Substantially Similar--A Blog on IP Issues, Writing and Film

Using a Copyrighted Character in Internet Fan Fiction

by John Aquino on 05/04/12

I have written in a previous article about litigation by the estate of Margaret Mitchell and J.D. Salinger over the attempts of authors to continue the stories of Gone with the Wind (Suntrust Bank v. Houghton-Mifflin Co., 11th Cir., No. 01-12200, 5/20/01) and Catcher in the Rye (Salinger v. Colting, 2d Cir., No. 09-2878-cv, 4/30/10). In both cases, the defendants claimed that their works were parody/commentaries of the originals under the Supreme Court’s ruling in Campbell v. Acuff-Rose Music Inc, 510 U.S. 569 (1994). Having lost some preliminary rulings, the Suntrust and Salinger plaintiffs settled prior to going to court rather than litigate the issues in the suits.

In another article I discussed the issue of fair use of copyrighted material, in which the court is instructed to consider four factors: the nature of the use of the copyrighted material (is it commercial or educational in nature); the nature of the original work; the amount of the work to be used; and the effect of the proposed use on the market of the copyrighted work. In Campbell, the Supreme Court held that the fact that the use is commercial is only one of the four factors and that parody (the nature of the use) can conceivably be the most important factor in the analysis.

Fair use is also an argument that is raised concerning stories that continue the lives and adventures of copyrighted characters on the Internet.

Initially, the copyright holders for the tv series Star Trek, for example, came down like thunder on writers who used their copyrighted characters without permission, just as they would have done had someone issued a Star Trek novel on their own or made a Star Trek movie. But as stories on the Internet proliferated, the attitude of at least some copyright holders changed.

The creators of the television series Xena the Warrior Princess actually encouraged fans to write their own stories about Xena and her friend Gabrielle. The show had an implicit lesbian relationship between the two characters. Some fan authors were more than willing to make the relationship explicit. Fans have continued the adventures of the castaways on Gilligan’s Island and even Harry Potter. J.K. Rowling also encouraged fans of Harry Potter to write they own stories but later became less encouraging and even litigious as fan authors anticipated the plots of her novels and even accused her of stealing from them.

Some copyright holders have expressed their discomfort with the lives of their characters being continued without them and in ways they did not sanction. Others have indicated that these stories actually promote the original works at no cost to the copyright holder and keep the “franchise” alive. Harry Potter related sites contain over one million stories and are visited by hundreds of thousands of readers globally.

I must admit that as a writer, for my own amusement and under a pseudonym, I have contributed a few stories to fan fiction websites. My instinct was to use some of the basic characteristics of copyrighted character but to change names and do other things to dilute the “substantial similarity.” But I quickly found out that of all the writers on the web site I was the only one who was doing this. The other authors were emboldened because no one complained. But, as with anything, the complaints will come if the re-use affects the market or the reuse goes “too far.”

Aaron Schwabach of the Thomas Jefferson School of Law has written a book on the subject, Fan Fiction and Copyright: Outsider Works and Intellectual Property Protection (Ashgate, 2011). It’s a relatively short book (192 pp.) and sells for $80 (!). He argues that Internet fan fiction is arguably protected under a fair use analysis in that the use is not commercial. The stories are published for free on the Internet. Following Suntrust and Salinger, an author could even argue that the new work is a parody.

But the nature of the reuse is just one of four factors a court considers. A Rowling could argue that the other three factors are more important and that the use is indeed affecting the marketability of the original works.

I’m always amused by youtube posting and even Internet fan stories using copyrighted characters that say “Copyright infringement is not intended.” Copyright infringement is essentially a strict liability cause of action. The mental state of the alleged infringer does not matter. Under the Copyright Act, the threshold question is whether a copyright defendant has made copies, distributed copies, prepared derivative works, publicly performed, or publicly displayed the work at issue. “Innocent infringement” is a defense used to mitigate damages and is not recognized as a defense for the infringement itself. If someone says, “Copyright infringement is not intended” he or she is acknowledging the work is protected by copyright.

So the issue of whether fan fiction on the Internet infringes a copyright really does come down to a fair use analysis, which is decided by a court.

A related issue is the copyrightabiliy of characters in the first place. This has always been difficult because copyright protects expression and not ideas. In cases such as Nichols v. Paramount, the principle was set that while exact copying is not needed for there to be infringement the copyrightability of the characters hinges on how far they have been fleshed out for the audience. "[T]he less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly," Judge Learned Hand wrote in Nichols.

In November 2007, Rowling threatened legal action against G. Norman Lippert for allegedly violating her intellectual property rights by producing and publishing the online novel, James Potter and the Hall of Elders. The novel is set 18 years after the end of the last official installment in the series and describes the adventures of Harry Potter's son, James Potter, during his first year at Hogwarts School of Witchcraft and Wizardry. Rowlins dropped her suit when she was shown a copy of the novel. But if litigated, the issue would have been whether the offspring of a fictional character, who was never even depicted in the original work, can claim copyright protection.

Say an author takes the character of Yeoman #2 in Star Trek episode. The yeoman has a very, very small part. Say an author fleshes her character out and gives her a back story and then gives her a whole new story about what happened after the incident portrayed in the episode. Is the character protected by copyright? Is the author infringing that copyright? She was just Yeoman #2 in the episode, not very well delineated. Was she fleshed out enough to be protected? Of course, if the author brings into the story other Star Trek characters and the original plot of the episode and Star Trek trademarks then the matter becomes even more complicated.

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Question and Answer #3: Using Copyrighted Material When the Owner Cannot Be Found

by John Aquino on 04/30/12

Question: Over 20 years ago, I wrote a number of articles for a newspaper that has long since gone out of business. I was on staff, so I guess they were works done for hire and the publisher owns the copyright. I looked at them recently and said, “Gee, These are pretty good. They could make a book.” Knowing that I would need to get permission, I checked around to see if I could find out whom I might contact, and I couldn’t find anyone. Having made the effort, can I use them?

Answer: Well, you are not alone in this. I have a few articles published myself in defunct publications that I’d like to reuse.

I would first suggest that you try a couple more times to find someone connected with the publisher. If they went into bankruptcy, the bankruptcy records may give you a contact.

This may seem like a lot of work. But the answer to your question is, if you use the work without permission and the copyright owner and the copyright owner suddenly appears, the owner can claim you have infringed the copyright. The defense of “innocent infringement” applies to someone who does not know the work is copyrighted and even this is not a defense against infringement but is something the court will take into consideration when awarding damages. And what you describe is not innocent infringement because you have every reason to believe the work is protected by copyright.

For the record, Congress has had before it legislation concerning "orphan works"--works that are protected by copyright but their owners can't be located or are dead or are companies that are out of business. But Congress hasn’t done anything on it for the past six years. If they ever get going on it, it would affect your situation. So you could wait for Congress to act, but its track record suggests it could be a long wait.

So there are at last three possible options: don’t use the work—and this is often the guidance given scholars by their universities when they cannot get permission to use copyrighted works, revise the articles extensively so that they are not the same works that were published—which you may find yourself doing anyway unless you are one of those rare people whose writing has grown worse with experience, or look at a fair use argument. (You could conceivably do both the second and third.)

The thing about fair use is that Congress dealt with the issue of fair use by giving the courts four factors to consider, which means that there is no real determination about fair use unless you are sued. So, in deciding whether or not to use portions of or all of a copyrighted work on a fair use argument, you are really in a position of trying to outthink a judge.

When a defendant in a copyright litigation claims fair use, the court is asked to consider four factors:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.

2. The nature of the copyrighted work.

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

4. The effect of the use upon the potential market for, or value of, the copyrighted work

Usually, when the question of whether one can use a copyrighted work under fair use involves publishing a book--which is a commercial use as opposed to a nonprofit or educational use (even if the book's publication will be limited or it’s not expected to make money)--then the person wanting to use the work fails #1, and that's usually the big one. If it's an educational use, you're three-quarters of the way to fair use. And so you most likely fail criteria #1.

You also fail #3--you want to use 100% of the work—a whole article as opposed to a small portion. If it were a Picasso painting, you'd want to use the whole thing and not just one of the subject's five eyes.

But you’d probably pass #2 and 4. The nature of the copyrighted work is old newspaper articles that you’d have to scour libraries to find and maybe couldn’t even find them there, and they therefore have no conceivable market value that could be negatively affected.

So it's a close call. It would be up to a judge to decide. Courts have ruled that some of the four factors could be more important than others depending on the circumstances, so it is possible that a court could find in favor of fair use even though the use is commercial. At least you would have a viable legal argument if you were sued. It may not be a winning argument, but it’s a viable argument, I believe.

When approached by the publisher’s attorney, you could give the fair use argument and then they would have to decide whether or not they want to take you to court, knowing that there is a chance they would lose. They could then settle with you for the license fee they would have charged you had the negotiation situation been clearer. On the other hand, they could just sue you and you'd have to go to court and pay attorneys fees. And you could lose.

It really comes down to a risk/benefit analysis. Your benefit is you want to use the articles. If you do not use them, you have no risk. If you use them, no copyright owner may surface, but if the owner does assert a claim you will be subject to an infringement suit. Your backup is you have at least one defense--fair use and, if you have substantially revised the articles, that the collective work is substantially different from the one published.

This is just my opinion based on what you’ve told me. We can talk about it more. But the decision on go or no-go has to be yours.

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Old, Unpublished Works—Who’s Got the Copyright?

by John Aquino on 04/24/12

Ever fantasize about finding an unpublished manuscript by a favorite writer? Have you ever gone through your grandmother’s attic hoping, just hoping, to find a diary by your grandmother’s grandmother that could publish and that would become a best seller?

There’s a story about how Ernest Hemingway and his wife were traveling in France in the 1920s and the suitcase containing all of the short stories he had written up to that time was lost. And unpublished stories by Edgar Allan Poe have sometimes been found in attics up and down the east coast.

If you found the Hemingway suitcase, would you be able to publish the stories? What about the Poe story?

Well, if you found the Hemingway suitcase, you would most likely own the suitcase and the manuscript but not the words on the manuscript. If your ownership in the manuscript was established—as a lost object that you found—you could sell it to a collector. But the Hemingway estate would own the copyright in the work itself and the sole ability to publish it and license or sell the rights.

As for the Poe story—or your great-great grandmother’s diary, for that matter--you would again own the manuscript, but the works themselves would have fallen into the public domain. If you kept them secret, you could be the first one to publish them, but, once published, anyone else could re-publish them.

Why? Before 1976, unpublished works were entitled to perpetual copyright protection. But, when Congress revised the U.S. Copyright Act in 1976, works originally created before January 1, 1978 but not published or registered by that date were automatically brought under the act and given a set period of protection. For works created by authors who died in 1932 or earlier, the works entered the public domain on January 1, 2003. Copyright protection could have been extended to Dec. 31, 2047 by publishing the work in question on or before Dec. 31, 2002. If the author died in 1933 or later, or is still living, the term of copyright in an unpublished work will subsist through the last day of the 70th calendar year after the author's death, whenever that may occur. Congress gave authors’ heirs almost a quarter-century to get their affairs in order. And that time has passed.

So, under current copyright law, a newly discovered manuscript by Ernest Hemingway, who died in 1961, would be protected until 2031—70 years after his death.

What about the old diary? Suppose you found your great-great-grandmother’s diary in the attic. Say it was written between 1807 and 1842. She died in 1866. According to the statute, even though the work was over 150 years old, the diary’s copyright, was not set to expire until Dec. 31, 2002. If you had published the work before Dec. 31, 2002, then its copyright would last until Dec. 31, 2047. If you found the diary today, your great-great grandmother having died in 1866, then the work would be in the public domain.

John Clare’s Copyrights. There is an interesting side story about the old copyright law protecting unpublished works in perpetuity. The British poet John Clare died in 1864 after spending 23 years in an asylum. Only a small fraction of his over 3,000 poems were not published in his lifetime. The publishing company Whitaker reportedly purchased the copyrights to Clare’s works after his death from his widow Patty but his work remained largely unpublished. The agreement between Joseph Whitaker and Clare’s widow was discovered in Whitaker’s offices in 1932 but was destroyed by German bombs in 1940. Nevertheless, in 1965 a University of Massachusetts history professor named Eric Robinson purchased from Whitaker’s “all rights whatsoever” the publishing company possessed in the works of John Clare.

Robinson then claimed that he owned the copyrights of Clare’s unpublished works and that no one else could publish them. Robinson argued that the law governing U.S. and UK copyrights in 1965 provided that unpublished rights existed in perpetuity and that the copyrights he purchased in 1965 remained his until he chose to publish them. After he published them, he claimed, they were protected for 25 years. When other scholars attempted to publish Clare’s works, he threatened litigation.

Many questioned Robinson on the law and the facts. It has been argued that when Joseph Whitaker died he relinquished ownership in Clare’s material to the Petersborough Museum and Northampton Library, however “ownership” was to be understood. And, as noted, the agreement between Whitaker and Patty Clare no longer exists, and so the adequacy of the transfer of ownership of the copyrights cannot be determined.

Robinson published his own editions of some of Clare’s work in the 1980s and 1990s. Scholars complained about his “stranglehold” on Clare’s work in letters to the Times Literary Supplement.

But the Dec. 31, 2002 U.S. copyright deadline came and went, suggesting that unpublished Clare poems were arguably in the public domain; publishers were less afraid of Robinson’s litigation threats; and, gradually, other editions of Clare’s works began to appear, as well as biographies and even a play about Clare.

Kentucky Fried Chicken. Touching again on the difference between owning a manuscript and the copyright of a work, there’s an interesting story about a trade secret case. Of the four types of intellectual property—copyrights, trademarks, patents, and trade secrets—copyrights and patents provide protection for a set number of years and trademarks, trademarks are protected as long as they are in use, and trade secrets are protected forever or at least as long as they are a secret, which requires great diligence on the part of the owner of the trade secret.

Colonel Sanders founded a chain of eateries named Kentucky Fried Chicken that had a secret recipe containing 11 herbs and spices. This recipe reportedly exists as a handwritten note torn from a notebook. It is very well protected.

A few years ago, a young couple bought a house once owned by Sanders and found a notebook that had notes on a recipe that included 11 ingredients. They contacted Kentucky Fried Chicken to see if the notebook was valuable, and the company came down on them with SWAT teams of lawyers demanding the notebook. The couple, fearing that they would never see it again or hear back from the company, refused, and the company filed for injunctive relief. The court asked the couple to give it the notebook, and the court showed it to Kentucky Fried Chicken representatives under the court’s supervision.

Relieved, the representatives told the court that the notebook did not contain the secret recipe for Kentucky Fried Chicken. It looked like Sanders was experimenting on a recipe for stuffing, they said.

The notebook was returned to the couple—for what it was worth.

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Question and Answer #2: New Lyrics for Copyrighted Songs

by John Aquino on 04/19/12

Q: I’ve written new lyrics for popular, copyrighted songs that I’d like to publish in a book. The book is primarily intended for use in classes and recreational events but could have other markets too. It will be published by a commercial book publisher. What I plan to do is to write next to each song , “Sing to the tune of xxx.” I’m not copying the copyrighted music or lyrics, so that’s all right, isn’t it?

A: Even though the book is primarily designed for some educational purposes, that doesn’t automatically make any use permissible. And the fact that the new lyrics will be published in a book that will be sold makes the use arguably commercial.

If the composer or lyricist of a copyrighted song came to me complaining about the practice of writing, “Sing to the tune of xxx” and printing new lyrics to their songs, I would say the following. They may or may not be winning arguments, but they are reasonable ones.

First, the use might be construed as a direct copyright infringement under the following argument. One of the rights of copyright holders is the right to make derivative works of the original works—plays and films from novels, etc. A derivative work from a copyrighted song would be new lyrics to the song. Under the 1976 Copyright Act, the composer and lyricist are joint copyright holders of the entire song. Therefore, either or both of them could arguably sue for copyright violation because the book author created a derivative work without permission by writing new lyrics to sing to the copyrighted music.

Second, if the publication of the new lyrics led to public performances of the music without permission—because the reader of the book was instructed to sing the lyrics to the composer’s tune--the composer and lyricist, jointly or individually, could sue each performer for direct copyright infringement—a difficult task to find them and bring them to court--and the publisher and author—easier-- for contributory infringement. The argument would be that the author and publisher were setting up the situation for infringement. They instructed the reader to sing the song to the copyrighted tune. They could conceivably mitigate against this by including in the instructions—“You must receive permission of the copyright holder to publicly perform the music for this song.” Even if this is done to protect against unauthorized performance of the song, the direct infringement argument might still be valid. Consequently, it would be wise to contact some of the copyright holders and inform them exactly of what you are doing to see what reaction you get.

Some of these things are like buying insurance. You can gamble and do without it. But you can’t buy it when you’re dead. And you can’t undo what you’ve published when someone files a complaint for infringement.

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Alan Cranston, Proud Copyright Infringer

by John Aquino on 04/12/12

It’s an interesting idea to sing the praises of a copyright infringer, who openly infringed a copyright to fight what he rightly regarded as evil, and who, in the process, may have may have demonstrated the strength of the U.S. copyright law.

Alan Cranston, who died Jan. 1, 2000 at the age of 86 and who served in the U.S. Senate from 1968 to 1992 (D-Calif.), earned a footnote in intellectual property law history for having violated Adolph Hitler’s copyright. Cranston later included in his resume that he had been successfully sued by Hitler, and this assertion was picked up in many of his obituaries. In his political campaigns, Cranston acquired a great deal of Jewish-American support from this claim that he was a proud violator of Hitler’s copyright in the name of truth. The actual facts are a little more complicated, but the gist of it is true.

Returning to America from Europe, where he had witnessed the growth of Nazi Germany, Cranston saw copies of Hitler’s Mein Kampf on sale in Macy’s in New York City and, having read the original German version, realized that this English translation was heavily edited, leaving out sections that showed Hitler’s plan for world domination. He and his friend Amster Spiro, an editor for Hearst, formed Noram Publishing Co., and Cranston dictated an abridged version of Mein Kampf, which included many of the section omitted from the English translation, in about eight days. “We have slashed Hitler’s 270,000 words to 70,000,” Cranston and Spiro declared in their forward, “but nothing important is omitted!” The 32-page tabloid edition, copyrighted in 1939, was a “Reader’s Digest-like version [showing] the worst of Hitler,” Cranston said later. The book, published in a tabloid format, contained illustrations and notes showing Hitler’s “propaganda and distortions.” The book sold 500,000 copies in 10 days.

Cranston and Spiro also pledged in their introduction that “Not 1 cent of royalty [will go] to Hitler,” and, instead, that all profits would be used to help refugees from Hitler’s Reich. Hitler’s authorized American publisher was selling its edition at $3 a copy, compared to Noram’s 10 cent edition.

Cranston claimed later that, “The people representing Hitler--in effect, because they had his copyright--sued us, because we were obviously undercutting their market” and that Houghton Mifflin also sued another American publisher of Mein Kampf, Stackpole Sons.

In fact, Houghton Mifflin—and not Hitler or his representatives—sued both Noram and Stackpole—Houghton Mifflin v. Noram Publishing Inc., 28 F. Supp. 676 (S.D.N.Y., 1939) and Houghton Mifflin v. Stackpole and Sons, 104 F. 2d 206 (preliminary injunction issued, 2d Cir., 1939), cert. denied 308 U.S. 597 (1939), 113 F.2d 627 (2d Cir., 1940)--although it is possible Hitler’s German publishers may have threatened legal actions as well.

Both Stackpole and Noram claimed in court that Hitler was “stateless” when he wrote Mein Kampf, and, under U.S. copyright law, it was in the public domain and Hitler had no rights to the book.

But the courts rejected this argument. In July 1939, the U.S. District Court for the Southern District of New York took the unusual step of granting Houghton Mifflin an injunction against Noram, forcing the company to destroy the remaining copies—about 500,000, according to Cranston. The judge wrote, “It appears to me that the defendant, Noram Publishing Company, knowing or at least suspecting the claimed copyright of the plaintiff to the book “Mein Kampf,” attempted to take advantage of the public interest in Hitler, and devised this form of pamphlet or edition, to profit by the desire of the public to read about Hitler.”

The same district court denied Houghton Mifflin’s preliminary injunction motion against Stackpole, but it was granted in June 1939 by the U.S. Court of Appeals for the Second Circuit; the Second Circuit awarded Houghton Mifflin summary judgment against Stackpole for copyright infringement in July 1940

And so, Cranston’s boast that he had been sued by Hitler was not exactly true, but his implicit claim that he risked suit to get the truth out has more merit.

The moral is the history proves that, just as American Nazis, even though what they proclaimed and stood for was heinous, received First Amendment protection when they marched in Stokie, even Hitler’s works, vile though their contents were, received protection under U.S. copyright laws.

But Cranston infringed the copyright and was proud.

I wonder if there is a novel or a play or a movie idea in this--from the perspective of a Cranston-like character, or from the perspective of a Houghton Mifflin type publisher, or both.

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