When Does Copyright Law Cease Protecting a Fictional Character? (Part III)

Movie Poster for Van Helsing

The tagline for the 2004 movie Van Helsing was "Adventure Lives Forever." From an intellectual property perspective, it would appear that some fictional characters may try to live forever.

Trademark protection of a fictional character provides the owner with the exclusive right to use that character in connection with goods and services, as well as the right to prevent the unauthorized use of the character in connection with goods and services of infringing third parties.

The notion is that US trademark law serves to protect the public from confusion arising from confusingly similar marks.

But what about trademark law protecting the characteristics of fictional characters that are in the public domain as a matter of copyright law (e.g., Count Dracula or Sherlock Holmes)?  Theoretically, it would seem like trademark protection should not be available for any characters that are fully described in the public domain work. The reality is not that simple.

If a derivative character is developed, based upon the character described in public domain materials and is used in commerce, it is protectable as a trademark in its own right.

A concrete example is that the general features of Count Dracula are free to emulate because they are in the public domain, as the character was contained within Bram Stoker’s novel from 1897.  Stoker's book was loosely based upon the historical character of Vlad the Impaler.

Innumerable commercial variants of Stoker's Count Dracula were spawned in the century that followed, leading to a complex legal landscape.

General Mills' Count Chocula Cereal

For example, Count Chocula is a well-known, trademarked character developed by General Mills in 1971, in connection with breakfast cereals. Count Chocula is a highly stylized caricature of Count Dracula, made suitable for children. General Mills saw fit to register a federal trademark on the name and character, asserting that the design was for a character in the category of” supernatural, fictional or legendary characters; Paul Bunyan; Pied Piper; Robin Hood; Sherlock Holmes…etc.”

Consequently, a conundrum arises. If a third party were to develop a new design for a cereal that included a fictional character based entirely on the Count Dracula described in Bram Stoker’s public domain book, he may still be likely to cause consumer confusion with Count Chocula, and in doing so, violate General Mills' trademark. The strange outcome is that a character that should be free under copyright law to use, may not be so free under trademark law.

Along the same lines, Abraham Van Helsing was described in Stoker's Dracula novel. In 1994, actor Hugh Jackman played Van Helsing in a major motion picture.  In 2007, the United States Patent and Trademark Office officially allowed "VAN HELSING" to become eligible for a trademark on a wide variety of action figures, toys and games, and published that mark for opposition.

Yet another example is the Pied Piper of Hamelin. The Pied Piper has been a character fully described as far back as the 14th and 15th centuries. The legendary figure had become fodder for nearly a dozen short stories written by the Brothers Grimm in the 19th Century.  Every one of these works has passed into the public domain, as a matter of US copyright law.

The Pied Piper Throughout History

Yet, Dell Publishing Company was able to successfully register "Pied Piper" for "a series of childrens' books" in 1981, a registration that continues to be in full force and effect on the Principal Register of the US Patent and Trademark Office.

  

Further complicating matters, as long as trademarks are used in commerce, they can be valid and enforced in perpetuity. That result means that hundreds of years after the text describing a fictional character has passed into the public domain, a company that develops a commercial character based on the public domain work, could still claim a successful monopoly.

Six hundred years after the Pied Piper was first described in published poems and books, an author could not write about him in a children's book today, as the Dell Publishing Company was able to receive a perpetual, federally registered trademark on his name for children's books.

As discussed in previous posts, it is not entirely clear that once a copyrighted work passes into the public domain, the fictional characters developed therein become entirely free for public consumption without legal controversy.

Indeed, related and derivative intellectual property rights can continue to muddy the waters, leading to complex and strange consequences. This situation occurs because the landscape of US intellectual property law is complex, and different regimes are designed to serve different purposes.

US copyright law protects the expression of ideas, but not the underlying ideas themselves. The notion is that a limited monopoly is granted on a tangible expression of an idea, in order to foster a robust environment for authors, painters and other creative endeavors in which they (and their heirs) are appropriately rewarded. Once that monopoly has lapsed, the underlying texts pass into the public domain, giving the public an opportunity to utilize a catalog of freely available works. For example, Mozart or Beethoven's music can generally be played by anyone without fear of a lawsuit by their heirs. William Shakespeare's plays can be reproduced or performed, without fear of paying a royalty.

Further, in literature, fictional characters within a literary work are presumed to be simply ideas unless they are sufficiently developed to legally constitute elements of expression protectable under copyright law.

However, US trademark law may protect the names, physical appearance, catchphrases, and certain other elements of fictional characters, provided that they are used on goods or services, identify and distinguish the source of the goods or services from those of others, and are either inherently distinctive or have acquired secondary meaning (i.e., meaning in the consuming public’s mind as a source identifier for the relevant goods or services).

In conclusion, as we have seen, just because a fictional character was once described in a text that has passed into the public domain as a matter of copyright law, does not end the inquiry. In fact, it is only the beginning, as related rights and derivative works, as well as trademark usage can affect the public's right to freely borrow from, adapt or use those fictional characters.

When Does Copyright Law Cease Protecting a Fictional Character? (Part II)

A previous post discussed litigation related to the current status of Sir Arthur Conan Doyle's copyright claims to the fictional characters of Sherlock Holmes and Dr. Watson, given that several works had passed into the public domain as a matter of US copyright law.

Below is a further discussion about the power of US copyright law to protect fictional characters that have lapsed into the public domain, but which have been developed through subsequent film adaptations and through the creation of "derivative works."

These legal issues are best illustrated by the murky copyright status of the iconic characters in the Wizard of Oz.

In May 1900, author L. Frank Baum published The Wonderful Wizard of Oz, a fantasy children's novel that included illustrations by W.W. Denslow.  The book includes the familiar story describing how Dorothy, the Tin Man, Scarecrow and the Cowardly Lion traveled down the yellow brick road together to see the Wizard so Dorothy could return home. Notably, in the original 1900 text, Dorothy's slippers are silver.

Baum's seminal book was famously adapted to movie screens in the now iconic 1939 masterpiece film starring Judy Garland. This film made revolutionary use of Technicolor, which inspired a change to the color of Dorothy's slippers to ruby red.  Indeed, Dorothy's red slippers would later become enshrined in the Smithsonian Institution, as a testament to the importance that this particular prop played in American culture.

Although the children's novel The Wonderful Wizard of Oz lost its US copyright protection in 1956, only the original novel by Baum and illustrations by Denslow have entered the public domain.

However, all the later-created derivative works based on the novel are still eligible for independent copyright protection.

Section 101 of the Copyright Act defines a "derivative work" as "[a] work based upon one or more preexisting works" or "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship."  Therefore, the 1939 film in which Dorothy wore ruby red slippers is a derivative work that is still protected by US copyright, valuable rights currently held by Warner Brothers.

Slight differences between the public domain novel and the still-copyrighted movie are not an academic issue to those seeking to make any adaptation of the Wizard of Oz plotline without a license from Warner Brothers.  And that includes Disney.

Indeed, just last week, Disney aired a brand new adaptation of the original Wizard of Oz called the Wizard of Dizz.  In this version, Mickey Mouse and the Mickey Mouse Clubhouse troupe are recast as the characters from The Wonderful Wizard of Oz, with Minnie Mouse as Dorothy, and Professor Von Drake as the Wizard.

While the Disney adaptation is potentially protected free speech as a form of parody, a subtle but important detail is the fact that the ruby red slippers worn by Minnie Mouse are replaced by green shoes.

Was this detail an act of literary license on Disney's part, or part of a clever legal strategy to avoid a claim of copyright infringement? 

In fact, Warner Brothers had litigated the status of the Wizard of Oz just two years ago, so it is more likely the latter.

In their most recent squabbles over this issue, Warner Brothers took the legal position that the characters from the film had so altered public perception, that virtually ANY unauthorized use of the characters would violate the film studio's copyright.

And (believe it or not) the 8th Circuit Court of Appeals agreed, issuing a decision that left more questions than it answered.

Subsequently, additional unauthorized renditions including Oz the Great and Powerful starring James Franco, stirred up even more controversy, as Disney riled Warner Brothers by filing for trademarks on that name.

In conclusion, when fictional characters are first described in a text that falls into the public domain, the status of the original copyright does not necessarily make these characters free for the public to use without license.

Further, in Part III, we will discuss how trademarks and trade dress can theoretically create a perpetual "brand" surrounding a character that otherwise would be in the public domain as a matter of copyright law.

When Does Copyright Law Cease Protecting a Fictional Character? (Part I)

Sir Arthur Conan Doyle

The estate of Scottish author Sir Arthur Conan Doyle has advanced a creative -- and controversial -- legal argument, in a gambit to protect its rights to continue to control licensing the fictional personae of Sherlock Holmes and his sidekick Dr. Watson, for at least several more years.

Conan Doyle authored four novels and 56 short stories featuring the now iconic literary characters of Sherlock Holmes and Dr. Watson between 1887 and 1926.  Under UK copyright law, Conan Doyle's entire corpus of work is now freely in the public domain.

However, under more restrictive US copyright law, only Conan Doyle's works published before 1923 are now in the public domain, whereas 10 of his works published after 1923, such as the "Case-Book of Sherlock Holmes", remain squarely under US copyright protection until as late as 2022.

Many critics vehemently argue that the US copyright system, which currently grants authors' heirs a monopoly on their ancestors' written works for as long as 70 years after the author's death, is too restrictive.  In any event, the American public is now confronted with can be legally done with a partial catalog of freely available Holmes-related texts.

Statue of Sherlock Holmes in Edinburgh, Scotland

A Los Angeles-based Sherlock Holmes expert and entertainment lawyer, Leslie Klinger, recently filed a declaratory judgment suit in Chicago federal district court, seeking a ruling that the characters of Holmes and Watson are now effectively freely in the public domain for anyone to use, regardless of whether a few of Conan Doyle's final works still remain under US copyright protection.

The Conan Doyle estate argues that the entirety of these literary characters should remain under lock and key, until the final of the books' copyrights expire.  The estate bases its argument on the logic that the characters' entire personalities, including subtle quirks and flaws, were developed in later works and are therefore embedded throughout the entire corpus of Doyle's literary contributions.  To separate characters into "earlier" and "later" would be to artificially dissect them.

This interesting case raises complex issues of unsettled copyright law.  For example, if a complex literary character "evolves" throughout many different copyrighted texts written during an author's long lifetime, as each text passes into the public domain many years after her death, does only the "immature" character become free to copy, until the entire corpus has lapsed?

Alternatively, once the first of many book's copyright expires, is the entirety of the later-developed character fair game for the public to take?

The question is not entirely academic, as Conan Doyle's estate could theoretically block the making of a television show such as "Elementary," which sets the detectives in modern-day New York, unless the estate is paid a hefty royalty.  The estate could also have blocked a new movie similar to the 2009 film starring Robert Downey, Jr. and Jude Law.

On this issue, the Conan Doyle estate faces a challenging legal landscape.  In 1999, the Second Circuit Court of Appeals confronted a virtually identical issue, and refused to rule that entire characters remained under copyright monopoly when significant previous works had lapsed into the public domain.

In that case, the appellant had wanted to create an unlicensed Broadway musical using the characters of "Amos 'n' Andy." Radio programs featuring the characters from 1928 to 1948 had lapsed into the public domain.  However, several later-created television shows remained under copyright protection.

The New York-based Appeals Court found that this latter fact was not dispositive.  In that case, the Appeals Court held that Silverman, who had wanted to utilize the characters freely, "should now receive a declaration that he is entitled to use all aspects of the "Amos 'n' Andy" materials, including names, stories, and characters, to the extent that such elements of expression are contained (or, in the case of characters, to the extent delineated) in the pre-1948 radio scripts, which are in the public domain."

In other words, the fact that some later materials remained copyrighted did not entitle the copyright owners to continue to monopolize the characters, as large aspects of their personae had been developed and become public domain years earlier.

The New York-based Appeals Court also found that no valid trademark rights in the characters remained, as they were abandoned upon the radio shows passing into the public domain.  It is yet to be seen how the District Court and the Seventh Circuit Court of Appeals, based in Chicago, will rule on this topic in the pending Conan Doyle case.

Home Depot Faces Class Action Suit Filed by Accused Shoplifters

The tongue-in-cheek 1987 Smiths' song "Shoplifters of the World Unite" urges petty thieves to get their act together and take over the world. Some accused shoplifters in California may be taking that message to heart.

According to a class action complaint filed by lead plaintiff Mr. Jimin Chen in California Superior Court last week, Home Depot's Florida-based lawyers extorted millions of dollars in settlements from accused shoplifters, by fraudulently representing that the home improvement giant would press criminal charges and bring civil claims, without any intention of ever doing so.

Specifically, the lead plaintiff alleges that he and a friend were shopping at a local California Home Depot in early June.  Before Chen's $1,445.90 purchase of a large quantity of lumber, he and his friend casually put on a pair of $3.99 work gloves.  Before the purchase was rung up by cashiers, they removed the gloves and placed them on the top of the lumber.  The checkout personnel failed to scan the gloves.


After he paid for the lumber, but before he left the store, Chen alleges he was suddenly taken into custody by a Home Depot security guard who accused him of trying to shoplift the gloves.

Chen claims he suffered an asthma attack and was handcuffed and kept in custody for as much as 30 minutes.  The police were never called and no charges were filed.  Chen was asked by Home Depot's personnel to sign an agreement that would keep Chen from shopping at any Home Depot for 90 days. Chen signed the agreement and presumably was happy to oblige. The agreement also contained a general "notice" that purported to warn the accused thief that he might face further charges, or civil demands.


Soon after the incident, Chen received a formal letter from a Florida law firm, demanding payment of $350 as a civil settlement of possible ramifications from the incident within 20 days.  When he failed to respond, a follow-up letter from the lawyers allegedly upped the demand to $625.

Instead of paying, Chen filed the class action lawsuit.  Chen alleges that in 4 years, Home Depot hasn't sued a single person under California's anti-shoplifting law, which provides that merchants are entitled to recover the cost of stolen items, up to a total value of $500.

Rather, he alleges that Home Depot illegally created a "profit center" out of a scheme to defraud frightened customers/alleged shoplifters.

It is worth noting that there were no clear damages in Chen's incident, as the two pair of gloves were recovered before Chen left the store, in any event.  There is no clear indication why Home Depot would be entitled to any civil recovery from Chen, much less $625.

The suit further alleges that Home Depot and its lawyers were capitalizing on the fact that thousands of accused shoplifters would be terrified by the demand letters and would pay up, instead of facing a lawsuit and/or criminal prosecution.

It is also worth noting that it is a crime for someone to overtly threaten to file criminal charges in exchange for compensation. Home Depot's rights and remedies for attempted petit larceny were to press criminal charges.

Needless to say, the suit has created a public relations embarrassment for Home Depot, which has reportedly responded by saying that it disagrees that the "general practice of civil demands is unlawful."