[15] So, if you plan on using Mickey Mouse, you step onto a tricky field of infringement land mines that could be very costly if detected.
Third, trademark protections add an additional layer of complexity. A trademark is essentially a mark used to identify goods or services used in commerce to distinguish those goods or services from those offered by competitors.[16] Trademarks may include “a word, phrase, name, symbol, ticket, color, sound, motion, aroma, image, or hologram, device, or any combination of them.”[17] A character may have overlapping copyright and trademark protections. For example, if the Mickey Mouse head shape is used in a way that may mislead a consumer to believe a product is Disney’s, the use of the head shape is likely a trademark infringement. Thus, character copyrights and trademarks work together to produce a package of protections that should be carefully understood both by the public and the creator.
These are only a few of the unique legal issues posed by characters in the field of intellectual property law. While IP protections over character can be quite difficult to ascertain, it is worth knowing for both the creator of the work and people who would like to use the work for their own purposes. To conclude, it is necessary for an individual to adequately know the legal status of a character and its intellectual property protections before making moves to defend it or use it.
[1] 17 U.S.C §§ 101 et seq.
[2] 17 U.S.C. § 106, 113 – 115.
[3] Id. at § 302.
[4] The Public Domain: Welcome to the Public Domain, Copyright & Fair Use, Stanford Libraries https://fairuse.stanford.edu/overview/public-domain/welcome/#:~:text=The%20term%20%E2%80%9Cpublic%20domain%E2%80%9D%20refers,one%20can%20ever%20own%20it (last visited Feb. 15, 2025) (“The public owns these works, not an individual author or artist. Anyone can use a public domain work without obtaining permission, but no one can ever own it.”).
[5] Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991).
[6] See Daniels v. Walt Disney Co., 958 F.3d 767, 771 (9th Cir. 2020) (Explaining that “[a]lthough characters are not an enumerated copyrightable subject matter under the Copyright Act, see 17 U.S.C. § 102(a), there is a long history of extending copyright protection to graphically-depicted characters.”).
[7] Moodsters Co. v. Walt Disney Co., 141 S. Ct. 1050 (2021) (mem.).
[8] Comment: Caitlin E. OH, Inside Out, Upside Down: Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) Court Confusion Over Character Copyrightability, 72 Emory L.J. 629, 632; Comment: Kathleen Hanley, Character Copyrightability in Chaos: How Unclear Character Copyrightability Tests Lead to Improper Results, 71 Am. U.L. Rev. 1145.
[9] Daniels, 958 F.3d at 771-772 (cleaned up).
[10] 216 F.2d 945, 950 (9th Cir. 1954).
[11] Comment: Caitlin E. OH, Inside Out, Upside Down: Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) Court Confusion Over Character Copyrightability, 72 Emory L.J. 629, 632; Comment: Kathleen Hanley, Character Copyrightability in Chaos: How Unclear Character Copyrightability Tests Lead to Improper Results, 71 Am. U.L. Rev. 1145.
[12] 1 Nimmer on Copyright § 2.12 (2024).
[13] Methods For Protecting Public Domain characters After Klinger V. Doyle Estate, Ltd., 33 Ent. & Sports Law. 49 citing Silverman v. CBS Inc., 870 F.2d 40, 49 (2nd Cir. 1989). (“copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works.”)
[14] See Jennifer Jenkins, Mickey, Disney, and the Public Domain: a 95-year Love Triangle, Duke Law Center for the Study of the Public Domain (2024) https://web.law.duke.edu/cspd/mickey/#_ftn11.
[15] See supra footnotes 7, 8, and 9, and accompanying text.
[16]Id. at §1112 (“The applicant may apply to register a mark for any or all of the goods and services upon or in connection with which he or she is using or has a bona fide intention to use the mark in commerce.”).
[17] The Wolters Kluwer Bouvier Law Dictionary, Trademark.