Home >> Blog >> Lightning Mcqueen- It’s more than just a character
04 Sep 2018

Lightning Mcqueen- It’s more than just a character

In a recent case of Disney Enterprises, Inc. and Ors. vs. Pankaj Aggarwal and Ors. [CS (Comm.) 449/2016, I.A. 2107/2014 and I.A. 2110/2014], the Delhi High Court dealt with the issue of character merchandising and upheld that the use of the character “Lightning McQueen” violated the copyrights of Disney (Plaintiff) and also the rights in the character.

Background

Disney instituted the suit against the Defendants for manufacturing chocolates in the name of “Choco Car”, which contained the artistic work/character of “Lightning McQueen”. The said character “Lightning McQueen” is a race car from one of Disney’s animated movies “Cars”, which speaks in the movie and has several distinctive characteristics and elements.

Disney had obtained a copyright registration issued by the United States Copyright Office in respect of all the characters in the movie “Cars”, including the character “Lightning McQueen”. The Court granted an ex parte ad interim injunction against the Defendants restraining them from using the mark “Lightning McQueen” or any other mark deceptively similar to that of Disney.

Origin of Character Merchandising in Indian Courts

The Delhi High Court while observing that this case was a classic example of character merchandising, referred to the case of Star India Private Limited v. Leo Burnett (India) Private Limited (2003) 27 PTC 81, which was one of the primary cases that discussed character merchandising. The Bombay High Court had observed that “Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others. The fictional characters are generally drawings in which copyright subsists, e.g. cartoon and celebrities are living beings who are otherwise very famous in any particular field, e.g., film stars, sportsmen. It is necessary for character merchandising that the character to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself, independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears.”

The Delhi High Court also referred to Chorion Rights Limited v. Ishan Apparel ILR (2010) 5 Del 481, in which although the concept of character merchandising was recognized by the Court, however, the Ld. Single Judge refused the injunction since the Defendants had shown prior use and registration in India. In World Wrestling Entertainment, Inc. v. Savio Fernandes & Ors., 2015 (62) PTC 573 (Del), the Court recognized that WWE characters had gained immense popularity and such use by the defendants was blatantly dishonest and with a malafide attempt to derive unfair advantage from the plaintiff.

Observations by the Court

The Delhi High Court observed that it is important to prevent well-known characters from being misused for commercial products since the creation of fictional characters required a great amount of creativity and an innovative mind. Further, it was also well settled that characters can acquire the status of trademarks and be protected under copyright law.

Moreover, the Court also recognized that children would relate to characters such as “Lightning McQueen” to be human like and expect their own toy cars that resemble “Lightning McQueen”, or desire bags and stationery products which contain “Lightning McQueen” images printed on them, thereby such characters would have immense commercial value. Therefore, although fair use of the characters is permissible, within the legally prescribed norms, unlicensed use of the image of a known character on chocolates, which the Plaintiff also licenses for legitimate use on chocolates/wrappers, would be unlawful and illegal.

The Court therefore was of the view that the use of the image of the character on chocolates without the consent, license or permission of Disney would be unlawful and illegal. Further, such use would also constitute infringement of copyright and would thus result in passing off the defendants’ goods as those affiliated with the Plaintiffs or sponsored by the Plaintiffs. Since “Lightning McQueen” was a copyrighted character in the US, under the Copyright Act, 1957, any copyrighted work protected internationally is liable to be protected in India, in view of the international copyright order as also India being a party to the Berne Convention for the Protection of Literary and Artistic Works and the Universal Copyright Convention.

Court Verdict

Due to the reasons stated above, the Court held that the “Lightning McQueen” character being a recognized device and copyright work of the Plaintiff, the Defendants were not entitled to use the same in any manner whatsoever. Further, the said device had acquired the character of a well-known device associated with Disney. Hence, it is likely that any consumer would presume that the chocolates from the Defendants did in fact originate under a license from Disney, as Disney placed on record various such chocolate wrappers which were licensed users of Disney characters and works.

The Court therefore granted a permanent injunction in favour of Disney against the Defendants from manufacturing, selling, offering for sale, advertising, marketing chocolates or any other products bearing the image or character of the device/work “Lightning McQueen” and further a decree of damages to the tune of Rs. 5 lakhs, along with costs at Rs.1 lakh.

Conclusion

Commercialization of merchandising plays a large role in the entertainment industry, even in India, we can see a huge number of Indian comic and cartoon characters, such as Chota Bheem, Chutki, etc., that are made into toys and other consumer products with character images thereon. Such strong recognition of character merchandising in India, would not only encourage such proprietors in the entertainment industry to protect their IP vested in such characters, but also use such precedents as this case, in favour of enforcing their IP rights. It is therefore pertinent to obtain prior licenses or permissions from the proprietors of such characters to avoid any infringement of their trademarks and copyrights therein.

Related Post

Share this:
 

Leave a Reply

Your Email address will not be published. Required fields are marked *

*