Legal protection of a character as a subject matter of the copyright subject matter

The issues related to the definition of protectability of characters do not lose their relevance in the legal practice. This issue often takes a debatable form in the cases of the violation of the rights to the audiovisual works, such as, animated cartoons.

According to Paragraph 7 of Article 1259 of the Civil Code of the Russian Federation (C.C.R.F.), legal protection may be granted to the individual components of the work (parts), provided that such parts are expressed in an objective form. So, in particular, legal protection may extend to the name of the work or its character.

Neither the C.C.R.F. nor other normative acts contain the concept “character,” and they also do not contain the concept “work,” which analysis would allow distinguishing the criteria for granting legal protection to such parts of the work, which are in accordance with Paragraph 7 of Article 1259 of the C.C.R.F.

However, according to the explanations of the supreme courts, in particular, Paragraph 29 of Joint Resolution of the Plenums of the Supreme Court and the Supreme Arbitration Court of the Russian Federation No. 5/29 of March 26, 2009 “On Some Issues Arising in Connection with the Entry into Force of Part Four of the Civil Code of the Russian Federation,” a character shall be understood as “a description or image of one or another actor in the form inherent in the work: in writing, in an aural form, in the form of an image, in the form of a sound recording or a video recording, in a volume and spatial form, etc.” However, this definition does not allow distinguishing the criteria, in the presence of which the character as a part of the work obtains an independent legal protection irrespective of the work as a whole. Obviously, the objective form of expression is not enough, and not all characters can be protectable.

It can be assumed that for the purposes of granting legal protection, the presumption of the creative nature of the result of intellectual activity is also extended to such subject matters. At the same time, as it follows from Paragraph 28 of Plenum No. 5/29 of March 26, 2009, “the lack of novelty, uniqueness and (or) originality of the result of intellectual activity can not indicate to the fact that such result has been created not by creative labour, and, therefore, it shall not be the copyright subject matter.”

In the absence of the detailed statutory regulation with respect to the issue on determining the protectability of the character, it seems possible to trace the relationship between the appearance of the character (or the form of expression) and his protectability.

The characters can be fictional and real. The fictional characters should be understood to mean entirely fictional characters or the characters created on the basis of a real person image. Thus, the real characters are the real people. An ideological basis for creating the fictional characters, for example, can be literary works or films. However, in order to provide legal protection to the fictional characters as the independent works, such characters must represent an original expression of the work’s idea. Beside the requirement to the form of expression and the original (unique) nature of the character, the issue on the character protectability should also be considered from the perspective of the possibility of its independent use.

In Law of the Russian Federation of July 9, 1993 No. 5351-1 “On Copyright and Related Rights,” that was in force earlier, a part of the work could be recognized as an independent subject matter of the copyright, if the part of the work was a result of intellectual activity (the first condition) and it could be used independently (the second condition).

In the C.C.R.F., the second condition is formulated differently – in order to recognize a part of the work as an independent subject matter, the part of the work should be recognized as an independent result of the author’s creative activity.

Despite the creative nature presumption of the result of intellectual activity (Paragraph 28 of Plenum No. 5/29 of March 26, 2009), Paragraph 9 of “The Judicial Practice Review in Cases Related to the Settlement of the Disputes on the Intellectual Rights Protection,” approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015, states that “the plaintiff, who has applied to the court for protecting the rights to a character as a part of the work, must justify that such character exists as an independent result of intellectual activity.” Thus, the person who has filed a statement of claim for protecting the rights to a character must prove that the character is an independent result of the author’s intellectual activity.

During the past few years, the cases “Masha and the Bear” have been one of the key disputes on protecting the rights to a character. In the case on the recovery of compensation from an individual entrepreneur for the sale of the products depicting seven characters of the animated cartoon with the same name, the Plaintiff had referred to the provisions of Paragraphs 3 and 7 of Article 1259 of the C.C.R.F. (Case No.A50-21004/2013) to justify his claims.

 The first-instance court satisfied the Plaintiff’s claims in full, stating that the right holder was entitled to demand compensation for the use of each character. At the same time, the Intellectual Property Court stated that the violation of the exclusive right to the character being an independent part of the work should have been considered as the violation of the audiovisual work as a whole (one violation).

The position of the Supreme Court of the Russian Federation in this case, in contrast to the IPC, was reduced to the definition of the features that the character should have had in order to be recognized as an independent subject matter of the copyright. Thus, the character must be a result of the author’s independent creative work and can be used irrespective of the work. Thus, a character of the audiovisual work can be “the dynamic cartooned (puppet) images of the main characters created and recorded in an audiovisual sequence of animated cartoons, which, in contrast to other characters, have such set of features that make them original, recognizable and distinctive from other characters because of their appearance, movements, voice, facial expressions and other features intended for visual and audio (if accompanied by a sound) perception.”

If the presence of the above features is proved, compensation is subject to be recovered for each fact of the violation of the copyright to a character. In case of failure to prove, compensation is subject to be recovered for a single violation, i.e. with respect to the work as a whole.

During a new consideration of the case, the first-instance court recognized each character to be an independent subject matter and recovered compensation from the defendant for each fact of the violation, while stating that taking into account the nature of the audiovisual work and its “complex” composition, the character could be an independent subject matter, since the rights to it could be obtained separately.

In this category of cases, the rights to several results of intellectual activity can often be violated by one action, and in accordance with Paragraph 3 of Article 1252 of the C.C.R.F., the amount of compensation to be recovered shall be determined by the court for each subject matter. If there are a lot of violations with respect to the results of intellectual activities owned by one person, the total amount of compensation can be reduced by the court to a penalty below the statutory minimum, but not less than 50 percent from the minimum amounts of the compensation for all committed violations.

In Resolution of the Constitutional Court of the Russian Federation No. 28-P of December 13, 2016  “In the Case on Checking the Constitutionality of Subparagraph 1 of Article 1301, Subparagraph 1 of Article 1311 and Subparagraph 1 of Paragraph 4 of Article 1515 of the Civil Code of the Russian Federation in connection with the inquiries of the Arbitration Court of the Altai Territory,” the court concluded that the provisions on reducing the amount of compensation could be applied only to individual entrepreneurs, and when determining the amount of compensation, the courts should take into account the gravity of the actions committed, the amount of damage and other significant circumstances of the case.

The Supreme Court of the Russian Federation, in addition to the conclusions of the Constitutional Court of the Russian Federation, in definition No. 305-ES16-13233 in case No. A40-131931/2014 of April 25, 2017, established that the provisions on reducing the amount of compensation could also be applied to legal entities, while considering the issue on reducing the amount of compensation could be carried out not obligatory at the initiative of the court, but also at the statement of the defendant.

Thus, to provide independent legal protection to a character of the work, the following requirements must be observed: the character must be a result of the author’s creative work and have an objective form of expression, while the features and qualities inherent in the character must provide the possibility of using him independently irrespective of the work as a whole.