In my previous article on character merchandising, I mentioned that all of us have at some point been guilty of buying merchandise of our favorite characters but how many times do we stop to think if it’s actually being licensed from the creators of the work or whether they are just rip offs? Not very often. The point here is that we love the character and are so thankful that the creators came up with it, but when it comes to their revenue, we don’t really give it too much thought because it doesn’t concern us. Well, this is one of the biggest issues faced by the most of the creators of fictional and cartoon characters and people purchasing such goods and more importantly, people selling these goods need to give it a thought. This is when licensing comes into the picture.

How to obtain a license?

Section 30 of the Copyright Act deals with licenses and states that the owner of a copyright may grant a license in writing either himself or through his agent. As of now, we do not have a copyright society or a centralized body that issues licenses in respect of copyrighted works for the purpose of character merchandising or otherwise, so licenses can be obtained directly from the copyright owner.

So if you’re a manufacturer or trader intending to manufacture or sell products that have fictional or cartoon characters, the first step is to approach the person who owns the copyright. A copyright in the work doesn’t mean that the owner has registered the work. A copyright comes into existence the moment it is created, so registration is not a mandatory requirement. In the internet age, an internet search would direct you to the person who owns the copyright, so you can approach the person directly or through any of their agents and obtain a license.

Is it necessary?

The answer to that question is YES. While dealing with anything that has legal consequences, it’s better to be safe than sorry. Companies like Walt Disney and Warner Bros account for a large share of the billion dollar licensed products industry and are constantly on the lookout for infringers and rightly so. Infact, a number of companies have become proactive in protecting their intellectual property rights owing to the rapid growth of the counterfeit products market. Therefore, it would be advisable to obtain a license before proceeding to sell products that are unauthorized.

Are licenses necessary for fan art?

So if fans illustrate their favorite character in the form a sketch, painting or story, is it their own creation because they have made substantial additions to the existing work and used their creativity to give it a personal touch? I’m sure that’s a debatable issue. In the United States, the issue of fan art and fair use has been discussed, however, there is no straight jacket formula to determine fair use. The Courts in some cases have permitted the defence of fair use based on the originality in the work, profits derived and other relevant factors. There is no judicial precedent on this point of law in India. Section 52 of the Copyright Act dealing with fair use doesn’t provide for protection of fan art within the scope of the copyright law.

Therefore, it would be necessary for fans to obtain licenses to create such work, more so when they are selling merchandise with their artistic work on it. Given that the trend of fan art merchandising is catching up in India, it would be a good time for all the artists to be on the safer side and make the most of their work than to caught in the middle of a law suit.

So if you’re an artist creating your own work, you should consider protecting it under the trademark or copyright laws and if you’re an artist creating fan art for the purpose of sale as merchandise or otherwise, it is advisable to obtain a license before doing so.

This article has been authored by Nikita, an IP Law practitioner.