REAL LIFE PROTECTION FOR FICTIONAL CHARACTERS
(c) 2011 Mark H. Barinholtz
Recently, I was approached by a client about a character she had created and wanted to protect. Of course, that started me thinking about copyright and trademark law. Then, I read that Warren Beatty had won an important legal victory against Tribune Media Services, Inc. in a Los Angeles District Court, declaring him to be the owner of certain motion picture and television rights in the well-known character Dick Tracy. In Beatty’s case, the issue was not whether the character was protectable from an intellectual property standpoint. Rather, the parties were fighting a contract law battle over whether Beatty’s sequel rights had lapsed and reverted to Tribune Media. The court relied heavily on the parties’ licensing agreement and past conduct to determine who owned the sequel rights in the Dick Tracy character. There, basic contract law principles won out in Beatty’s favor.
Dick Tracy emerged in Chicago in 1931 as a comic strip character created by Chester Gould for the Chicago Tribune. For nearly the next half century, he produced the comic strip series from Woodstock, Illinois, just outside Chicago. Coincidentally, fictional characters Mickey Mouse and Tarzan, although made famous by Hollywood, were both created by authors born in Chicago. And, the Oscar statuettes, Hollywood’s most coveted entertainment award, are manufactured right here in Chicago, at the factory of R. S. Owens & Co. So, being a Chicago native, the coincidence of “the Chicago connection,” Beatty’s court win, and my client’s desire to protect her creation, struck me as an opportunity to write this article.
Some Trademark Law Basics
Hollywood’s Oscar is a good example of how trademark protection works in the realm of fictional characters. Although not strictly speaking a creation of literary or pictorial authorship, such as Tarzan or Dick Tracy, Oscar helps us understand some basic trademark concepts pertinent to the issue. First, trademarks protect certain creations provided they are used in commerce. They serve to identify the source of goods or services which are exploited through actual trade. Second, such protection generally exists in relation to particular categories of goods and services. In other words, marks which otherwise are similar may identify source in different categories of non-competitive use.
“Use in commerce” is the touchstone from which trademark rights arise. As an esteemed jurist once said “No trade, no trademark.” This concept translates into the basic principle that in order to obtain trademark rights the creator must use the fictional character in commerce, not just in the creator’s imagination. Although the United States Trademark Office will accept an “intent to use” application for registration of a trademark in a fictional character, that application will never ripen into a registration unless the applicant demonstrates actual use in trade, e.g., in an ongoing television series or as merchandise.
Since the rights supported by trademark law will generally only apply to the extent that use can be construed to be within a particular category of goods or services, it is important to identify the type of use being made of the mark. Various categories of goods and services are identified in the Code of Federal Regulations (37 C.F.R. Part 6) pursuant to the federal trademark statute, the Lanham Act, and may also be found in a guide on the website of the Trademark Office in the “Acceptable Identification of Goods and Services Manual.” As an example of this concept, I recently read that John Belushi’s widow was attempting to prevent certain performances by purported Blues Brothers imitators. Although the article did not reference a court action, when I searched the Trademark Office records, it became evident various registrations for the trademark “Blues Brothers” were still active, particularly for purposes of engaging in entertainment related services. However, other registrations for “Blues Brothers” for merchandise such as sunglasses, or services such as operating a restaurant – different classes of goods and services – had been abandoned by Belushi and her partner Dan Aykroyd. Although other legal principles, such as rights of publicity and unfair competition, may prevent third parties from attempting to start their own “Blues Brothers” sunglasses line, that grouping of registrations – both live and abandoned – is instructive.
When searching the term “Oscar,” the trademark categorization of goods and services becomes even more obvious. The Academy of Motion Picture Arts and Sciences (AMPAS) holds trademark registrations not only for “Oscar,” but for “Oscars,” “Oscar Night,” and “Sunday at the Oscars,” among others, including the word mark “Academy Awards” and various design marks for the look of the statuettes. But AMPAS deals in motion picture award ceremonies and doesn’t own every “Oscar.” Oscar Mayer, Oscar de la Renta, King Oscar and Oscar de la Hoya, all have staked out their piece of the “Oscar” trademark pie. And, who could forget Oscar the Grouch! As long as there’s no significant likelihood of confusion, each “Oscar” gets to occupy his, her or its own unique protectable space.
How Warren Beatty Beat Tribune Media
Warren Beatty’s legal battles over the rights to a Dick Tracy sequel stem from his original contract with the Tribune Media company, dated August 1985. That agreement allowed Beatty to control certain motion picture and television rights involving the fictional comic strip character Dick Tracy. Pursuant to that original contract, Beatty obtained a license from Tribune Media to create derivative works based upon Chester Gould’s lantern-jawed, crime-fighting character Dick Tracy. But the contract further provided that if Beatty did not exploit such rights timely, they would revert to Tribune Media.
At issue was language in the contract which, inter alia, secured to Beatty sequel rights for Dick Tracy-based motion pictures and television programs, provided he exploit such rights by producing the further works within 7 years from the last project. The first motion picture produced under the agreement, a successful Academy Award winning release by Disney affiliate Touchstone in 1990, starred Mr. Beatty as Tracy and Madonna as Breathless Mahoney. Several years later, in an effort to ensure his rights would be perpetuated, Beatty entered into a separate arrangement with Disney in connection with a one-hour television program featuring Olympic skater Nancy Kerrigan. Although the Dick Tracy element of the show amounted to introducing an on-ice Dick Tracy character briefly along with other well-known Disney characters, that avenue of exploitation, which aired in 1995, was apparently sufficient for Tribune Media to honor Beatty’s ongoing entitlement to the rights spelled out under the contract. As of 1995, Tribune Media acknowledged the Dick Tracy appearance on the Kerrigan show constituted a “television special” under the terms of the parties’ 1985 agreement.
Approximately 10 years went by, and Beatty had not produced any further Dick Tracy projects. In 2005, Tribune Media took the position that the sequel rights had therefore reverted. Beatty filed his first suit that year seeking a declaratory judgment that no reversion had occurred. He rested his claim on the fact that Tribune Media had not first served a five-year notice required under the 1985 agreement. In response, Tribune Media did issue the notice which purported to require Beatty to commence “principal photography” on the next Dick Tracy “theatrical motion picture or television series or special” within two years, or suffer the reversion. In November 2006, the parties stipulated to dismissal of the lawsuit without prejudice.
Before the two years was up, Beatty produced a television segment which involved a pseudo-interview with Beatty costumed as the Dick Tracy character. The interview segment – which apparently commenced principal photography in 2008 – was scheduled to be aired during July 2009 on Turner Classics cable network as a lead-in to Beatty’s 1990 motion picture, part of a Dick Tracy marathon. Although the segment was produced, it was never broadcast. As a result of Beatty otherwise sitting on his sequel rights to produce a feature length motion picture or television series, or what Tribune Media considered to be a more substantial television show, ie. one which would qualify as a “special,” Beatty once again received notice from Tribune Media that his rights had reverted. After negotiations for an extension of time failed, Beatty sued again in late 2008.
The litigation, which had begun in 2005, culminated in the trial court on March 24, 2011, with a decision in Beatty’s favor. Since Dick Tracy is clearly a protectable property, both from a copyright and trademark standpoint, based upon substantial visual and literary depiction and delineation as well as through continuous and extensive exploitation in uses in commerce, the issues in the case boiled down to the meaning of the phrase “television special” as it was used in the parties’ 1985 written agreement. Tribune Media contended the phrase “television special” meant something more than Beatty’s unbroadcast cable television interview segment, and, in fact, required a more lengthy, stand-alone work, e.g., one of more than 2-hours length intended to be telecast on a free commercial network. Beatty contended that the mock character interview in the 2008 cable television segment, even though it was not aired, was produced timely and was therefore sufficient to preserve Beatty’s rights. What is a bit surprising, as revealed by the court’s memorandum decision, is that significant Hollywood players such as Warren Beatty and Tribune Media did not adequately define in their contract what specifically was intended by the phrase “television special.” That lack of detail, however, ultimately worked to Beatty’s benefit.
District Judge Pregerson of the federal court in Los Angeles analyzed the course of dealing between the parties, the language of the specific contract and the contract law as it had developed and was applied within the Los Angeles production community. In ruling in Beatty’s favor on cross-motions for summary judgment, the court found that since Tribune Media had accepted the first television program – one which merely involved injecting an on-ice skating character into the Nancy Kerrigan special – as opposed to an entire Dick Tracy show, Tribune Media had essentially acknowledged such efforts would satisfy the “television special” requirement of the 1985 contract. Although the 2008 cable television interview segment was even less substantial than the 1995 Kerrigan ice skating special, and despite the fact that the court felt Beatty may have dragged his heels a bit in bringing a motion picture sequel to the big screen, the court nevertheless held that Beatty, by producing the cable television segment, had done enough to prevent a reversion of his sequel rights. The court felt Tribune Media’s effort to read a theoretical, technical definition of the phrase “television special” into the parties’ written agreement, was inappropriate from a legal standpoint, and contradictory to Tribune Media’s earlier stance in accepting the 1995 Dick Tracy on-ice appearance as being sufficient. The court ruled that the totality of these circumstances would not suffice to deprive Beatty of his rights under the 1985 contract.
A Patchwork of Protection for Fictional Characters
As noted above, various legal doctrines can come together to form the basis of protectability in fictional characters. Provided the name identity of the character has been used in commerce, e.g., a comic book series, the trademark laws can afford a significant measure of protection to prohibit some third party’s attempt to commercialize upon that name. Copyright laws, both through protection afforded to literary works and to works of visual art [both two-dimensional and three-dimensional] can also afford a measure of protection to the depiction and realization of the character as it is conjured up in the mind’s eye and/or appears to the human eye.
But the converse is also true. If the fictional character is merely the subject of the creator’s imagination, and is not put into use in commerce, the trademark laws may not kick in to support the creator from preventing others from using that particular creation. In the realm of copyrights, the Copyright Office’s manual Compendium of Copyright Office Practices II, makes clear that “the copyright law does not provide for the copyright registration of characters as such.” The Compendium goes on to say, however, that “original works of authorship describing, depicting, or embodying a character are registrable if otherwise in order.” That means two- or three-dimensional works of visual art, and literary works of sufficient detail may support otherwise protectable aspects of the fictional character’s existence.
Lessons learned from the legal wranglings between Warren Beatty and Tribune Media make clear that basic contract law principles may also be involved in protecting rights to exploit fictional characters. What the parties may agree to, or not agree to, can go a long way toward determining rights that are not otherwise specifically covered by intellectual property law doctrines.
So, the next time you hear “And the Oscar goes to …,” you’ll remember that “Oscar” is not a sardine, a wiener or a scruffy looking guy who lives in a garbage can. And, when you’re thinking about fictional characters, where they came from and how they may be legally protected, just think back to the tale of the legal battle over Dick Tracy, between Warren Beatty and Tribune Media Services, where the law of contracts carried the day for the rights to the next big-screen adventures of crime-fighting police detective Dick Tracy.
(c) 2011 Mark H. Barinholtz