By Shweta Venkatesan and Chhavi Pathak
How can we protect intellectual property rights over fictional characters from AI-driven exploitation? Under the current legal framework, personality rights apply only to living individuals, leaving fictional characters outside their scope. This shifts the focus onto copyright and trademark laws. However, both copyright and trademark in isolation provide limited protection to fictional characters against AI-driven exploitation. Copyright law faces challenges with the idea-expression dichotomy and finite protection terms. Whereas, trademark law demands proof of misrepresentation or damage. As highlighted in a recent case before the Delhi High Court, AI-generated content exposes a gap in the protection offered by copyright and trademark law. A hybrid solution, such as a “copymark,” may bridge the gap and provide suitable recourse.
On August 14, 2024, the Delhi High Court issued an interim order in the matter of Neela Film Productions Private Limited v. Taarakmehtakaooltahchashmah.com & Ors.[1] (“Taarak Mehta case”), a first-of-its-kind case at the intersection of AI and intellectual property rights (IPR). The creator of the show “Taarak Mehta ka Ultah Chasmah”, alleged that the defendants published AI-generated deepfakes of the show’s characters across online platforms. They claimed that this infringed their copyright and trademark rights over these characters. Seeking an injunction against such infringement, the plaintiff relied on the Court’s order in the Anil Kapoor case [2], which protected celebrities’ personality rights from infringement by AI-generated content. Ultimately, the Court issued an interim injunction forbidding the defendants from infringing the plaintiff’s IPR in this manner.
The Taarak Mehta case raises an interesting question: what is the best way to protect fictional characters from misappropriation by AI-manipulated content? The plaintiffs’ reliance on Anil Kapoor suggests that personality rights may offer protection. However, unlike Anil Kapoor, the Taarak Mehta case involves fictional characters. In the Icc Development case,[3] the Court held that personality rights are exclusive to human beings and cannot be extended to non-living entities. It reasoned that these rights stem from attributes of an individual’s personality, such as her name, signature or voice, which do not exist for non-living entities. It added that since copyright and trademark laws already protect non-living entities, extending personality rights to them could encourage monopolization and hinder creativity.
Even if the Court’s final ruling in the Tarak Mehta case extends personality rights to fictional characters, this may create new problems. Usually, when personality rights are extended to fictional characters, they are conferred upon the actor portraying the character concerned.[4] This could create a conflict between copyright and trademark rights of creators, and the personality rights of actors. Thus, personality rights are not a viable avenue to protect fictional characters from AI manipulation.
Another option is to lean on copyright law. In the Taarak Mehta case, the plaintiff argued that the show’s fictional characters are protected under the Copyright Act, and unauthorised AI manipulation constitutes copyright infringement. However, two considerations undermine copyright law’s effectiveness as a standalone safeguard. The first is the idea-expression dichotomy – the premise that copyright law protects expression, not ideas. This means that copyright law can protect the unique expression of a character’s traits, but not the traits themselves. Thus, it may not be effective in challenging AI-manipulated content that embodies a fictional character’s traits. This is also evident from cases in other countries. In Campbell v. Walt Disney Co,[5] the plaintiff alleged that Disney’s character ‘Jack Sparrow’ infringed their copyright over their character ‘Davey Jones’. They claimed that Jack Sparrow’s cockiness, bravery, and drunkenness were similar to the character traits of Davey Jones. A U.S. District Court ruled that these traits were generic, non-distinct characteristics which cannot be protected by copyright.
The second challenge with copyright law arises due to its limited term of protection. Copyright law only protects works for a certain time period, after which it lapses into the public domain without restriction. Once a work has lapsed into the public domain, copyright law cannot be used to restrict how it is used. Thus, it is also insufficient to protect fictional characters from AI manipulation.
Content creators may consider using trademark law to protect their rights over the characters they create. However, reliance on trademarks is only effective if the trademark owner can prove that the fictional character was misrepresented, or that they incurred commercial damage due to AI manipulation. In the Star India case[6], an ad for Tide showcased characters from the show ‘Kyunki Saas Bhi Kabh Bahu Thi’ promoting the detergent. Star India, the creator of the show and the owner of all rights to it, alleged that the show’s characters had acquired goodwill, which Tide was trying to encash upon. The court acknowledged that goodwill in fictional characters extends to their creators. However, it added that trademark infringement only occurs if a third party misrepresents its connection with them by using the mark, or if the creators have suffered (or are likely to suffer) real damage. AI manipulated content may not always meet this threshold, because it does not usually claim any ties with the protected work. Thus, both copyright and trademark in isolation provide limited protection to fictional characters against AI manipulation.
To resolve this conundrum, the judiciary or lawmakers may consider harmoniously constructing copyright and trademark law to recognize ‘a copymark’.[7] As conceptualized by legal scholar Schienke, a ‘copymark’ is a hybrid IPR that combines the creative protection of copyright with the distinctiveness and commercial value safeguarded by trademark law.[8] This renders copymark more effective than either copyright or trademark protection, in the case of fictional characters. Unlike a copyright, a copymark extends to the traits of a fictional character, and is not limited by a specified term of protection. Additionally, unlike a trademark, misrepresentation is not an essential factor in determining infringement. This flexibility allows copymark owners to effectively protect their fictional characters.
Despite these advantages, some have criticised copymarks as being overbroad. Since copymarks do not have a fixed term of protection, fictional characters could be protected indefinitely, adversely affecting creativity and innovation.[9] To resolve this concern, Schienke proposes restricting copymark protection to fictional characters that meet certain criteria. For one, the original work featuring the character must be copyrightable – and the character must be popular and recognizable independently of this work. The fictional character must also be capable of commercial exploitation, and have been in continuous use for at least five years, to establish that it has acquired goodwill. These criteria ensure that copymark protection applies in a proportionate and balanced manner.
The Taarak Mehta highlights the need for courts and lawmakers to adapt India’s intellectual property laws to the reality of AI-driven exploitation. Hybrid IPRs like copymarks can serve as a starting point to protect the rights associated with fictional characters.
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[1] Neela Film Productions Private Limited v. Taarakmehtakaooltahchashmah.com & Ors. CS(COMM) 690/2024
[2] Anil Kapoor v. Simply Life India & Ors. CS(COMM) 652/2023 and I.A. 18237/2023-18243/2023
[3] Icc Development (International) Ltd. v. Arvee Enterprises And Anr. 2003(26)PTC245(DEL)
[4] Schreyer, Amanda. 2015. “An Overview of Legal Protection for Fictional Characters: Balancing Public and Private Interests.” Cybaris 6 (1). https://open.mitchellhamline.edu/cgi/viewcontent.cgi?article=1043&context=cybaris.
[5] Campbell v. Walt Disney Co., 718 F. Supp. 2d 1108
[6] India Private Limited v. Leo Burnett (India) Private Limited 2003(2)BOMCR655
[7] Schienke, Gregory S. 2005. “The Spawn of Learned Hand-A Reexamination of Copyright Protection and Fictional Characters: How Distinctly Delineated Must the Story Be Told?” The Marquette Intellectual Property Law Review 9 (1): 63-90. https://scholarship.law.marquette.edu/cgi/viewcontent.cgi?article=1055&context=iplr.
[8] Schienke, Gregory S. 2005. “The Spawn of Learned Hand-A Reexamination of Copyright Protection and Fictional Characters: How Distinctly Delineated Must the Story Be Told?” The Marquette Intellectual Property Law Review 9 (1): 63-90. https://scholarship.law.marquette.edu/cgi/viewcontent.cgi?article=1055&context=iplr.
[9] Purvey, Sahil K. 2024. “Copymark: Merchandising of Fictional Characters & its Possible Protection.” The IP Press. https://www.theippress.com/2022/08/24/copymark-merchandising-of-fictional-characters-its-possible-protection