Protecting Fictional Characters: Could You Legally Write A New Harry Potter Novel?

November 8, 2012

By Oliver Herzfeld, Forbes IP Counsel

Sony Computer Entertainment has featured the fictional character “Kevin Butler” portraying a Sony employee in a series of advertisements for its PlayStation 3 game system. Sony recently filed a complaint against Bridgestone Tires over an advertisement featuring the same actor, allegedly portraying Kevin Butler as a Bridgestone employee, using and speaking excitedly about the competing Nintendo Wii game system. The case provides a good opportunity to review the laws relating to the protection of fictional characters which implicate unauthorized sequels and adaptations of existing works, the popular and widespread subculture of fan fiction, and many other applications.

Copyright Protection

Copyright law protects the expression of ideas but not the ideas themselves. This axiomatic principle is easy to state but can be difficult to apply in the context of fictional characters because a properly copyrighted work does not mean every element of the work is protected. In particular, fictional characters within a work are presumed to be simply ideas unless they are sufficiently developed to legally constitute elements of expression. Courts have established the following two tests to determine whether fictional characters merit copyright protection:

1. the “story being told” test, which requires the character to actually constitute the story being told and not simply be a vehicle for telling the story; and 2. the “especially distinctive” test, which requires the character to be well developed and delineated with consistent, widely identifiable traits as opposed to stock characters (e.g., a hard-boiled detective or mad scientist) or characters that are mandated by the relevant genre of a work (e.g., the femme fatale and evil genius in a spy film).

Copyright protection provides the owner exclusive rights to use, copy and adapt the fictional characters, as well as other related rights, subject only to copyright defenses such as fair use or expiration. Unfortunately, the foregoing two tests are sometimes so difficult to apply in real life that many lower courts analyze the question of protectability under both tests as a means of minimizing the likelihood of reversal on appeal. And some courts have been suspected of deciding the desired outcome first and then applying one or both of the tests after the fact to justify a forgone conclusion.

Trademark Protection

Trademark law may protect the names, physical appearance, catchphrases, and certain other elements of fictional characters, provided that they are used on goods or services, identify and distinguish the source of the goods or services from those of others, and are either inherently distinctive or have acquired secondary meaning (i.e., meaning in the consuming public’s mind as a source identifier for the relevant goods or services). For example, if you purchase an authorized Darth Vadercostume or toy lightsaber, you know the source, directly or via license, is Lucasfilm (soon Disney). Trademark protection of a fictional character provides the owner with the exclusive right to use the character in connection with goods and services, as well as the right to prevent the unauthorized use of the character in connection with goods and services of infringing third parties.

For fictional characters in the public domain (e.g., Count Dracula and Snow White), trademark protection is not available. Other fictional characters may not be immediately protectable under trademark law since they are not inherently distinctive and have not yet developed secondary meaning. And courts have sometimes failed to properly apply the legal requirements for trademarks, choosing to base their decisions on the outstanding celebrity and unique recognition of fictional characters, or lack thereof, instead of focusing on their inherent distinctiveness and ability to act as a single source identifier for the applicable goods or services.

Unfair Competition

Unfair competition is an independent legal theory that provides a cause of action and remedy for:

1. common law infringement of trademarks; 2. misappropriation (i.e., copying or appropriating a creation that is not protected by trademark or copyright law); 3. passing off (i.e., misrepresenting the source or origin of goods or services to deceive consumers); and 4. trademark dilution (i.e., using a trademark without authorization on products that do not compete with, and have little connection with, those of the trademark owner).

Unfair competition is prohibited under common law, state statutes, and the U.S. Trademark Act. Courts have applied the various facets of unfair competition law to protect fictional characters and, similar to trademark law, prevent the wrongful use of fictional characters in connection with goods and services of third parties.

What Should Owners Do?

So, no, you cannot legally write a new Harry Potter novel. But you could more generally write a story about a young person who discovers he has magical powers and uses them to battle, foil the plans of, and ultimately vanquish, a supervillan with aspirations of world domination. Based on the foregoing, owners should seek to maximize their legal protection by (i) fully delineating and completely defining the physical, emotional and psychological characteristics and personalities of their fictional characters to the point where you can wind them up, place them in new situations, and have them behave and react in ways that are immediately recognizable, distinctive and predictable, (ii) federally registering copyrights for their works and trademarks for the names, catchphrases, and other protectable elements of their fictional characters, and (iii) strategically using their fictional characters as a single source identifier on goods or services, either directly or through properly negotiated and drafted license agreements.