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This time of year Santa Claus is everywhere. Selling cars, soft drinks, kitchen appliances, and just about anything else you can think of. Can anyone use Santa to market their goods or services? What about other fictional characters like James Bond, Superman, or Rocky Balboa? Can they be used freely? Or does their use require a license?
It is believed that Santa Claus, as a character, first appeared in print as early as 1773. But it wasn’t until the 1920s, when the Santa we are all familiar with here in the U.S. – a jolly overweight gent in a red suit with a white beard and an affinity for cookies – began appearing regularly in the U.S. in Coca Cola® ads created by the artist, Haddon Sundblom. Coca Cola’s advertisements that included a depiction of Santa helped to create the myth that Coca Cola owns the copyright to the image of Santa Claus, which it does not. What Coca Cola (and/or the artist, Haddon Sundblom) may own is the copyright to Sundblom’s particular graphic depiction of Santa, which means that you can’t use Sundblom’s visual work without consent. But nobody owns “Santa Claus,” and anyone can use the name Santa Claus, and anyone can create and use their own original visual depiction of Santa for marketing, advertising, or any other purpose.
What about fictional characters of more recent vintage? First, it is important to differentiate between graphically depicted characters, like Superman, Batman, and Wonder Woman, and fictional characters that are not graphically depicted but, rather, require the reader to conjure an image of that character as the story develops, like the literary sleuths, Sherlock Holmes and Sam Spade. Graphically depicted characters have copyright protection not because they are more deserving, but because it is much easier to make a visual comparison between a character depiction and a copy, rather than a comparison of abstractions or descriptions.
Historically, the courts have extended copyright protection to characters only as part of a larger protected work, like a book or a play, and not as creations entirely independent of that work. The 1930 case of Nichols v. Universal Pictures is instructive. In Nichols, the playwright of a theatrical work in which an Irish Catholic girl falls in love with a Jewish boy sued the producer of a later film in which, you guessed it, an Irish Catholic girl falls in love with a Jewish boy, claiming copyright in the two primary characters. But the court found that the characters depicted were prototypes, not distinctly delineated and thus not capable of copyright protection. After all, isn’t this Shakespeare’s Romeo and Juliet story in different clothes? As the aptly-named Judge Learned Hand stated, the less developed the character, the less the copyrightability of the same.
The courts have developed two tests to determine whether a fictional character is capable of copyright protection on its own, entirely independent from the work the character appears in – the “distinctly delineated” test and the “story being told” test. Under the first test, a character is “distinctly delineated” if the character possesses distinct, unique attributes that consistently apply across multiple appearances. Tarzan has been found to meet the “distinctly delineated” test and thus capable of independent copyright protection. The Ninth Circuit has developed the “story being told” test. Under that test, a character is capable of copyright protection only if it “constitutes the story being told.” In an early case on the issue, the character in question, Sam Spade of the Maltese Falcon detective novel, was held to be a “mere vehicle” for carrying the story forward and thus not capable of copyright protection. In the Sam Spade case, the court found that Sam Spade is a “mere chessman in the game of storytelling.”
The character of E.T. was found to be capable of independent copyright protection because it was both sufficiently distinct and central to the story being told. Rocky Balboa, the fighter depicted by Sylvester Stallone in the “Rocky” movies, has been determined to be both a well delineated character and central to the story being told, and thus capable of copyright protection. Likewise, that debonair, bespoke-suited, shaken-not-stirred martini swilling gentleman known as “Bond, James Bond,” is sufficiently delineated for independent copyright protection, despite the fact that the character has been played by multiple actors across numerous films since, among other reasons, these characteristics remained consistent across each of those films.
So, if you are creating a character that you hope to protect, and exploit, to the fullest extent possible, prepare a physical depiction of that character and register your copyright in that graphic work. If this is not possible, give the character many unique characteristics and make that character central to the story being told.
For further discussion of both the copyright and trademark issues relating to fictional characters, see Crown’s prior article The Case of the Character Conundrum, which can be found here.
