Edgar Rice Burroughs, Inc., a company owned by Burroughs’ family, is suing distributor Dynamic Forces and publisher Dynamic Entertainment for trademark infringement and unfair competition. Comic-book series “Lord of the Jungle” and “Warlord of Mars” would infringe on Burroughs’ characters, namely Tarzan of the Apes and John Carter of Mars. Indeed, the intellectual property protection of fictional characters may be fought either on trademark or copyright grounds. It is interesting that ERB, Inc. chose to focus its efforts on trademark infringement in light of its case.

The protection of a character as separate from the protection of the surrounding work of fiction could sound surprising at first. If one were to write a story about a teenage magician with jet-black hair and a lightning-shaped scar on his forehead, one would likely be sued over copyright infringement of J.K. Rowling’s Harry Potter books, more so than over the trademark infringement of its main character. However, one could also be sued for trademark infringement of the character of Harry Potter. Both ways, intellectual property protection of fictional characters may indeed turn these pieces of imagination into very lucrative creations. Although ERB, Inc. is arguing that the company still owns copyrights over Tarzan and John Carter of Mars in certain countries and that the distribution of Dynamic comic-books in those countries would result in copyright infringement under foreign laws, ERB, Inc. mainly bases its claim of infringement on Tarzan’s and John Carter of Mars’ trademarks. The strategy surely has to do with the difficulty of proving copyright infringement of a fictional character. It is by nature so ambiguous to define most characteristics of a fictional character, besides physical or general descriptions (e.g., jet black hair, light green eyes, lightning-shape scare on forehead). However, it does not appear that showing trademark infringement would be an easier way in this case.

Courts have long struggled over the copyright protection of fictional characters. Fictional characters are oftentimes only the personalization of general ideas or traits. However, copyright law only protects expressions of ideas, not the ideas themselves, and can hardly be a ground for protection where the work is only representative of general character traits. As Judge Learned Hand put it: “[t]he less developed characters, the less they can be copyrighted; this is the penalty an author must bear for marking them too indistinctly.” Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). Through this distinct delineation standard, characters could be protected under copyright law but the general ideas embodied in those characters would be left to the public domain. Determining copyrightability over the specificity of a character may nonetheless not offer a consistent test. The more general a fictional character is, the more popular this character is likely to be. Popular characters are adaptable characters; they are characters which are easy for most to relate to. Heathcliff of Emily Brontë’s Wuthering Heights or complex Fitzwilliam Darcy in Austen’ Pride and Prejudice may respectively be tortured (Heathcliff wins here) and complex. Yet they both embody general ideas, including the struggle of adapting to different social circles of one’s own. An idea to which a consequential number of people can transfer and adapt to their own experiences. Those character traits would likely not be copyrightable.

ERB, Inc. still could have had a claim under copyright law (provided that Burroughs’ works had not fallen into the public domain) under a “story being told” test. Under this test,“[i]t is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.” Warner Bros Pictures, Inc. v. Columbia Broad. Sys. Inc., 216 F.2d 945, 950 (9th Cir. 1954). In both Tarzan of the Apes and John Carter of Mars, the two characters really constitute the story being told: the story only exists and solely revolves around these two characters. This test, however, has been altered, avoided, rejected, or used only in conjunction with the distinct delineation test by many courts. Still, ERB, Inc. argues that Dynamic’s comic book series does not respect Burroughs’ original works and hurts ERB, Inc.’s image–the family argues that some comic covers even showed pornographic images with over-feminine features. Provided that these remarks could ground any claim of actual disrespect of Burroughs’ work, ERB, Inc. could have argued that Dynamic’s series infringes on Burroughs’ moral rights, which are permanent, and indeed cover any attack to the work’s integrity. No matter, then, that the works would have fallen in the public domain, ERB, Inc. would still be able to argue moral rights infringement. The likelihood of success of such a claim, however, is uncertain in the United States.

But trademark protection over Burroughs’ work is not much more likely to succeed. Unlike copyrights, trademarks can persist as long as the mark is identified as a source for specific goods or services. Under such a claim, however, a party must show that its mark is distinctive, protectable, and that the litigious work indeed infringes on the mark. As to distinctiveness, all courts have held so far that fictional characters only have distinctiveness when “they have undergone a reasonable degree of circulation and established some level of public recognition.” Kathryn M. Foley, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 Conn. L. Rev 3, p. 941 (2009). As Foley points out, however, “[t]he proponent of a trademark must satisfy the heavy evidentiary burden of acquired distinctiveness through widespread use and recognition.” Id. The mark must also indicate the origin of the goods or services. A recent Supreme Court case has shed light on this requirement, holding that the character must serve as an indicator of the source of the mark, which cannot be deduced only from wide public recognition or popularity. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (U.S. 2003). Trademark protection, therefore, can only be granted to a fictional character such as Tarzan of the Apes or John Carter of Mars where Tarzan and John Carter of Mars identify the origin of the goods or services they sponsor. That the name “Tarzan” should be a lucrative source of income for ERB, Inc., there is not much doubt. Fictional characters’ names may be protectable elements under trademark law indeed. However, it is yet unclear (to me, at least) whether Tarzan is the identifier of any source of specific goods or services provided by ERB, Inc. The mere association between the trademark image and the character itself is unlikely to succeed.