Copyrightability of Characters: A study in light of proper allocation of Performers’ rights

By Pallavi Verma, RMLNLU

Editor’s Note: This article discusses the relevant laws and international conventions that deal with the protection of a performers’ copyright. The author restricts this analysis to the right of a performer over his/her portrayal of a fictional character in a TV show/ movie/ performance etc. 

INTRODUCTION

Copyright is the part of intellectual property which gives exclusive legal right to the original creator of the work. The copyright law protects the intellectual creations in works that are original. It protects the work as soon as it is created and no registration formalities are required.  Lexical Analysis as per the Oxford English Dictionary, tells us that ‘copyright’ is “the exclusive right given by the law for certain term of years to an author, composer etc ( or his assignee) to print, publish and sell copies of his original work.”

The Copyright Act, 1957 was silent on the performers’ rights. The 1994 amendment of the Copyright Act recognised the rights of the performers. Under Section 2(qq) of the Act “performer” includes an acrobat, musician, singer, actor, juggler, snake charmer, a person delivering lecture, or any other person who makes a performance. Section 38 of the Act gave protection to actors, musicians, jugglers, dancers etc under the head of ‘Performers Rights’. This ensured that the rights are not exploited and the creative efforts of the person who does the work are rewarded.

In November 2013, the copyright notice given by Viacom18 for ‘Gutthi’- a character created in Comedy Nights with Kapil[i] prompted me to think that is it justified that an actor perceive a character and infuse life in it[ii] and the copyright over it is demanded by the producers who are not creators of the work but distributors of the work created by actor. On the other hand, there was another argument at the back of mind that producers invest hugely in their shows and incur advertising and promotion costs to popularise the character. Even their copyright claim cannot be denied. I believe this is a point of research as characters created by actors are not included in the IPR jurisprudence and therefore I have taken this topic for my project in order to research that what is the law on this point and who is and who should be given protection in this regard.

NEED FOR PROTECTION OF PERFORMERS’ RIGHTS

The need for the protection of performers’ right arose with the passage of time. The fundamental reason was the technological development that enabled recording & broadcasting of the performers’ right. But earlier these rights were not there and according to Adam Smith, there could be mainly two reasons for not recognizing the performers’ rights.

1) Social and Historical Reasons- During the formative period of copyright, the actors were regarded as ‘vagrants’ by law. The players, buffoons, musicians, opera-singers, opera dancers, etc. were the classical examples of ‘unproductive labour’.

2) Historical and Technological Reasons- The work of all the performers used to perish in the instant of its production.[iii]

However, the development of technology in the late nineteenth and early twentieth century enabled performances to be recorded and broadcasted to the public locally, regionally, nationally and eventually internationally.[iv]

The Copyright Act divides the performers into three categories:

  • Performers giving live performances- The performer when he performers in front of the audience (live) or engages in any performance he has right over that performance.
  • Performers in a cinematograph film with credits in the film- The performer when he gives his rights to the person with any written agreement to make it a part of any commercial use, the performer shall be entitle to have royalties or some monetary benefit.
  • Performers in a cinematograph film without credits in the film- There are many performers in supporting cast which are commonly termed as “extras” in any play, film etc. The Copyright Act till now doesn’t give any protection to such people except moral rights which might be prejudicial to their reputation.

The acts of stand-up comedians will be covered under the first category. Hence, we can safely say that Sunil Grover has a right over the character- ‘Gutthi’- created by him.

POSITION IN US AND UK

The law in India which governs the Performers’ Right are weak when compared with the laws in U.K and U.S.A which are quite intricate. Although the protection given by USA is in a similar form as in India, but the principle mechanism in US is the law of tort. Although there is no specific legislation which gives protection to the performers, their rights are protected by the right of publicity- tortious doctrine-which has been evolved by the American Courts in direct response to claims of infringement of performers’ right. This makes the American system distinctly different from Indian and English regimes.[v]

In England, the Performers Protection Act was passed in 1925. The performers’ rights in England are on an equal footing with India. In England, the performers are granted economic rights. The inadequacy in the English legal system is primarily with respect to unprotected moral rights and non tangible rights. As in the Indian system, this is primarily because England uses a system of copyright to protect performers’ interest.[vi]

Thus, the legal system of USA is stronger as compared to that of India. The right of publicity is a useful judicial innovation; its applicability is limited only in a country like India, where the judicial system has not developed a jurisprudence of publicity rights.

RIGHTS OVER FICTIONAL CHARACTERS: UNKNOTTING THE GUTTHI OF PERFORMERS’ RIGHT

The commercial and popular appeal of fictional characters makes it important to ensure that the characters’ creators are fairly and uniformly protected from unauthorized exploitation of their creations. Thus, the important question which arises is that who owns the copyright over a character- an actor who perceives a character and infuses life into it by adding his own innovation and expressions or the producers who, though not the creators of the work, but are its distributors and who invest hugely in the shows as well as incur advertising and promotion costs to popularise the character.

Sunil Grover’s exit from ‘Comedy Nights with Kapil’, a comedy show aired on Colors TV, was tragic for all the faithful viewers of the show, me being one of them. A public notice was issued by the producers of the show on 23rd November:

“A certain artist and a stand-up comedian associated with the programme Comedy Nights With Kapil aired on Colors television channel is planning to launch or be associated with other shows…. Take notice that Viacom18 has sole, exclusive, absolute and unlimited ownership rights of all the intellectual property rights of the artist associated with the programme including the rights in the format of the programme.”[vii]

This means that the character of Gutthi which all of us have come to know and love can no longer be essayed by Sunil Grover on any other show.

PERFORMERS’ RIGHTS UNDER S.38A OF COPYRIGHT ACT

Section 2(q) of the Act defines ‘performance’ as “any mode of visual or acoustic presentation, including any such presentation by the exhibition of a cinematograph film, or by means of radio-diffusion, or by the use of a record, or by any other means and , in relation to a lecture, includes the delivery of such lecture.”

Section 2 (qq) of the Act defines a ‘performer’ as “an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance”

Section 38A Clause 2 of The Copyright Act, 1957 is relevant in this regard clearly that the performers’ rights detailed in s. 38A(1) are enjoyed by the producers of a cinematographic film once an artist’s performance is incorporated in the film. Section 38A(2) of The Copyright Act, 1957[viii] makes it clear that the performers’ rights detailed in S. 38A(1) are enjoyed by the producers of a cinematographic film once an artist’s performance is incorporated in the film. This position was also emphasized in Fortune Films International v. Dev Anand[ix]. In this case, the question whether copyright subsisted in the performance of a performer was decided by the Bombay High Court. The court held that copyright protection is available only to film including the soundtrack, the cine artists who act in the film are not protected by copyright law for their acting.

However, the instant case of ‘Gutthi’ involves an issue unanticipated by the 1957 Act – ‘whether the right to ‘copy’ the character in a subsequent different show where the character is played by the actor who had originally played the character, is a right of the actor?’

A similar case on the issue was decided by the Kerala High Court in Malayala Manorama v. V T Thomas[x] where a publishing house was injuncted from claiming ownership over the characters created by the cartoonist before joining the publishing house and the Court held that the publishing house could not restrain the cartoonist from continuing to draw the cartoons after leaving employment. This is because the characters had been created by V T Thomas before joining Malayala Manorama and the publishing house had no role in the creation of the characters. The Kerala High Court did not directly address the issue of copyrightability of characters but it decided the issue of ownership of copyright on character; one may therefore conclude that copyright on character could be claimed successfully by the cartoonist.

An important distinction made by the Court was between ownership of the characters per se and ownership of the cartoon strips made by V T Thomas while he was gainfully employed by the publishing house; while the former was a right vesting in the cartoonist, the latter would be considered property of the publishing house. The ‘character delineation test’ (popularly known as Nichols test), laid down in Nichols v Universal Pictures[xi] is a yardstick to determine copyrightability of a character in United States. The test is to see whether a character is sufficiently evolved in the mind of the reader/viewer so as to warrant legal protection, i.e., the character must be distinct and must not be a “stock character” (typical characters such as ‘girl next door’, ‘angry young man’ etc).

The case of stand-up comedians on TV shows is unique because it cannot be said to be purely a cinematic work nor is it a dramatic work. For example, in the Sunil Grover case, he himself had created the character of Gutthi (evidenced by the fact that he had played Gutthi on shows prior to Comedy Nights with Kapil).  While Sunil Grover, the actor who plays Gutthi, declined to comment on the issue, fellow artistes had opined that Gutthi had become popular because of the efforts of the actor playing it and therefore, the copyright on the character should belong to the actor and not the channel.  Further, according to Sunil Grover, he had Gutthi on other TV shows prior to his stint on Comedy Nights with Kapil and Viacom18 was erroneously claiming that they had created Gutthi. [Sunil Grover had played Gutthi on an earlier show ‘Comedy Circus’.][xii]

INTERNATIONAL CONVENTIONS PROTECTING PERFORMERS’ RIGHTS

The rights given to performers are a result of many conventions and treaty. The concern of the performers has been addressed in four major international instruments: Rome Convention, 1961; TRIPS 1994, WPPT, 1996 and Beijing Treaty, 2012.

  1. International Convention for the protection of Performers, Producers, Phonograms and Broadcasting Organizations (Rome Convention 1961)- Rome Convention, 1961 granted following rights to the performers under Article 7:
  • Right to prevent the broadcasting and communication to the public of their live performances without their consent.
  • Right to prevent fixation to their live performances without their consent.
  • Right to prevent reproduction of the fixation to their live performances without their consent under the following circumstances:
  • If the original fixation was made without their consent
  • If reproduction is made for purposes different from these for which the performers gave their consent if the original fixation is made in accordance with permitted exceptions under Article 15 and the reproduction is made for purposes different from referred to in Article 15.

Article 7 further deals with relations between performers and broadcasting organizations. If the performers and broadcasting then, it shall be a matter for the domestic law of the contracting State where protection is claimed to regulate the protection against re-broadcasting, fixation for broadcasting purposes and the reproduction of such fixation for broadcasting purposes. However, domestic law shall not operate to deprive performers of their ability to control by contract, their relations with broadcasting with broadcasting organizations.

  1. Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS, 1994)- India being a signatory of TRIPS it had to bring some amendment in the Indian Copyright law, provisions were made for adopting performers’ right under Article 14 of TRIPS.

Article 14(1) state that in respect of fixation the performers shall have the right to prevent the acts of their unfixed performances, acts undertaken without their authorization such as broadcasting and communicating live performers to the public.

After the TRIPS agreement new issues arose which were due to the evolution in the digital technologies. Due to this in the post TRIPS period, WIPO, Performance & Phonograms Treaty (WPPT) 1996, this treaty replaces the Rome Convention, 1961 in respect of the Performers right.

  1. WIPO Performances and Phonograms Treaty (WPPT, 1996)- The WPPT expanded the horizon of protection for performers, producers of phonograms and broadcasters. The WPPT, 1996 there was an amendment of 2012 which introduced moral rights that states performer shall independently of his right after assignment, either wholly or partially of his right, have the right to prohibit the unauthorized broadcast and public communication of their performances.
  2. Beijing Treaty on Audio-Visual Performance, 2012- The issue of protection of performing artist in Audio-Visual treaty which includes television film and was not a part of WPPT because there was no consensus between the negotiating countries. Many discussions were held with the Committee of Experts and Standing Committee organized by WIPO. But the negotiating countries could not come to one conclusion in the Diplomatic Conference 2000, with respect to the issues related to performers’ right and that made the adoption of treaty impossible.

The Beijing Treaty on Audio –Visual performance (June 26, 2012) which includes, the traditional media and digital networks, such treaties will help in safeguarding the rights of the performers against the unauthorized use of work.

CONSTITUTIONAL BASIS FOR COPYRIGHTABILITY OF CHARACTER

It can be contended that the public notice issued by Viacom18 violates article 19(1)(g) of the Indian Constitution; because, in restraining the artist from replicating Gutthi on any other show, Viacom18 is interfering with the artist’s right to livelihood. A performer adds his own flavour to the already existing/ created character thereby creating a distinct character- so in effect the performer and the creator become one and the same- can such a claim be made under the law?

The basic aim behind copyright law is that the society should get information and the basic aim of IPR law is to incentivise the right people so that the public benefits from the creation of information. An actor perceives a character and infuses life in it and the copyright over it is demanded by the producers who are not creators of the work but distributors of the work created by actor. This is not in compliance with the theory of proper allocation of rights. The ‘sweat of the brow’ doctrine demands that the actor who has created the character should be getting copyright over his work.

CONCLUSION

Sunil Grover had himself created the character of Gutthi (evidenced by the fact that he had played Gutthi on an earlier show ‘Comedy Circus’).[xiii] This means that the producers did not play a role in the creation of the character and therefore, would most likely not be able to claim ownership over Gutthi. A performer adds his own flavour to the already existing/ created character thereby creating a distinct character- so in effect the performer and the creator become one and the same. Such a claim might also defeat the rights of producers over the character created by an actor.

On the other hand, when production houses enter into agreements with artists, all rights including IPR in the programme as well as the characters portrayed in the programme usually vest with the broadcaster. The character “Gutthi” has become a household name because of its association with the show “Comedy Nights with Kapil”. It has gained singular association in the minds of the public not merely because of the artiste but majorly because of the programme. It may not be appropriate to state that the public notice given by Viacom could possibly violate Art.19 (1)(g). Artists are paid a reasonable amount of fees for the assignment of rights/ waiver of rights taken by them. Huge amounts of money are invested by broadcasters for these shows. In the event the channel decides to merchandise the characters of the show, it would fall in the realm of trademark law. However, in the absence of contract to the contrary, it would indeed be interesting to understand the legalities of character rights in India. Personality rights of celebrities have been recognized in few cases in India.

Thus, this case is extraordinary with arguments equally strong both for and against the rights of the artist, the decisive element is the additional fact that Gutthi had already been played by Sunil Grover prior to Comedy Nights with Kapil. This means that the producers did not play a role in the creation of the character and therefore, would most likely not be able to claim ownership over Gutthi.

Edited by Hariharan Kumar

[i]<http://www.hindustantimes.com/entertainment/television/gutthi-the-larger-debate-of-copyright/article1-1155408.aspx>

[ii]<http://www.med.govt.nz/business/intellectual-property/pdf-docs-library/copyright/performers-rights-discussion-paper-pdf>

[iii] Dr.V K Ahuja, Law Relating to Intellectual Property Rights, 110, (2007).

[iv]Competition and Enterprise Branch Ministry of Economic Development, Performers’ Right A Discussion Paper,   <http://www.med.govt.nz/business/intellectual-property/pdf-docs-library/copyright/performers-rights-discussion-paper-pdf>

[v]Sanhita Ambast, Protecting Performers’Right:Does India need Law Reform, Vol13, Journal of Intellectual Property, (10 March 2014)  < http://nopr.niscair.res.in/bitstream/123456789/2432/1/JIPR%2013%286%29%20574-582.pdf >

[vi] Ibid

[vii] <http://archive.indianexpress.com/news/dont-copy-gutthi-warn-comedy-nights-with-kapil-producers/1197206/>

[viii]Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film, he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film.

[ix] AIR 1979 Bom 17

[x] AIR 1989 Ker 49

[xi] 45 F.2d 119 (2d Cir. 1930)

[xii]<http://timesofindia.indiatimes.com/entertainment/hindi/tv/I-created-Guthi-says-Sunil-Grover/articleshow/26343215.cms?>

[xiii] Ibid

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