Protecting fictional characters through Trademark and Copyright

Protecting fictional characters through Trademark and Copyright

  • 11 June, 2024
  • Nyall Engfield

Protecting fictional characters through Trademark and Copyright

Fictional characters are some of the most valuable creative assets in the entertainment industry. From Mickey Mouse to Harry Potter, well-developed characters can drive billion-dollar franchises across books, films, TV shows, video games and merchandise. As such, it's critical for content creators to understand how to protect their characters under intellectual property law. In the United States, the two most relevant forms of IP protection for fictional characters are copyright and trademark.

Copyright Protection for Fictional Characters

Copyright law protects original works of authorship fixed in a tangible medium of expression. 17 U.S.C. § 102(a). While fictional characters are not explicitly listed as a category of copyrightable subject matter, courts have long recognized that sufficiently distinctive characters are entitled to copyright protection. The seminal case on character copyrights is Nichols v. Universal Pictures Corp., where Judge Learned Hand articulated the now famous "sufficiently delineated" test: "the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly."45 F.2d 119 (2d Cir. 1930). In other words, the more detailed and well-defined a character is, the more likely it is to qualify for copyright protection apart from the work in which it originally appeared. Courts have developed two main tests to determine if a character is sufficiently delineated for independent copyright protection:
  1. The "Story Being Told" Test - Under this test, a character is only protected by copyright if it "constitutes the story being told" and is more than just a "chessman in the game of telling the story." Warner Bros. Pictures v. Columbia Broadcasting System, 216 F.2d 945 (9th Cir. 1954). Classic examples of characters that meet this high bar include James Bond, Sherlock Holmes, and Tarzan.
  2. The "Character Delineation" Test - This test looks at how extensively developed a character is in terms of physical appearance, personality traits, abilities, mannerisms, and other defining attributes. The more distinctive these elements are, the more likely the character is to warrant copyright protection. Anderson v. Stallone, 11 U.S.P.Q.2d 1161 (C.D. Cal. 1989).
Visual characters like comic book superheroes tend to have an easier time meeting these tests compared to purely literary characters, since their appearance is clearly defined. But a richly described character in a novel can also be protected by copyright if it is sufficiently distinctive and well-delineated. It's important to note that copyright only protects the original, creative expression of a character, not the underlying idea. So while a highly developed wizard character may be copyrightable, the general concept of "a boy wizard with a scar who goes to magic school" is not and can be freely used by other creators.

Trademark Protection for Fictional Characters

In addition to copyright, fictional characters may be eligible for trademark protection if they serve to identify the source of goods or services. The key is that the character must function as a distinctive brand, not just as a creative work. Under the Lanham Act, a trademark can be "any word, name, symbol, or device" used to "identify and distinguish" one's goods or services from those of others. 15 U.S.C. § 1127. For a fictional character to serve as a trademark, consumers must associate it with a particular source, usually the company that created the character or licenses its use on merchandise. Some of the earliest character trademarks were comic strip characters like Buster Brown and Mutt & Jeff that were licensed for use on consumer products in the early 1900s. Today, it's common for popular characters to appear on everything from t-shirts to lunch boxes as a way to build brand awareness and generate additional revenue streams. To establish trademark rights in a fictional character, the owner must show that the character:
  1. Is distinctive rather than generic
  2. Is used in commerce in connection with specific goods or services
  3. Serves to identify the source of those goods or services
Characters that are highly recognizable and extensively used in merchandising and advertising, like Mickey Mouse or Bugs Bunny, can develop strong trademark significance over time. Courts have found such characters to be protected by trademark law even apart from the copyrighted works in which they originally appeared. DC Comics v. Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013). However, not every use of a character constitutes trademark use. Decorative or ornamental uses on merchandise may not qualify if consumers just see the character as a desirable graphic rather than as a brand. In re DC Comics, Inc., 689 F.2d 1042 (C.C.P.A. 1982). Likewise, including a character in an expressive work like a parody or fan fiction is unlikely to be trademark infringement if there is no confusion as to source or sponsorship. One advantage of trademark protection over copyright is that trademarks can last indefinitely as long as the character continues to be used as a mark. Some character trademarks like Mickey Mouse have endured long after their original copyrights expired. However, if a trademarked character falls into disuse or becomes generic, trademark protection may be lost.

Interaction Between Copyright and Trademark Protection

Many fictional characters are covered by both copyright and trademark, which can lead to some complex interactions between the two areas of law. In general, courts have held that trademark law cannot be used to extend the duration of copyright protection after a work enters the public domain. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). However, a character that achieves trademark significance can continue to enjoy trademark rights even after its copyright expires, as long as it continues to serve as a source identifier. The key is that the trademark covers only the character's use as a mark in commerce, not as a creative work. So while others may be free to copy the character from an artistic standpoint once the copyright lapses, unauthorized use of the character as a brand could still constitute trademark infringement. Another issue is whether trademark law can restrict expressive uses of a character that would otherwise be permissible under copyright's fair use doctrine, like parodies or commentary. Courts have reached differing conclusions, but many have held that the First Amendment and trademark law's own exemptions for noncommercial use limit the ability of character trademarks to suppress such speech. Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).


In summary, fictional characters can be protected under both copyright and trademark law if they meet the applicable legal standards. Copyright guards the character as an original creative expression, while trademark protects the character's function as a source-identifying brand. The two forms of IP protection are distinct but often overlap in practice. To maximize the strength and duration of legal protection for fictional characters, content creators should:
  1. Develop characters that are highly distinctive and well-delineated to support copyright protection.
  2. Use characters as trademarks in connection with goods and services to build secondary meaning and trademark rights over time.
  3. Register copyrights and trademarks in the characters to secure statutory benefits and strengthen enforceability.
  4. Monitor and enforce against unauthorized uses that infringe the copyrights or trademarks in the characters.
By strategically leveraging both copyright and trademark law, creators can establish enduring and valuable IP rights in their fictional characters. While character protection has limits and involves navigating some complex legal doctrines, it remains a powerful tool for monetizing creative works in the entertainment industry.
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