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Copyright Protection for Literary Characters

Posted November 17, 2020
Photo by King Lip on Unsplash

In celebration of National Novel Writing month, Authors Alliance is pleased to bring you resources and information about copyright issues of note for fiction authors. In this post, we will go over the copyrightability of fictional characters. Last week, we discussed exceptions to copyright that are relevant to fiction authors, and next week, we will survey issues in fair use that are relevant to fiction writers

As we discussed last week, some features of fiction work are outside of copyright protection altogether. But what about literary characters? As it turns out, the answer is not entirely clear cut. Some literary characters are entitled to copyright protection, and courts employ different tests to make this determination on a case-by-case basis. As a general rule, the more well-defined and unique a character is, the more likely it is to be entitled to copyright protection. This principle was established by the renowned Judge Learned Hand in a 1930s case, Nichols v. Universal Pictures. In that case, Judge Hand pushed back against attempts to claim copyright in characters that were defined mostly by scènes a faire and were therefore “stock figures.” More recently, courts have refined this analysis while considering the copyrightability of popular characters. 

In Detective Comics v. Bruns Publications—decided just a few years after the Nichols case—a court found that the Superman character was subject to copyright protection despite arguments that the character embodied the stock hero “Hercules” character commonly used in epics and action stories. Because Superman had original attributes beyond a Hercules type, the court found he could be copyrighted, and that a competing comic, Wonderman, infringed the copyright in the Superman character with its Wonderman character. The court observed that both Superman and Wonderman “conceals his strength beneath ordinary clothing but after removing his cloak stand revealed in full panoply in a skintight acrobatic costume.” Both were described as “the strongest man in the world” and “the champion of the oppressed,” and the only significant difference in their portrayal in the comics was that Wonderman wore a red uniform and Superman a blue one. The court concluded that the authors of Wonderman had “used more than the general types and ideas” present in the Superman character, and found infringement. 

Litigation involving famous detective Sherlock Holmes illuminates the nuances of copyright protection for literary characters a bit further. In a 2014 case, Klinger v. Conan Doyle Estate, the estate of Sir Arthur Conan Doyle sued the editor of an anthology of stories inspired by Sherlock Holmes, alleging that her work infringed the copyright in several Sherlock Holmes stories that had not yet entered the public domain. At the time of the lawsuit, a bulk of the stories had entered the public domain based on the expiration of the copyrights in those stories. The court rejected the estate’s argument that because some of the stories were still under copyright, the characters of Sherlock Holmes and his sidekick, Watson, remained under copyright. Because Klinger’s anthology was inspired by the Sherlock Holmes cannon as a whole, much of which had entered the public domain, the estate could not claw back copyright protection simply because a few stories about Holmes remained under copyright. Therefore, even if a character can be protected by copyright, when the underlying work enters the public domain, so too does that character. In this way, the court circumscribed copyright protection for literary characters.

But the Conan Doyle estate’s attempt to stake out a valid copyright in the character of Sherlock Holmes, despite many of the stories having entered the public domain, did not end there. Recently, the estate filed a lawsuit against Netflix, alleging that its new series, Enola Holmes, infringed the copyright in the Sherlock Holmes stories which remained under copyright. In this case, the estate is arguing that these later stories portrayed a different version of Sherlock Holmes than that of the early stories, and alleges Netflix appropriated the character traits of the version of Holmes portrayed in the late stories. Among the Holmes traits the estate alleges that Netflix copied are an affinity for dogs and a respect for women, which it argues were not present in the early stories that have entered the public domain. This lawsuit demonstrates the uncertainty in protection for literary characters: the question is the same as the one considered in the Klinger case, but with new factual circumstances, a court will once again consider the copyrightability of Holmes and whether Netflix’s new work infringes the estate’s copyrights.

Another recent court case involving a popular Disney film provides a contemporary example of characters which are too general and ill-defined for copyright protection. In Daniels v. Disney, the author of a series of children’s books sued Disney, alleging that its popular film, Inside Out, infringed her copyright in the “Moodster” characters in her own work, which were “color-coded anthropomorphic emotions,” such as a yellow character representing happiness and a red character representing anger. The court found that the Moodsters characters were not sufficiently “delineated” and consistent to qualify for copyright protection: the appearances and names of the Moodsters changed over time, with only the colors and associated emotions remaining consistent across different works. In a sense, the court found that the characters were embodiments of the idea of associating color with emotion, making the claim also based on an uncopyrightable idea. Because the moodsters were not protected by copyright, the court did not need to consider whether Disney’s anthropomorphized emotions constituted infringement. Daniels has appealed the ruling to the Supreme Court, which has not yet decided whether to hear the case. Authors Alliance will keep its members and readers updated about this case as it develops.

What’s Not Protected: Copyright for Fiction Authors

Posted November 10, 2020
Photo by Ed Robertson on Unsplash

In celebration of National Novel Writing month, Authors Alliance is pleased to bring you resources and information about copyright issues of interest to fiction authors. In this post, we will go over some of the elements of fiction writing that simply do not qualify for copyright protection. Later this month, we delve into a discussion of the copyrightability of characters in literary works and survey issues in fair use that are relevant to fiction writers

It is a basic tenet of copyright law that some things are simply outside of copyright protection. These are often referred to as uncopyrightable subject matter. There are a few a bright line rules in the United States⁠—for example, that titles of literary works, slogans, and lists of ingredients cannot be copyrighted⁠—but outside of these principles, things become a bit more complicated.

Categories of uncopyrightable subject matter affecting fiction writers are ideas, themes, and scènes à faire. These concepts are closely related, and the overarching justification for excluding them from copyright protection is that they are simply too general and standard to a particular genre or convention for an individual creator to be granted a temporary monopoly on them—which is what copyright provides. 

Ideas and Themes

Ideas and themes cannot be copyrighted, although the expression of a particular idea or theme can be. In other words, when a fictional work involves a particular concept, a later work’s use of this concept cannot form the basis of an infringement claim, though copying the words used to express the idea or theme could constitute infringement. 

In Williams v. Crichton, the author of a series of children’s books sued the author of Jurassic Park, alleging that the film infringed his copyright in his own book, which also involved “the concept of a dinosaur zoo.” After examining each work in turn, the court concluded that both portrayed dinosaur zoos, but also found that the idea of a dinosaur zoo could not be copyrighted. The dinosaur zoos were expressed in different ways: one was in a natural remote island, another an entirely man-made attraction. 

Similarly, in Allen v. Scholastic, a court considered an allegation that J.K. Rowling’s Harry Potter and the Goblet of Fire infringed the copyright in a lesser-known picture book. Both works had a wizard protagonist who participated in a wizarding competition, and both were “primarily created for children,” but the similarities ended there: Allen’s work was just sixteen pages, whereas Rowling’s was over 700. The works were “distinctly different in both substance and style” and elicited “very different visceral responses from their readers.” Here too, the idea of a wizarding competition was found to be outside of copyright protection. 

In Madrid v. Chronicle Books, poet Lori Madrid alleged that the Pixar film, Monsters, Inc., infringed her copyright in a poem about a monster which is frightened to discover a human child in its closet. Madrid argued that the presence of “a big, fat, furry monster with horns on its head” and “monsters in children’s bedroom closets and vice versa” in both works was evidence of infringement. The court disagreed, finding that both were uncopyrightable ideas. The court pointed to other earlier works which also made use of these ideas—such as Maurice Sendak’s Where the Wild Things Are—as evidence that they were not the kind of original, creative expression copyright seeks to protect. 

Themes—which often flow from ideas central to a work—are similarly not subject to copyright protection. In the Scholastic case about Harry Potter, themes of friendship and competition in both works were found insufficient to establish a copyright infringement claim, as these concepts were too general such that finding infringement would go against copyright’s goal of encouraging the free exchange of ideas. And in the Chronicle Books case about Monsters, Inc., the theme of a mother-child relationship was similarly too general to serve as the basis of an infringement claim. 

Scènes à Faire

Scènes à faire (from the French for “scenes to be made”) are characters, settings, events, or other elements of a work which are standard in the treatment of a given topic. The doctrine of scènes à faire recognizes that these elements are not copyrightable and cannot form the basis for a claim of infringement. In the Jurassic Park case discussed in the previous section, for example, the court found that “electrified fences,” “workers in uniforms,” and “dinosaur nurseries” were scènes à faire that flowed naturally from the unprotectable idea of a dinosaur zoo. Because the idea of the dinosaur zoo itself cannot be protected, and a dinosaur zoo is likely to include these elements as a logical matter, they also are not subject to copyright protection. 

Courts have found that certain ideas or literary genres are associated with particular scènes à faire, such that those elements cannot form the basis of an infringement claim. In Hogan v. D.C. Comics, considering an allegation that one vampire novel infringed another, a court found that “imagery of blood, religious symbolism such as crosses and allusions to the bible” were indispensable to vampire tales, making these elements scènes à faire in this context. Similarly, in DuBay v. King, considering an allegation that Stephen King’s The Dark Tower series infringed the copyright in a cartoon published in the late 1970s and early 1980s, a court found that similarities in the protagonists’ “looks” did not constitute infringement where both were “[a] western, or cowboy-looking loner often in desolate or eerie surroundings.” Because such a costume and presentation was standard in a story about the Old West, these similarities were scènes à faire and could not form the basis of an infringement claim.

Fall Reading List

Posted November 2, 2020

At Authors Alliance, we enjoy keeping up with all the latest news on authorship and copyright, and we know that our members do, too. In that spirit, we’re sharing a list of the latest books we’ve added to our bookshelves.

The Color of Creatorship, Anjali Vats

The Color of Creatorship examines how copyright, trademark, and patent discourses work together to form American ideals around race, citizenship, and property. Working through key moments in intellectual property history since 1790, Anjali Vats reveals that even as they have seemingly evolved, American understandings of who is a creator and who is an infringer have remained remarkably racially conservative and consistent over time. Offering readers a theory of critical race intellectual property, Vats historicizes the figure of the citizen-creator, the white male maker who was incorporated into the national ideology as a key contributor to the nation’s moral and economic development. She also traces the emergence of racial panics around infringement, arguing that the post-racial creator exists in opposition to the figure of the hyper-racial infringer, a national enemy who is the opposite of the hardworking, innovative American creator.

The Color of Creatorship is available to purchase in print at Stanford University Press.

Law & Authors: A Legal Handbook for Writers, Jacqueline Lipton

Cover of "Law and Authors: A Legal Handbook for Writers"

This accessible, reader-friendly handbook will be an invaluable resource for authors, agents, and editors in navigating the legal landscape of the contemporary publishing industry. Jacqueline D. Lipton provides a useful legal guide for writers whatever their levels of expertise or categories of work (fiction, nonfiction, or academic). Through case studies and hypothetical examples, Law and Authors addresses issues of copyright law, including explanations of fair use and the public domain; trademark and branding concerns for those embarking on a publishing career; laws that impact the ways that authors might use social media and marketing promotions; and privacy and defamation questions that writers may face.

Lipton has contributed guest posts for Authors Alliance on morality clauses, implied licenses, and author domain names. Law & Authors: A Legal Handbook for Writers is available to purchase in print from the University of California Press (use discount code 17M6662 for 30% off).

Copy This Book! What Data Tells Us About Copyright and the Public Good, Paul J. Heald

In Copy This Book!, Paul J. Heald draws on a vast knowledge of copyright scholarship and a deep sense of irony to explain what’s gone wrong with copyright in the 21st century. Heald gathers extensive empirical data and clearly distills the implications of copyright laws and doctrine for public welfare. Along the way, he illustrates his findings with lighthearted references to familiar (and obscure) works and their creators (and sometimes their creators’ oddball relations). Among the questions he tackles:

  • Why are more books in print from the 1880s than the 1980s?
  • How does copyright deter composers from writing new songs?
  • Why are so many famous photographs unprotected orphans, and how does Getty Images get away with licensing them?
  • What can the use of music in movies tell us about the proper length of the copyright term?
  • How does copyright deter the production of audio books?
  • How do publishers get away with claiming rights in public domain works and extracting unmerited royalties from the public?

Copy This Book! is available to pre-order from Stanford University Press.

Ending Book Hunger, Lea Shaver

One billion children do not have access to books in their native languages. Forty percent of America’s children cannot afford to buy books. As of 2012, most babies born in America were racially or ethnically diverse, but only 8% of characters in new children’s books reflect this diversity. In Ending Book Hunger, Shaver explains how permissions, fair use, and open licenses can help address these problems and reshape children’s publishing by creating more diverse books, lowering costs, overcoming language barriers, and promoting mobile reading through digital libraries.

Ending Book Hunger is available to download for free under a Creative Commons license here, or you can purchase a print copy on the Yale University Press website.

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Have recommendations for our next reading list? Send us an email today with your suggestion!

Copyright Office Studies Effect of Sovereign Immunity for Copyright

Posted October 28, 2020
Photo by Markus Winkler on Unsplash

Last week, the Copyright Office closed the comment period for its ongoing study on sovereign immunity. Sovereign immunity is a doctrine that makes states and state entities immune from lawsuits under federal law in some cases. Congress sought to eliminate sovereign immunity in the copyright context in a 1990 federal law, but a recent decision by the Supreme Court has overturned the law. Now, the Copyright Office is conducting a study to determine whether copyright infringement by state entities is an ongoing problem warranting a new legislative remedy. It solicited feedback from the public in June. 

Authors Alliance has been closely monitoring the comments submitted to the Copyright Office—48 in total. Some comments from rights holders and trade associations alleged that infringement by state entities had occurred in multiple instances, but others argued that the evidence offered did not rise to the level of widespread, intentional infringement which would warrant a new legislative solution.

State Sovereign Immunity

State sovereign immunity immunizes states and state entities—like state government agencies, public hospitals, and state universities—from lawsuits under federal law without their consent, with roots in the Eleventh Amendment to the U.S. Constitution. But state sovereign immunity is not absolute, and can be modified or eliminated in some contexts. In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), which sought to eliminate state sovereign immunity with regards to copyright claims, known as abrogation, under the authority of the Intellectual Property Clause of the Constitution.  

In 1999, a Supreme Court case, Florida Prepaid Postsecondary Educational Expense Board v. College Savings Bank, found invalid an attempt to abrogate state sovereign immunity under the Intellectual Property Clause in the patent context. For twenty years, without further word from Congress or the Supreme Court on the matter, the law was left in a state of uncertainty.

Recent Background: Allen v. Cooper

Sovereign immunity within copyright was recently brought to the fore in the copyright community with a Supreme Court case during last year’s term, Allen v. Cooper. The case concerned the state of North Carolina’s use of copyrighted images of a pirate ship found off the coast without permission from the photographer rights holder. 

In the case, following the logic of Florida Prepaid, the Court held that Congress lacked the authority to abrogate sovereign immunity under the Intellectual Property Clause, making the attempt to do so in the CRCA invalid. The Court also noted that Congress could have abrogated state sovereign immunity with regards to copyright claims under its 14th Amendment powers, but that the way it did so with the passage of the CRCA did not meet the requirements of its 14th Amendment powers. Under the 14th Amendment, Congress must enact legislative solutions that are “congruent and proportional” to the problems it seeks to address. The Court held that the record before Congress did not show the widespread, intentional infringement which would justify the total abrogation of sovereign immunity for copyright claims in the CRCA. 

Responding to the Court’s conclusion and a call from Congress to investigate the matter, the Copyright Office issued a “notice of inquiry” in June 2020, announcing a study that seeks to “evaluate the degree to which copyright owners are experiencing infringement by state entities” and the extent to which these infringements are “based on intentional or reckless conduct.” The Copyright Office also asked whether other remedies available to rights holders under state law were adequate to address the problem of infringement by state entities.

Comments from the Public

The comments—both the initial round and the reply comments—fell into two categories: those that argued that infringement by state entities is widespread and hurts rights holders and creators using examples of these entities asserting sovereign immunity, and those that argue that there is no evidence of widespread infringement, but only anecdotal evidence of alleged infringement. Commenters alleged state infringement in the context of photographs, songs, software, and, to a much lesser extent, literary texts. 

With regards to authors of written works specifically, evidence of infringement by state entities was sparse. One rights holder comment argued that several university presses had infringed her copyrights in putting together a book of interviews, but reply comments in favor of sovereign immunity pointed out that fair use and unclear copyright ownership in interviews undercut this claim. The Association of University Presses, for its part, added that academic books do not bear out such a pattern of infringement, and suggested the Copyright Office “look elsewhere” in attempting to develop its record. 

Anti-Sovereign Immunity

The Copyright Alliance—one of the most prominent voices that submitted a comment arguing against sovereign immunity, which several reply comments endorsed specifically—conducted a survey of its members to offer as evidence to the Copyright Office. The survey found that some members believed their works had been infringed by a state entity. It supplemented its survey results with a discussion of a high-profile settlement involving unauthorized uses of news articles on the website for CalPERS, the California state pension fund, over an eight-year period. In that case, the state agency allegedly posted full copies of news articles in a newsletter to employees and a public website without permission, ultimately removing the content and settling. Other commenters, such as the News Media Alliance, also addressed the CalPERS settlement. 

Trade organizations representing songwriters and photographers as well as a few individual companies and creators also made comments alleging that infringement by state entities is common based on their experiences extracting licensing fees from college radio stations and obtaining remedies when a state entity uses a photograph in advertising without the rights holder’s permission. One such company, Pixsy, attempted to combine statistics about uses of images by post-secondary institutions with an estimate of what percentage of uses of images online were unauthorized to support an argument that sovereign immunity was depriving its clients of millions of dollars in licensing fees. Similarly, SoundExchange, a digital licensing firm for music, examined the royalties it received from college radio stations and concluded that these were lower than expected due to public institutions’ reliance on sovereign immunity. Several anti-sovereign immunity comments also argued that state entities themselves profit off the licensing of their intellectual property, making sovereign immunity unfair. 

Pro-Sovereign Immunity

On the opposite side of the argument were state universities, their libraries, and organizations representing those entities. Comments in favor of maintaining sovereign immunity emphasized that there is no evidence that infringement is intentional and widespread, and suggested that the major alternative remedy available—an injunction requiring the infringing content be removed—is adequate in most circumstances. Many research librarians stated that in their experience aiding university employees with copyright questions, very few rights holder complaints were brought to their attention. 

A joint reply comment from the Association of American Universities and the Association of Public and Land Grant Universities sought to identify weaknesses in the empirical studies undertaken by the Copyright Alliance and SoundExchange: neither investigation accounted for fair use or the effects of the COVID-19 pandemic on university practices in the early months of 2020, and the Copyright Alliance study relied on its members subjective beliefs that their copyrights had been infringed by state entities. 

In its reply comment, the University of Michigan Library pointed out that the Copyright Office’s call for comments was directed at rights holders, but many of the comments received focused on state universities and state libraries, many of whom were not given an opportunity to chime in. The Association of University Presses submitted a reply comment along similar lines. Emphasizing that scholarship can be hampered by overreaching copyright claims and that state entities cannot afford “the expensive hurdle of nuisance claims,” the Association argued that the Copyright Office should “look elsewhere” for evidence of widespread, intentional infringement than state run universities and libraries. It also noted that the comments against sovereign immunity failed to take fair use into account, focusing on perceived infringement without considering whether these uses would be fair. 

Going Forward

The Copyright Office stated in its notice of inquiry that it intends to host one or more public roundtables to seek additional input. Authors Alliance will be monitoring these roundtables and any other forthcoming policymaking activities regarding the abrogating of sovereign immunity going forward, and we will continue to update members and readers as new developments emerge.

Q&A with Dr. Elizabeth Vercoe on Terminating Transfers of Copyright

Posted October 20, 2020
Photograph of Elizabeth Vercoe
photograph courtesy of Dr. Elizabeth Vercoe

Called “one of the most inventive composers working in America today” by The Washington Post, Dr. Elizabeth Vercoe has been a composer at the St. Petersburg Spring Music Festival in Russia, the Cité Internationale des Arts in Paris, and the MacDowell Colony. Her music is published by Noteworthy Sheet Music, Certosa Verlag (Germany), and Arsis Press and is recorded on the Owl, Centaur, Navona and Capstone labels. We recently sat down with Dr. Vercoe for a Q&A about her efforts to terminate the transfer of copyright to six of her nine early musical compositions published by Arsis Press, including Herstory II (1982).

Authors Alliance: Can you share why you were motivated to explore the possibility of terminating the transfers of copyrights for your works? What problem did you hope to solve?

Dr. Elizabeth Vercoe: As a composer of nine pieces published by Arsis Press, I was appalled when the successor publisher (Empire Publishing Services) ceased filling orders for our music and gave no notice or explanation for the apparent demise of the business. Because I was also a former associate editor of Arsis, I felt some responsibility for keeping the other composers informed and helping them in any way I could. We were unable to make copies of our own work legally since the press owned our copyrights, and we were unable to enter into recording contracts and other agreements without the consent of Empire. Moreover, Empire continued receiving half of our performance royalties from ASCAP and BMI while doing nothing for us. We were angry and upset at the injustice and decided to investigate what we could do about the situation.

AuAll: What steps did you take to initiate the termination of transfer process? Are there resources that you found particularly helpful?

EV: Initially we consulted several copyright lawyers to see what options were open to us to retrieve our copyrights. We were told that the lawyers could negotiate with Empire or they could facilitate copyright terminations for work eligible under current copyright law. On discovering the expense of even minimal action to negotiate with Empire or file copyright terminations for us, we were grateful that one attorney referred us to the website rightsback.org as a starting point for doing the work ourselves. We also studied the instructions for terminations on the Copyright Office website, pooled our information, and began helping each other with the paperwork.

We also spent a day at the Library of Congress looking through the 25 boxes of records of Arsis Press. The records were preserved by the library since the press is of historical interest as the first publisher in the U.S. devoted to women’s concert music. We hoped to find a contract between Arsis Press and the successor owner enumerating the terms of agreement. Unfortunately, we found no contract, and BMI was clear that it was obligated to continue to send half of our performance royalties to Empire.

AuAll: Do you have advice for other creators considering terminating their transfers of copyright? Are there things that policymakers could do to make copyright work better for creators?

EV: As a relatively naïve graduate student, I knew little or nothing about the risk of publication by a small press when Arsis Press began publishing my music. Someone could have suggested an additional sentence in a contract requiring that copyrights revert to the author if the press ceased doing business. If we had done this, we would have had some protection if the press failed. But nobody told any of the 40 composers published by Arsis Press that we should request such language in our contracts. I don’t think the founder of Arsis Press thought about this either or she would have insisted upon it. Organizations for composers like the Society of Composers and the International Alliance for Women in Music could help their members by providing guidance about such matters as could BMI and ASCAP.

“Orphan works” live in limbo after a press fails. Apparently, this is a massive problem for composers, film makers, and authors throughout the world as well as in the U.S. The Copyright Office has issued an extensive report about the matter that suggests solutions, primarily in the form of changes to the copyright law. However, the proposed copyright laws are themselves in limbo since Congress has not enacted the needed reforms. A future project could be organizing composers and authors to complain to their representatives in Congress about inaction on the proposed bill.

AuAll: Is there anything that you wish you knew prior to signing your early publication contracts, or that you would do differently today?

EV: Of course, we wish we had known how to protect our rights before signing contracts. All of us are now very wary of such agreements, but it is too late for the 140 works published by Arsis Press. In the case of the dozen composers in the catalog who are deceased, we know of only a few beneficiaries to fight their copyright battles for them. All we can do is proceed with copyright terminations for those works published 35 year ago or less in order to take advantage of the brief 5-year window allowed for such action under current law. But the process is complex and few of the composers are sufficiently persistent to jump over the hurdles required to file for terminations.

It is worth mentioning that there are some publishers who do not take ownership of copyrights for music in the first place. I am published by two of them: Certosa Verlag in Germany and Noteworthy Sheet Music in the U.S. Again, these are small presses like Arsis Press, but anyone published by them retains copyright ownership.

AuAll: When you do regain your rights, what do you hope to do with your musical compositions?

EV: Once my Arsis copyrights revert to me, I will either assign the music to the American Composers Alliance or publish with a company that allows me to retain the copyrights to my music. The ACA also has a legacy program that continues to keep one’s music available into the distant future, so at age 79 that is an attractive possibility for me as well.

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We thank Dr. Vercoe for generously sharing her experiences and hope that her efforts inspire our members, readers, and allies to advocate for sound contract terms and to consider the options available—including termination of transfer and rights reversion—to ensure the long-term availability of their works. Authors can also consult the Authors Alliance/Creative Commons Termination of Transfer Tool at rightsback.org to learn more about termination of transfer.

For more about Dr. Vercoe’s experience with termination of transfers, we encourage readers to check out her article, The Perils of Publishing, in the Fall 2020 issue of the Journal of the International Alliance for Women in Music.

Judge Amy Coney Barrett’s Record on Copyright

Posted October 13, 2020
“President Trump Nominates Judge Amy Coney Barrett for Associate Justice of the U.S. Supreme Court” by The White House is marked with CC PDM 1.0

On October 12th, the Senate Judiciary committee began its discussion of the nomination of the Honorable Amy Coney Barrett to a seat on the U.S. Supreme Court. Prior to her nomination to the Court, Judge Barrett served as a judge in the 7th Circuit Court of Appeals after being nominated to that court by President Trump in 2017. While her three year tenure means there are few clues as to her views on intellectual property, three copyright decisions out of the 7th Circuit, for which Judge Barrett was one of three judges on a panel considering the cases, shed some light on how she might rule in copyright cases. With approximately 40 copyright petitions currently before the Supreme Court, the stakes are high for rights holders and policy makers. It should be noted that Judge Barrett did not write any of the below opinions herself, but participated in deliberations and joined each of them in full. While Judge Barrett’s nomination has been subject to controversy in some circles, there is reason to be optimistic about her views on copyright law.  

Rucker v. Fasano

Rucker v. Fasano was a case in which an author of an unpublished work alleged that an author of a similar published work had infringed her copyright. In 2010, author Kelly Rucker submitted a chapter and synopsis for a novel, The Promise of a Virgin, to a fiction contest sponsored by Harlequin Publishing, a popular trade publisher of romance novels. Then next year, Rucker learned she was not a finalist in the competition. Then, in 2013, Rucker found a book on Amazon entitled Reclaim My Heart written by defendant Donna Fasano. After purchasing a copy and reading the book, she discovered “several similarities between the plot of the novel and her work.” Both novels told “a tale of a wealthy teenage girl who falls in love with a boy of Native American heritage and becomes pregnant, before they are cruelly parted[,]” before “the lovers are reunited years later and . . . rekindle their fiery romance while their child explores his indigenous heritage with his father’s guidance.” Rucker believed that these similarities showed that Harlequin must have given her synopsis and sample chapter to Fasano, forming the basis for her copyright claim.

Ultimately, Rucker’s claim was found to be meritless. After a district court ruled in Fasano’s favor, finding that Reclaim My Heart did not infringe upon Rucker’s copyright in The Promise of a Virgin, Rucker appealed the ruling to the 7th Circuit. The district court had concluded that the novels “were not strikingly similar,” despite sharing some common themes, since “Rucker’s book was a ‘highly sexualized romance’ while Fasano’s was more of a ‘courtroom drama.'” The district court was also persuaded by the fact that Fasano finished a manuscript for a work that later became Reclaim My Heart in 2007—before Fasano began writing The Promise of a Virgin. Fasano also submitted a synopsis of the work to Harlequin in 2006, but her book was ultimately published by Amazon. 

In the 7th Circuit, a three judge panel including Judge Barett affirmed the district court’s holding, focusing on the impossibility of copying where Fasano’s book was written before Rucker’s and where there was not only no evidence of copying, but no possibility that Rucker could have copied Fasano’s work based on the timeline. The court stated summarily that given the factual record, “it is established that Fasano did not copy Rucker’s work,” without which “there can be no viable claim for copyright infringement.” Rucker’s claim that she “‘believe[d] upon reliable information’ that Fasano had access to the submissions to the Harlequin contest” was found to be insufficient to support an inference that this was the case. 

Vernon v. CBS Television Studios

In Vernon v. CBS Television Studios, writer Antonio Vernon sued several television networks for copyright infringement, alleging that they had stolen his idea for a television show called Cyber Police, for which Vernon had unsuccessfully submitted three scripts to a production company. Vernon alleged that a multitude of television shows on these networks including Intelligence, CSI: Cyber, and Cybergeddon infringed his copyright in Cyber Police based on the similarities between his work and these shows. After a district court dismissed his claims on grounds that his complaint was inadequate, Vernon appealed to the 7th Circuit. 

A three judge panel including Judge Barrett affirmed the district court’s dismissal of Vernon’s complaint. It found that the supposedly copied features of his work, such as “agents fighting cybercrime, ‘romantic strife,’ and ‘computer hijacking'” were “too common and standard to plausibly suggest that defendants’ shows were ‘substantially similar’ to his.” Such elements are known as scènes à faire—features standard to certain types of works, like marriages at the end of romantic comedies and shoot-outs in western films—and are as a rule not protected by copyright. In holding that there was no valid claim for infringement, the court underscored this principle and applied it to a relatively new type of work: technology-driven police television shows. This application of scènes à faire relaxes the threat of litigation for authors that seek to use familiar scenes and elements in their works, even when those scenes and elements involve new and emerging fields and technologies.

Sullivan v. Flora, Inc.

Sullivan v. Flora concerned the question of what constitutes a “work” for the purposes of a copyright infringement suit when the allegedly infringing materials consist of multiple images registered for copyright under a single application. While this may seem overly technical, there are wide-ranging implications for rights holders subject to meritless copyright claims.

In 2013, graphic artist Amy Sullivan entered into an agreement to produce original artwork for two informational videos for Flora, Inc., an herbal supplement company, though she retained the copyright in her work. Later that year, Sullivan discovered that Flora had used her artwork in promotional advertising, which the agreement between the parties did not authorize. Sullivan contacted Flora about the matter, and some of the images were removed from the promotional advertising materials. Sullivan proposed a licensing agreement whereby Flora could pay for the continued use of her artwork in the promotional materials. Flora refused, whereupon Sullivan filed suit. A jury ruled in Sullivan’s favor, finding Flora had infringed Sullivan’s copyright in 33 individual illustrations and awarding her $3.6 million in statutory damages. Flora then appealed the determination to the 7th Circuit.

One issue that loomed large in the litigation was the question of whether the 33 images used by Flora without proper authorization constituted a single work, or 33 separate works, for purposes of copyright. All the illustrations were registered on the same copyright application, but on the other hand they were separate, discrete illustrations. Because statutory damages in a copyright infringement lawsuit are calculated on the basis of the number of works infringed, the question had serious implications for Flora’s financial obligations but also for copyright claimants more broadly. This was the question before a three judge panel including Judge Barrett. The 7th Circuit considered, as a matter of first impression for that circuit, “what constitutes ‘one work’ in a fact pattern where a jury found infringement on multiple works registered in a single copyright application.”  The court held that this inquiry should ask whether the works have substantial independent economic value on an individual basis, or if the value lies in their compilation and relies on the presentation of all works in concert. This fact-sensitive analysis makes it more difficult for a copyright claimant to prevail on large damages awards based on infringement of multiple images where the images function as a compilation. After laying out this test, the court remanded the case to the district court for application of the proper analysis to Sullivan’s claim, vacating the $3.6 million damages award. 

Sullivan v. Flora is still ongoing—in early 2020, the parties submitted their briefs to the district court for the Western District of Wisconsin in support of their positions regarding damages.

Key Takeaways for Authors

While it is difficult to extrapolate a comprehensive view of copyright law from copyright decisions Judge Barrett participated in during her time in the 7th Circuit, a theme of skepticism of overbroad copyright claims and excessive damages emerges from these three decisions. In both Rucker v. Fasano and Vernon v. CBS, the court rejected copyright infringement claims based on tenuous similarities between two works, signaling that more is required than mere thematic similarity to prevail on a copyright infringement claim. Together, the cases make clear that a belief that a later work is simply too similar to the author’s own work alone cannot be the sole basis for a successful copyright claim in the 7th Circuit. 

Sullivan v. Flora also has important implications for authors, since the judges in the case demonstrated a concern about excessive damages in copyright actions. One of Authors Alliance’s founding principles is ensuring copyright’s remedies protect our members’ interests, and this decision serves as an obstacle for excessive damage awards in the 7th Circuit: a claimant must prevail on proving that each compiled work has independent economic value before being awarded damages based on multiple incidences of infringement: multi-million dollar awards like the plaintiff in that case received cannot be the default in such situations.

House Judiciary Committee Hears Testimony on Revisions to Section 512 of the Digital Millennium Copyright Act

Posted October 6, 2020
Photo by Louis Velazquez on Unsplash

On September 30th, the United States House of Representatives’ Judiciary Committee heard testimony from a variety of stakeholders regarding potential reforms to Section 512 of the Digital Millennium Copyright Act (“DMCA”), a law passed in 1998 which made reforms to U.S. Copyright Law. Section 512 provides for—among other things—a so-called “safe harbor” from copyright liability for online service providers (“OSPs”) that host user-generated content, provided those OSPs have a system in place that allows rights holders to request that infringing content be removed and follow other requirements outlined in the statute. This has given way to the current system of notice and takedown, whereby copyright holders formally request the removal of allegedly infringing content, and with which many who create, post, and access content online are all too familiar. 

Background

In May of this year, the Copyright Office released a report five years in the making, evaluating the effectiveness of Section 512. In the report, the Copyright Office concluded that the balance Congress sought to achieve in Section 512 is, in its view, “askew,” concluding that many creators are struggling to earn a livelihood in light of the pervasiveness of online infringement and the practical difficulties of having infringing content removed. 

Authors Alliance has written before about the issuance of the report, as well as the impact of Section 512 on non-infringing creators and universities and research libraries. While Authors Alliance embraces the underlying premise that Section 512—now more than 20 years old—is in need of updating to meet the demands of the modern information society, we believe reforms should focus on protecting creators’ interests in making their works available online. Last week, industry representatives, content creators, and policy advocates testified as to the advantages and challenges of Section 512 as it currently stands.

The Hearing

Six stakeholders testified at the hearing and provided additional written testimony: representatives from the Library Copyright Alliance, the Copyright Alliance, Public Knowledge, and the Computer & Communication Industry Association in addition to an individual singer-songwriter and a visual artist who is the leader of the PLUS Coalition. The hearing was polarizing, with two distinct ideological camps emerging, disagreeing both on whether reforms were needed to Section 512 as well as what reforms would address the various problems posed by the provision. On the one side, represented by the Library Copyright Alliance and Public Knowledge, witnesses expressed doubt about the Copyright Office’s conclusion that the “balance” Section 512 sought to achieve between facilitating free speech online and protecting copyrights is askew, tilting too far in favor of speech at copyright holders’ expense. Public Knowledge further proposed a need for reform in the opposite direction, i.e., making it more difficult to get allegedly infringing content removed, due to the current notice and takedown regime being over-broad as well as posing a threat to free speech online and the lawful fair use of others’ work. 

On the other side, the remaining witnesses argued that the current notice and takedown system hurts creators, who must vigilantly search for infringement online and request removal of infringing content through what they described as a highly burdensome “constant whack-a-mole” process which can require consulting legal counsel. They argued that this can result in less time for artistic endeavors and can compromise an already fragile income stream for creators. Both the visual musical artists testified that they had had such experiences. 

Members of the committee seemed similarly divided in their sympathies to the two camps. Some representatives expressed concern for the depressing effect that infringement could have on content creators’ income, and others focused on overzealous takedown notices and the negative impact that could have on add-on creators—such as YouTube personalities that rely on fair use to comment on culture—and internet users at large. 

Many of the stakeholders discussed whether technical solutions could go some of the way towards ameliorating the problems posed by Section 512, but disagreed over whether a technical solution was possible. Stakeholders and members of the committee emphasized the overwhelming amount of takedown notices the largest platforms like YouTube receive, as well as the imperfection of existing algorithms to correctly detect infringement on these platforms.  The representative from Public Knowledge echoed Authors Alliance’s concerns about the missing stakeholders at the hearing: internet users whose access to non-infringing content is disrupted when it is removed due to overzealous takedown notices as well as add-on creators whose speech is suppressed.

What’s Next?

Senate and House Committees are continuing to review the provisions of the Digital Millennium Copyright Act with an eye towards proposing reforms. We will keep readers informed about major developments. Recently, the Copyright Office also launched a new website on the DMCA and its key provisions, including Section 512. For more information, watch the full hearing and read written testimony on the House Judiciary Committee’s website. 

Authors Alliance Voices Concerns About the Copyright Small Claims Tribunal to Senate Committee

Posted September 30, 2020
U.S. Capitol
photo by Martin Falbisoner | CC BY-SA

Tomorrow, the Senate Judiciary Committee will consider S. 4632, the Online Content Policy Modernization Act, which would establish a small claims tribunal within the Copyright Office as an alternative to federal court for pursuing copyright claims. Authors Alliance has concerns with the provisions in the current draft.

As we’ve previously written, Authors Alliance supports reducing barriers to copyright enforcement for those with limited financial resources by providing a faster and cheaper avenue to remedies. Today, the high cost of litigation keeps many independent authors and other creators from enforcing their copyrights. A well-designed copyright small claims process could fix this but, unfortunately, the copyright small claims dispute provisions in S. 4632 invite abuse and pose a high likelihood of harm to authors as both claimants and respondents in the proposed tribunal.

To address problems with the current draft of S. 4632, we urge the Committee to:

  • Limit statutory damages to cases where it is impossible or cost prohibitive to prove actual damages and develop principles to guide awards of statutory damages;
  • Remove restrictions on the grounds for judicial review of the tribunal’s decisions;
  • Include additional safeguards to deter copyright trolls and preserve the utility of the small claims tribunal for independent authors and creators;
  • Require potential respondents to affirmatively opt-in to the small claims process; and
  • Narrow the jurisdiction of the small claims tribunal.

Read more about these recommendations in our letter to the Committee.

Independent authors and creators should have access to a low cost way to enforce their copyrights and vindicate their right to use others’ copyrighted works in lawful ways. We urge the Committee to modify the bill to better serve the creators it is intended to benefit.

Authors Alliance Congratulates Shira Perlmutter, New Register of Copyrights

Posted September 23, 2020
photo by Carol Highsmith | public domain

Authors Alliance congratulates Shira Perlmutter on her appointment as the Register of Copyrights and director of the U.S. Copyright Office.

Earlier this year, in response to the Librarian of Congress’ request for public input, Authors Alliance emphasized the importance of appointing a Register who is willing to take into account the diversity of viewpoints among creative communities. Ms. Perlmutter’s record gives us confidence that she will do just that by bringing an open-minded and balanced approach to her new role.

While at the U.S. Patent and Trademark Office, Ms. Perlmutter co-led a task force charged with consulting a wide range of stakeholders and drafting a White Paper on Remixes, First Sale, and Statutory Damages. The white paper recognized the importance of fair use in allowing remix culture to thrive, recommended amendments to the Copyright Act to address concerns with excessive and inconsistent statutory damages awards, and acknowledged library concerns with e-book licensing agreements. Ms. Perlmutter also co-led the U.S. delegation that negotiated the Marrakesh Treaty, which created a set of mandatory limitations and exceptions for the benefit of blind, visually impaired, and otherwise print disabled readers, helping authors’ works to reach a wider audience around the world in accessible forms. As a supporter of the importance of limitations and exceptions, statutory damages reform, and library lending practices, Authors Alliance is heartened that Ms. Perlmutter’s record reflects a nuanced consideration of stakeholder input.

We look forward to working with Ms. Perlmutter to promote a fair and balanced copyright ecosystem and to supporting the Office’s plans to modernize its registration and recordation infrastructure.

Appeals Court Affirms that Facts and “Asserted Truths” Are Not Protected by Copyright

Posted September 22, 2020
“Jersey Boys @ August Wilson Theatre on Broadway” by BroadwayTour.net is licensed under CC BY-SA 2.0

A recent decision from the Ninth Circuit Court of Appeals, Corbello v. Vali, may finally put to bed over a decade of litigation over alleged copyright infringement in the hit Broadway musical, Jersey Boys. The play depicts the history of the musical quartet, Four Seasons, which rose to prominence in the 1960s. The Ninth Circuit held that historical facts—even those which an author later claims are untrue—are not entitled to copyright protection, and cannot form the basis of a successful copyright infringement claim. The decision provides substantial clarity for authors wishing to use historical facts from other works in their own later works, and affirms that facts are not copyrightable—full stop. 

Background

The case concerned several alleged similarities between Jersey Boys and an unpublished autobiography written by Four Seasons member Tommy DeVito and a ghostwriter, Rex Woodward. The autobiography purported to be a “straightforward historical account,” and describes itself at the outset as the “complete and truthful chronicle of the Four Seasons,” narrated by DeVito. The work was completed in 1991, but Woodward died shortly thereafter, and DeVito and Donna Corbello—Woodward’s widow and the plaintiff in the case—were unable to find a publisher for the work. 

In 2005, Jersey Boys debuted on Broadway, where it ran for 12 years. The musical also toured North America and the United Kingdom several times and won four Tony awards—by all accounts a huge success. Corbello believed that the success of Jersey Boys could lead to increased interest in the band, and in 2007, sought to confirm the copyright registration for the unpublished autobiography, but discovered that the copyright for the work had been erroneously registered in DeVito’s name only. After re-registering the copyright for the autobiography in both authors’ names, Corbello learned that the play’s writers were given access to the work to use in their research.

In 2007, Corbello sued DeVito for breach of contract, various forms of copyright infringement, equitable accounting, and other causes of action. After multiple proceedings, the case proceeded to trial, where the jury found that Jersey Boys infringed the unpublished autobiography and that 10% of the play’s success was attributable to the autobiography.  However, the district court subsequently found that Jersey Boys’ use of the copyrightable portions of the autobiography was fair use—a doctrine which allows creators to use brief portions of copyrighted works without permission or payment for certain purposes, such as criticism, news reporting, or parody. Unsatisfied with this finding, Corbello appealed to the Ninth Circuit, which heard the case in June 2019.

The Decision

In a decision by Circuit Judge Marsha Berzon, the court rejected Corbello’s argument that the similarities between the Jersey Boys and the autobiography infringed Corbello’s copyright in the autobiography, overturning the jury’s finding of infringement altogether without discussing whether fair use would have applied. This was because each of the elements that the Jersey Boys creators took from the autobiography were historical events and facts, which are not protected by copyright—a basic tenet of copyright law. 

The court examined in detail each of the alleged similarities between the autobiography and the play—including certain dialogue, origins of Four Seasons songs, and the occurrence of a particularly raucous party—and concluded that the similarities were due to the use of the same historical facts in both works. In some cases, the similarity was even based on a well-known event that DeVito had recounted elsewhere, such as a staged murder in one of the band member’s cars. The court concluded that each similarity between the two works was based on historical facts as well as shared common phrases and what are known scènes-à-faire—ideas and scenes that are standard in the treatment of a certain topic, such as a shoot-out in a western film.

“Asserted Truths”

Judge Berzon rejected Corbello’s argument that because some of the facts Jersey Boys took from the autobiography were apparently fabricated by DeVito, those should be entitled to copyright protection as non-factual creative expression. In what it called the “asserted truths doctrine” (known as “copyright estoppel” in other jurisdictions), the court stated that where a text represents itself as historically accurate—and therefore factual in nature—the copyright holder cannot later claim that the work was fictionalized in order to obtain copyright protection. 

The court examined both the text of the autobiography and the manner in which it was submitted to publishers and found it was represented as fact: the work explicitly represented itself as factual, and pitch letters emphasized that the autobiography would disclose “the truth” about several events and reveal “the secret past that the performers successfully hid for almost three decades.” The fact that Corbello now claimed that some elements of the autobiography were fictionalized or inaccurate and that these same elements were present in the play did not change the court’s analysis: what matters is how the text is presented, not how it is later characterized by the copyright holder. 

Finally, the court rejected the argument that the “asserted truth doctrine” did not apply to an unpublished work, finding that regardless of whether the audience for the work is “a few actual readers” (for unpublished works) or “the general public,” the representations of truthfulness determine the factual nature of the work for purposes of copyright protection. It is thus the apparent nature of the work—in this case, a factual autobiography—and not whether it is in fact fully accurate or factual, that determines whether it is entitled to copyright protection, or unprotected as factual in nature.

Implications for Authors

This decision clarifies the bounds of unprotected facts under copyright law and simplifies the process a court must undertake to determine whether allegedly infringing uses are factual in nature, or events recounted actually happened—it need only look to the work itself to see if it represents itself as factual. It also underscores the important point that facts are not protected by copyright law, and makes it easier for creators to use facts from other works in their own works without fear of copyright liability. The decision serves as an obstacle for those who seek to bring copyright infringement suits based solely on factual information, strengthening protections for authors who seek to use facts present in copyrighted works to contribute knowledge and scholarship to their communities. It also makes clear that these creators will not be held liable for using factual information from other works that later turns out to be untrue, further easing the threat of copyright liability when nonfiction works are relied upon as accurate.