Legalities 29: Infringing Cartoon Characters

Linda Joy discusses the aspects of cartoon characters that are protected by copyright and trademark law, and how they can be infringed.

Q. I have a question regarding “style” issues in a copyright “buyout” clause. I have a client who wants exclusive rights to a cartoon character I proposed to them. They now tell me they would need to “copyright” the character. The financial terms seems favorable but my concern is that I would no longer be able to draw any character in a similar style. I understand the difference between a “buyout” versus maintaining the copyright and granting the rights. What I am unclear about are the implications and ramifications regarding the actual cartooning style.

If I sign away my character can I still draw a similar character without the threat of legal action? The differences in the two characters are essentially a blob of hair, glasses and a bow tie.

A. You are wise to be concerned. Cartoon characters can be protected forms of intellectual property under both copyright and trademark law. If you give your client a “buyout” of all rights in the character, it is possible that new characters drawn in a very similar way could be seen as an infringement of the original character that your client now owns. If your work for this client also involves developing dialogue or a story line that suggests the character’s traits (such as in a comic strip or animation of the character), then those character traits may also be part of your client’s rights. It may not be sufficient to change the hair, glasses and bow tie, if other traits of your new character remain similar.

1. Copyright Infringement: “Substantial Similarity”

The standard for copyright infringement is “substantially similar” artistic expression. “Substantial similarity” is measured by whether a normal observer would recognize the second work as a copy of (or derived from) the original. For cartoon characters, courts consider not only the visual resemblance but also narrative aspects of a character, such as their personalities, behaviors, biographies, and story lines (I’ll call these narrative aspects “literary traits”.) This is because copyright infringement standards for characters were first developed in the context of literary works (such as the novels that created Tarzan and Sherlock Holmes). One court, which was considering alleged infringement of Superman, explained it this way: “The graphic rendering of a character has aspects of both the linear, literary mode and the multi-dimensional total perception. What the character thinks, feels, says, and does and the descriptions conveyed by the author through the comments of other characters in the work episodically fill out a viewer’s understanding of the character. At the same time, the visual perception of the character tends to create a dominant impression against which the similarity of a defendant’s character may be readily compared, and significant differences readily noted.”

This means that courts dealing with alleged copyright infringement in a cartoon character must make a distinction between “a substantially similar character that infringes a copyrighted character despite slight differences in appearance, behavior, or traits, and a somewhat similar though non-infringing character whose appearance, behavior, or traits, and especially their combination, significantly differ from those of a copyrighted character, even though the second character is reminiscent of the first one.”

I’m quoting so much language from the court opinion to show how difficult it is to evaluate infringement issues about visual works based on legal standards that are expressed in words. Lawyers and judges can generate a lot of semantic arguments about whether the work meets the written standard for infringement quoted above, but whether your new character will infringe the original character ultimately depends on a subjective, visual comparison.

The sliding scale between visual and literary similarities

Generally speaking, it seems that courts evaluate “substantial similarity” for cartoon characters on a sliding scale between visual and literary similarities: the more similarities in one, the less similarities you need in another. On one side of the scale, the more similar the character is visually, the more likely it will be held infringing even if its literary traits are very different from the original. For example, one court had no trouble finding that comic books showing Mickey Mouse and other Disney character engaged in sexual activities, drug abuse and other “depraved” behavior infringed Disney’s copyrights, even though such activities have not been part of the original Disney characters’ story lines. On the other side of the scale, if the character is very different in appearance, it takes more similarity in literary traits to find substantial similarity. Superman would be infringed by a superhero named “Ralph Hinkley,” who looks very different (he wears a red and black costume with a giant “H” on his chest), only if Hinkley shared much of Superman’s story, for example, if he too worked as a mild-mannered reporter, hid his identity, and used his powers to expeditiously to save his city from super villains.

If your new character has significant differences in both appearance and literary traits, you are more likely to avoid an infringement finding. For example, in the Superman case, the court ultimately found that the Ralph Hinkley character was not an infringement: “The total perception of the Hinkley character is not substantially similar to that of Superman. On the contrary, it is profoundly different. Superman looks and acts like a brave, proud hero, who has dedicated his life to combating the forces of evil. Hinkley looks and acts like a timid, reluctant hero, who accepts his missions grudgingly and prefers to get on with his normal life. Superman performs his superhuman feats with skill, verve, and dash, clearly the master of his own destiny. Hinkley is perplexed by the superhuman powers his costume confers and uses them in a bumbling, comical fashion. In the genre of superheros, Hinkley follows Superman as, in the genre of detectives, Inspector Clouseau follows Sherlock Holmes.”

A recent case determined that an ad campaign which featured actors dressed in dollar bill costumes, including one character named “Bill,” did not infringe a competitor’s ad campaign which also featured an actor in a dollar bill costume named “Bill.” The court relied on visual differences in the way the dollar bill costumes were shaped (one was a box; the other was an envelope), as well as differences in the respective characters’ literary traits (the plaintiff’s character was always shown in lazy behavior, such as sitting in front of the TV; the defendants’ characters were shown in productive activities, such as athletic training).

Its important to note that in both these cases, it didn’t matter that Hinkley reminded viewers of Superman (indeed, the TV show made specific comparisons to Superman), or that the second dollar bill characters reminded viewers of the first Dollar Bill. As the Superman court stated: “Stirring one’s memory of a copyrighted character is not the same as appearing to be substantially similar to that character, and only the latter is infringement.”

The difference between copyrightable expression and uncopyrightable ideas

The cases also talk about another important consideration for cartoon characters: the difference between copyrightable expression and uncopyrightable ideas. In the context of literary characters, courts have often stated the rule that “in order for a character to obtain copyright protection, it must be especially distinctive.” The point is to distinguish between the artistic expression comprising well-developed individual characters, such as Godzilla, James Bond and Rocky (which have all been held protectable) and the general ideas of “stock” or “basic” character types such as film noir detectives, wizards or super heroes (which courts have held to be unprotectable archetypes). Stated another way, only a well-developed character will be protected, and then only the specific individual and unique character traits of that character. In the Dollar Bill case, the general idea for a character comprised of a human actor in a dollar bill costume was an unprotected idea. The specifics of the costumes and character traits comprised the protected expressions, and they were different enough to avoid infringement.

For visual works like cartoon characters, this means that only the specific and unique way you draw your character is protected. For example, the copyright in Charlie Brown would not prevent others from drawing children with large round heads. Many cartoonists use that general round-head feature. On the other hand, Matt Groening’s copyrights in the Simpsons may prevent others from drawing the same unique square-shaped heads with no chins and triangular spikes for hair, because those features of his characters is much more unique.

2. Trademark Infringement: “Confusing Similarity”

In addition to copyright, the cartoon character you are giving your client may also be protected under trademark law. A trademark is any word, symbol, or image (or combination thereof) that functions as a brand, that is, as a designation of the source of goods or services. Characters are often used as trademarks. Think of, for example, Betty Crocker, the Quaker Oats guy, the Pillsbury Dough Boy, the Michelen Tire man, Aunt Jemima, the Keebler Elves, Tony the Tiger, the Trix rabbit, Toucan Sam, Captain Crunch, Ronald McDonald, the Energizer Bunny, Mr. Peanut, Mr. Clean, and the California Raisins. Characters that are part of the products themselves, rather than just packaging or advertising, can also be trademarks. For example, Superman and other comic book heroes are trademarks for their respective comic book companies, Mickey Mouse is a trademark for Disney, and the name and image of Hello Kitty are trademarks for my client Sanrio’s merchandise.

If your buyout client uses your cartoon character as a trademark, you need to be careful that you don’t give competing clients an infringing character. The standard for trademark infringement is somewhat different than copyright infringement. Instead of “substantial similarity,” trademark law looks at “confusing similarity” or “likelihood of confusion.” Likelihood of confusion means that consumers are likely to believe that the two trademarks designate the same source of goods or services. While the similarity of the characters is part of the evaluation, it is not the only consideration. Several other factors are part of the analysis:

Courts will always look at the relative strength of the plaintiff’s trademark to determine how wide a scope of protection it deserves. “Strength” means how unique or unusual the mark is in connection with the goods or services. For example, cows are an obvious choice for milk products, so no one dairy can have a monopoly on using a cow for a trademark. Thus, Borden’s Elsie is not infringed by Clover Stornetta Farm’s Clo. Each dairy has trademark rights in its cow, but its rights are narrowly limited to its own cow character’s appearance and traits. On the other hand, a tiger is a totally arbitrary choice for cereal. So Tony the Tiger has a broader scope of protection. Kelloggs can prevent other cereal companies from using cartoon tiger characters on cereal and other packaged foods, even if they look and act quite different from Tony.

Another factor is the similarity between the parties’ goods and services. A trademark is not a pure monopoly. Rather, trademark owners have exclusive rights only with respect to goods and services that consumers would assume come from the same source. Thus, different companies can use similar or even identical trademarks if their goods and services are not related. Tony the Tiger for foods can coexist with Exxon’s Tiger in Your Tank for gas.

Several other factors are also considered, including the relative sophistication of the parties’ customers, whether the parties’ goods and services are marketed to different consumers through different channels of trade, whether there has been any evidence of actual confusion, and whether the defendant actually copied the plaintiff’s trademark with an intent to trade on the plaintiff’s goodwill.

Note that intentional copying is only one factor to be weighed. Unlike copyrights, trademarks can be infringed innocently. That means if you create a similar character for another client, and the other trademark infringement factors weigh toward infringement, your second client could be liable for infringement even if it did not know about your buyout client’s character. And you could be liable for contributory infringement.

3. Conclusion

Under copyright infringement standards, your second character might be substantially similar to the original – the small differences in hair, glasses and a neck wear might not make it less obvious to observers that the second character was derived from the original. In that case, you would be liable for infringing the copyright that your buyout client owns in the original character.

I have solved this problem by adding to a “buyout” agreement an explicit provision which allows artists to continue to create new works in the same style, such as:

“Artist’s Right to Create Similar Works: Client recognizes and acknowledges that the Artwork is one of several artworks created by Artist embodying a similar concept and artistic style, and Client agrees that Artist shall retain all rights to create and assign or license to other clients new artworks which may be considered “substantially similar” to or “derivative works” of the Artwork, as those terms are defined under the Copyright Act.”

(Note that “Artwork” is a capitalized defined term—you should substitute the wording used in your agreement to identify the cartoon character that is the subject of the “buyout.”)

If you are expecting to create similar characters for subsequent clients, you should talk with your current buyout client about trademark implications. You may want to include contract language to protect your right to create characters in a similar style for new clients, while at the same time reassuring your buyout client that its trademark rights will not be compromised. For example, the following phrase can be added at the end of the contract provision quoted above:

“provided that Artist shall not, except with Client’s prior written consent, assign or license rights in such works to entities doing business in the same areas of trade as Client.”

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Legalities is a service mark of Linda Joy Kattwinkel. © 2006 Linda Joy Kattwinkel. All Rights Reserved. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists in San Francisco. She can be reached at 415-882-3200 or

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