Third party sequels, prequels and fan fiction – mis-taken identity?

Mailin Balan, Associate, Shoosmiths

Fanfiction is described by the online writing platform Wattpad as ‘writing that remixes characters, places, or plots from existing narratives to tell new, original stories.‘ Here Mailin Bala, Associate at Shoosmiths considers whether copyright owners are able to protect their plots, themes and characters from third party sequels, prequels and fan fiction, and reveals a complex legal arena.

The announcement by Quercus Publishing that a fourth book in the ‘Girl with a Dragon Tattoo‘ trilogy written by David Lagercrantz is to be published in August this year has promoted the resurgence of the question: can copyright owners can protect their plots, themes and characters from being used in unauthorised works created by third parties.

Of course, in this particular case, the question does not arise, as the estate of Stieg Larson and Quercus Publishing, as copyright owners, have commissioned the new book themselves. But what is the legal position where that is not the case? What can copyright owners do (if anything) to protect their plots, themes and characters from unauthorised use?

The legal position

We take a look at how a copyright owner can seek to protect its works below. However, to put this all in context, let’s first look at the basics of what constitutes copyright and how it can be infringed.

English law specifies a list of works in which copyright can subsist, including literary, dramatic and artistic works. To infringe a copyright work, a person must have carried out, or authorised the carrying out, of one or more of a number of prohibited acts (including copying or adapting the original work) in relation to a ‘substantial part’ of the work, without the consent of the copyright owner. ‘Adapting’ is very narrowly defined to include making a translation and making a non-dramatic work into a dramatic work and vice versa and so it is of limited use when looking at the appropriation of plots, themes and characters in the context we are looking at.

When looking at what constitutes a ‘substantial part’ of a work, the courts will look at all the circumstances of a particular case to make that assessment and will look not only at the quantity of the original work that has been copied, but also at the quality of what has been copied. So, it is conceivable, that even copying a minimal amount of the work can constitute a substantial part, where the extract copied is a significant or important part of the original work.

If we look at the misappropriation of plots and themes first; the English courts have determined that it is possible to protect these elements by copyright, but only where those elements are sufficiently developed and delineated beyond mere ideas so that they contribute to the form of the story being told. The most recent case exploring this aspect (albeit in a summary judgment) was Allen v Bloomsbury Publishing plc [2010], where J.K Rowling was accused of infringing the copyright in a book called ‘Willy and the Wizard’. In that case, the judge gave some helpful guidance clarifying that copyright can protect the content of a literary work, including the selection, arrangement and development of ideas, facts, incidents and the like. In assessing the crucial question as to whether a substantial part had been taken, the court should have regard to all the facts of the case including the nature and extent of the copying; the quality and importance of what had been taken; the degree of originality of what had been taken or whether it was commonplace; and whether a substantial part of the skill and labour contributed by the author in creating the original had been appropriated.

If we look at the protection of characters however, English case law does not currently support the notion of being able to protect a character through copyright. By way of example, in the case of Conan Doyle v London Mystery Magazine Ltd [1949] the court refused to grant an injunction to stop London Mystery Magazine from using the Sherlock Holmes name and his address, 221b Baker Street in their publication. Similarly, in Tyburn Productions Ltd v Conan Doyle [1991] the court held that a claim to copyright in the Sherlock Holmes and Dr Watson characters was not justifiable as English law did not recognise such a concept.

Can creators protect works?

So, how can a copyright owner seek to protect its characters, given the lack of protection offered under English copyright law and strengthen its position in respect of the use of plots and themes?

1) Ensure your work is in copyright. Works in the public domain, whether by passage of time (literary works are protected by copyright for life of author plus 70 yrs from end of calendar year in which author died) or because the copyright owner has surrendered her/his copyright are generally free game. Pay particular attention to whether you have complied with different formalities for copyright protection in the different territories in which you will exploit your work, to ensure as wide a scope of protection as possible and the ability to bring an action for copyright infringement.

2) For works that have fallen out of copyright, consider refreshing or reinventing those works in order to set the term of copyright running in respect of the new works. By way of example, the publisher Warne updated the original Beatrix Potter illustrations as well as commissioning Emma Thompson to create ‘The Further Tale of Peter Rabbit‘. To the extent that any unauthorised work contains any facets of these new works, the copyright owner could then potentially claim copyright infringement of those new works.

3) Consider other legal methods for protecting your works; not just copyright. Could you register a particular aspect of your work (e.g. a name or image) as a trade mark, for example? You may also be able to claim under the tort of ‘passing off’. This prevents a trader from misrepresenting its goods or services as being your goods or services and also prevents a trader from incorrectly holding out his or her goods or services as having some association or connection with you. Lastly, can you claim breach of moral rights, in particular your right to object to derogatory treatment of your work?

4) Consider your position in the relevant jurisdiction in which infringement has occurred – your position under copyright laws in that country may be an improvement to the position under English law. For example, the US courts have been willing in a number of cases to protect fictional characters, as well as plots and themes.

5) Since an unauthorised work will not infringe an original work, where a person takes simply expressed or high level ideas from that original work, ensure that any key plots and themes are worked up into detail and fully fleshed out. Even though characters are not currently protected under English law, given the difference of opinion in other jurisdictions, developing plots and themes to a granular level may help you in other jurisdictions.

6) Where you have licensed any rights in connection with the work, ensure that that licence is strictly limited to the purpose at the core of the contract and that there is an express prohibition on the licensee creating any further works based on characters included in the original work and to the extend they are fully developed, any plots and themes from the original works.

Conclusion

Under the limited case law in England, authors and publishers appear to have more of an uphill struggle compared to some other jurisdictions when it comes to protecting their plots, themes and characters from unauthorised exploitation; forcing copyright owners to use a myriad of methods, other than copyright, to protect their rights.

Certainly based on the Tyburn case, the courts appear to be reluctant to introduce what they see as a new concept of protecting a character as a copyright work without that being explicitly provided for in legislation. However, if copyright can protect the content of a literary work (as expressed in the case of Allen v Bloomsbury Publishing) and in particular its central themes and plots, it begs the question, why can that not extend to its sufficiently delineated characters?

Mailin Balan is a commercial lawyer at Shoosmiths, specialising in media (including digital media), copyright, information and technology law.

 

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