Friday, April 8, 2011

Copyright in Fictional Characters: Can I Have Don Draper Make a Cameo Appearance in My Novel?

I'm throwing a dinner party in my novel. My guest list includes Don Draper, James Bond, Jack Ryan, Scarlett O'Hara, Dolores Haze a/k/a Lolita, and Elizabeth Bennett.  I don't expect my guests to say or do anything at my fictional party.  The question is:  Can they simply show up at the dinner table without my infringing the copyrights of Matthew Weiner, Ian Fleming, Tom Clancy, Margaret Mitchell, Vladimir Nabokov, and Jane Austen or their heirs?

Before trying to answer that (somewhat surprisingly complicated) question, let me introduce you to one of my guests.  Jack Ryan is known to millions of readers as a tough former Second Lieutenant in the Marines, a onetime CIA agent, and ultimately President of the United States. He appeared as a character in Tom Clancy's first novel, The Hunt for Red October, which was published in hardcover in October 1984 by the U.S. Naval Institute Press, a small publisher that was then primarily issuing works on naval history.  Ryan later reappeared in many other Clancy novels.  But did you know that Jack Ryan was the subject of allegedly infringing use by none other than . . . Tom Clancy?

Clancy was a true unknown when he wrote Hunt for Red October -- an insurance agent who daydreamed of becoming a novelist.  The New York Times tells the back story here.  Prior to Red October, Clancy had published no fiction, but he had published a non-fiction article on the MX missile in the Naval Institute's Proceedings magazine.  So when he completed Red October he offered the novel to the Naval Institute; its headquarters were, after all, just a few miles away from his home near Annapolis.

The Naval Institute had published a few previous novels on naval themes and offered Clancy its standard contract, which included an assignment of the copyright to the publisher -- not uncommon for academic books at the time, but rare for novels.  Clancy happily signed the agreement and received a $5,000 advance.  Red October surprised both author and publisher when it turned out to be a colossal bestseller, selling many millions of copies (after Ronald Reagan praised it as "the perfect yarn").

For his second book, Clancy jumped ship and signed with a big New York publisher.  But the earlier copyright assignment to the Naval Institute almost torpedoed the new book.  Why?  Because the copyright assignment arguably carried with it the rights to the characters in Red October.  The Naval Institute commenced an arbitration claiming that, as the Times explained, the Naval Institute's copyright ownership in Red October gave it "a continuing interest in the Jack Ryan character, and it should therefore receive a percentage of the profits from Patriot Games and The Cardinal of the Kremlin and from any films or miniseries made of them."

The Red October arbitration was settled on undisclosed terms.  But the point is that fully drawn literary characters are generally subject to copyright protection, and the copyright owner will often be able to prevent others from using the character in other works without permission.  But the legal principles are by no means simple.

There are two separate but related questions here.  First:  Is a particular character protected by copyright?  Second:  Is the particular use made by someone other than the copyright owner infringing?

Here is what famed judge Learned Hand said 80 years ago in Nichols v. Universal Pictures Corp. about distinguishing between literary characters that are and are not protected by copyright:
If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s ‘ideas’ in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.
Judge Hand's analysis still holds true today.  As copyright guru Paul Goldstein puts it:
Fully realized characters in literature are little different from fully defined personalities in daily life, and it is no surprise that the test of protectibility that courts apply to literary characters is closely akin to the criterion that individuals apply in daily life to determine whether they in truth know someone. A literary character can be said to have a distinctive personality, and thus to be protectible, when it has been delineated to the point at which its behavior is relatively predictable so that, when placed in a new plot situation, it will react in ways that are at once distinctive and unsurprising.
Every reader of Catcher in the Rye comes away with the feeling that she knows Holden Caulfield, and so it was unsurprising to many copyright lawyers when, a little over a year ago, a court enjoined publication an unauthorized sequel by Fredrick Colting that told the story of a 76-year-old Holden Caulfield.  Here is the appeals court decision in that procedurally complicated case, which ended in a settlement prohibiting further publication in the United States and Canada.  Holden Caulfield is, in Goldstein's phrase, "fully delineated," and like other fully delineated characters (e.g., James Bond, as the court ruled in this lawsuit) he is surely protected by copyright, while, by contrast, sketchily defined, stock characters may not be (as the court found in this case).  (See also this account of a 1998 lawsuit to block publication of Lo's Diary "a distaff version of Nabokov's Lolita.")

But the fact that a character is copyright protected does not necessarily mean that every use of his/her fictional persona is an infringement.  A second work that invokes a copyright-protected character must copy some significant amount of expression in order to be an infringement.  The mere mention of the name of a copyrighted character ought not to be a copyright infringement because names, standing alone, are not copyrightable. (But see the discussion of trademark and unfair competition law below.)  A copyright infringement occurs only when a quantum of protectible expression has been copied, and the copying is not excused by the doctrine of fair use.  (Note that this post deals primarily with openly acknowledged use of another writer's character, not the situation where an author merely borrows certain traits or characteristics from a character.)

With this principle in mind, it would seem to follow that a fleeting appearance of another writer's fictional character as a dinner guest in my novel should not qualify as a copyright infringement.  However, as soon as I start to make Jack Ryan or Don Draper talk like, act like, or look like Jack Ryan or Don Draper in my novel I may be treading on thinner ice.  And if I make Jack Ryan or Don Draper an important character in my book, I'm begging for trouble.

There are several other important considerations here.  First, there are some copyright owners who, regardless of viability of their claims, will not hesitate to sue me at the drop of a hat if I use their characters in any way without obtaining permission (which they will never give me).  There is, in other words, a practical risk in inviting other writers' characters to my fictional dinner party, even if those characters keep their mouths shut and do nothing.  Frankly, it may not be worth it to me to take any risk of provoking a lawsuit arising from my imaginary soiree, even if I have the better part of the argument on copyright.  It's always safer to invite some nameless characters of my own creation.

(And Elizabeth Bennett can still attend the dinner, since she has been in the public domain for a long, long time.  Seth Grahame Smith, author of Pride and Prejudice and Zombies, is surely thankful for that.)

Second, the owner of the rights in a famous fictional character will also likely seek to invoke other legal theories -- particularly trademark and unfair competition laws -- when trying to protect her characters from my unauthorized use.  If the name of a character has acquired secondary meaning -- i.e., if the name is sufficiently well known that readers associate it exclusively with a particular author's work -- then the owner may be able to claim that my unauthorized use of the name creates confusion among readers, who may mistakenly conclude that my use of the name is authorized, approved, or licensed by the owner.  Confusion as to source, authorization, or  endorsement is the essence of an unfair competition claim. There might be ways to get around the trademark infringement/unfair competition argument, particularly with the use of prominent disclaimers that make very clear that Matthew Weiner has not authorized me to mention Don Draper.  But, still, the unfair competition argument is a complicating factor when referencing the characters of others.

Concern about characters as trademarks may -- or may not -- have figured into some of the choices made in The Wind Done Gone, by Alice Randall.  Randall's novel was, of course, a reinterpretation of the characters and events in Gone with the Wind.  Scarlet O'Hara appears in the novel, but she is referred to only as "Other."  And Rhett Butler is called "R."  Place names, such as Tara, were also altered.  That said, Scarlett and Rhett are "fully delineated" characters whose fictional lives are continually referenced (albeit not by their full names) in Randall's novel.  Small wonder then that the owner of the copyright in GWTW sued Randall's publisher, Houghton Mifflin.  As you can see from the complaint, the plaintiff alleged both copyright infringement and unfair competition, claiming, among other things, that the characters were both copyright-protected and had acquired secondary meaning.  It was a hard-fought case, with an inconclusive ending.  The trial court found that The Wind Done Gone was likely a violation of copyright and issued a preliminary injunction.  But the appeals court, in this decision, found on First Amendment grounds that it was improper to preliminarily enjoin publication of TWDG in part because Randall's work could qualify as a "parody" of GWTW.  But the appeals court did not rule out the possibility that the publisher of TWDG could ultimately be liable to the copyright owner for money damages.  The case settled before there was any final decision on a host of interesting legal issues.

These days, the unauthorized use of characters occurs all of the time in the context of fan fiction, which typically involves inventing new stories using familiar characters from literature, comic books, movies, or television programs.  An entire subculture has built up around fan fiction, and recently FanFiction.Net was the 747th most trafficked website in the United States.  Although each work must be judged on its own, suffice it to say that, if the issue ever reached a court, many works of fan fiction would be deemed derivative works that infringe upon the characters and stories on which they are based.  Chilling Effects has a great Q&A on the legal issues relating to fan fiction.  And the Wikipeida entry on the legality of fan fiction also makes for interesting reading.  Georgetown Law School professor Rebecca Tushnet wrote an excellent law review article on the subject.  And here is a list of other law review pieces discussing the legal issues.

Fan fiction writers have two things going for them.  First, as discussed in some of the references above, many (but by no means all) copyright owners have turned a blind eye to infringing fan fiction, on the theory that they do not want to alienate some of their most enthusiastic followers. Second, fan fiction writers rarely seek to profit from their work, which is helpful in arguing the defense of fair use, but by no means provides immunity from an infringement claim.  In short, writers of fan fiction, who publish their work on the web or elsewhere, should be aware that they are taking some degree of legal risk, unless, like Pride and Prejudice and Vampires, their works are based upon public domain sources.

So can I have Don Draper make a cameo appearance in my novel?  As you can see, the answer is a thoroughly equivocal "it depends."  A writer contemplating using the characters of another writer would well-advised to seek out the counsel of an experienced intellectual property lawyer.  (See this prior post on free and low-cost resources.)  If you're publishing with an established house, you should discuss your particular use of other writers' characters with your editor and the in-house attorney.

There are several helpful discussions on the web concerning copyright in fictional characters, including this one by Denver lawyer Lloyd Richthis one by California lawyer Ivan Hoffman, and this by Phoenix lawyer Jasmina Zecevic Richter.

22 comments:

  1. On a similar note, I'm appropriating real historical and contemporary figures in a novel write now, implying for example that Isaac Asimov's novels have a mystical subtext. None of these figures enter the book as characters, but I am re-casting them.

    Tying a book into the real world through this kind of intertextual grounding would seem to be a common strategy, but I'm curious what kinds of legal issues arise as a result.

    Thanks for the blog - super interesting.

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  2. Great post. Very illuminating.

    Would you agree that the characters you mention in your post are part of our culture? In fact, do you have a definition of "culture"?

    Would you say that copyright as it is currently practiced in the USA stifles creativity in regard to extending and including "things" in our culture?

    My guess is that, based on this post, your would agree that your creativity was limited.

    Thanks again,

    Rob:-]

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  3. I noticed that you neglected to mention that anything Jane Austin wrote is decidedly fair game since it's all in the public domain. (IIRC Lolita is too, but I could easily be wrong)

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  4. You are right that Elizabeth Bennett (mentioned in the post) and all other Jane Austen characters are decidedly in the public domain. So no problem with Pride and Prejudice and Zombies. My assumption is that Lolita, written in 1955, is fully protected by copyright. See this earlier post, which touches upon, among other things, copyright duration. http://www.rightsofwriters.com/2010/12/can-i-say-my-blog-is-copyrighted-basics.html

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  5. Rob, my basic world view is that copyright is a legal engine that promotes the creation of many works of great value to our culture. But I also believe that a robust "fair use" defense is a vital aspect of the copyright law, and that it is important to safeguard the public domain and not to extend the duration of copyright indefinitely.

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  6. I have a legal question regarding my fiction novel. Albeit my novel is about a star-crossed romance between the lead characters, it also infuses an actual establishment that existed 1969-1971, and the club owner, whose real name was not used. As a long-time friend of the now deceased owner, I worry about backlash from his heirs, since I used the club name that many from that era might remember. My writing depicts the incredibly colorful owner as a compassionate saint who offers guidance to lost souls. Should I just change the book title and club name?
    Thank you for any information you can offer.

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  7. What happens if I design a t-shirt that depicts a character from a book, but out of context?
    For example, Voldemort sniffing coke.

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  8. I want to write a pastiche of a Tom Swift book. It would deliberately use not only the names of the principal characters, but their distinguishing traits, manner of speaking, etc. In some respects it would be a parody. The earliest Tom Swift books (from the original series, published by the Strathemeyer (sp?) Syndicate) are from the 1910s and are in public domain. Later ones (1920s-1940s) don't seem to be in the public domain. Furthermore, the publisher's successors have from time to time come out with new Tom Swift series, TV shows, etc. So I'm really not sure if I could legally do a Tom Swift pastiche or not.

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  9. Nice, thorough article.

    I would be interested in the length of protection by law. When will characters such as James Bond and Sherlock Holmes become part of the public domain?

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  10. I was wondering, does all that you talked about apply to fiction too? Or movies, music, anime/manga, or comic books? I was just asking because I was curious. do you know?

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  11. I liked your article.

    I am writing an outline for a Sci-Fi novel. The bad guys son is a big Ben10 fan so his father creates copies of the aliens to use in his attacks against the good guys. I will change the colours of the charcters so they are not the same as the ones on T.V. But i want to use the names so that reader will know what to picture if they are familiar witht the cartoon

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  12. I am a published author of 2 books already, and now I am wanting to write a personalized childrens book for each one of my kids. My oldest daughter is in love with the childrens series of Biscuit books about a mischevious puppy. I am wanting to write about her reading her fave book and falling asleep and the dog coming to life... does that make sense? How can I legally do this?

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    1. The easiest way would be to simply change the dogs name. By spelling it differently or a new name entirely would sidestep the copyright laws. And since it is an animal character the laws regarding personality and behavior would not really apply.

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  13. I'm working on several novels and in one I (want to) mention Harry Potter.
    EX: "Wait, wait, wait," Ross* began, "Don't you need a wand or something?" I stared in disbelief, Ginger was scowling deeply at him. -more stuff- "You know, like Harry Potter" he bent over and grabbed a stick, "Wingardium Liftyupso!" he yelled while waving the stick wildly. He looked like he was expecting Ginger to explode. I thought he was going to poke his eye out.

    Also if I mention a book or book series do I need to worry about anything?

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  14. I am in the pre-process of writing a novel (compiling ideas, etc) but I want it to take place in a world where the characters of books live while they aren't in their stories. Is this even doable?

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  15. I am writing fiction, I would like to talk about a TV show my character watches as a child, I do not mention the namer but describe what happens in it briefly. Do I need to obtain permission of is this acceptable to mention? Thank you

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  16. I am referencing some TV show character or phrases. Ralph Kramden-To the moon Alice! I've got a golden ticket. I'll pull a Homer on you... Bart. I also reference OPEC and call them unpleasant names. I've thought it over and it just doesn't have the same effect without it. I figure since OPEC is not a U.S. Entity, their no chance of retribution. Also, I'm referencing Gloria Estefan and her song "Anything for you." No lyrics, just title. Am I safe?

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  17. I have written a short story based on John Chever's short story "The Swimmer" I have used a character to wright another story based on the other characters view point. Would this be considered infringement of copyrights?

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  18. I want to publish a web series on YouTube that involves characters who are descended of the protagonist of a novel I read. The protagonist of the novel does not appear in the sereies, but he is mentioned as the ancestor.

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  19. In a novel, can I have my team of doctors be Quackenbush, Hackenbush, Hrfurrurr, Howard, Fine and Howard, and use the mannerisms of, respectively, Groucho Marx, Groucho Marx, Steve Martin as Dr. Hrfurrurr, and the Three Stooges? Usage would be limited to two or three scenes at the end of the book, as parody

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  20. I'm curious about trademarking issues. For example, a side plot in a novel I'm writing involves a rivalry between two central characters' mothers, who both are trying to get cast in the latest version of "The Housewives of Beverly Hills", the well known Bravo series. I don't plan on using any of the actual characters in that show, just the name as a cultural reference point. I could easily change the name of the show to "Homemakers of Beverly Hills" or "Trophy Wives of Beverly Hills", but I wondering if that's legally necessary. It would be nice to use the actual name because everyone recognizes that brand, but I don't know if that violates copyright or trademark law. Also, this is far from a central plot point of the novel, just an amusing character side note. Any ideas on that?

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  21. Can an author use the name of a race (ie Vulcans, Star Trek) in his book when referring to his own characters? eg. The Vulcan T'Jale ate quietly. (where the T'Jale character is original.)

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