An Evaluation of Copyright Ownership and Infringement

Scrooge McDuck (Photo credit: Wikipedia)

Case Study Challenge 1
You’ve had an idea for an animated character in your head and have talked about it with your friends for years. One day, you sketch out the character using pen and paper and name it Tex Tip Top. You give a copy of the sketch to a friend who does 3D animation, and you ask her to help you fill in details and smooth it out. She does all that and more. Unbeknownst to you, she creates an entire storyline around your character and makes it into a 3D animated film that wins the top prize at an online film festival. In the credits, she thanks you for your idea.

1. Based on your knowledge of copyright, answer the following questions:

a. Who owns the copyright to Text TipTop’s name, the overall character, and his specific attributes? Include arguments for and against both sides, and then state which one you believe is correct.
b. Based on you answer, who can make Tex TipTop into an action figure and why?
c. Who do you think owns the movie, and why?
d. Can these items become public domain? How?

Copyright covers the fixation of an idea — it must be expressed in a solid, tangible form of written word, drawing, photograph, recording — it cannot just be an idea.(Stim, 2010). However, once that idea is fixed, in a tangible form, the author has copyright protection, even without applying for a copyright. Since 1989, all original works expressed in a tangible medium become instantly copyrighted (17 U.S.C. § 101, 2008). However, it is not always that straight forward.

Examine Case Study 1: “You had an idea for an animated character in your head and have talked about it with your friends for years. One day, you sketch out the character using pen and paper and name it Tex Tip Top. You give a copy of the sketch to a friend who does 3D animation, and you ask her to help you fill in details and smooth it out. She does all that and more. Unbeknownst to you, she creates an entire storyline around your character and makes it into a 3D animated film that wins the top prize at an online film festival. In the credits, she thanks you for your “idea.”

One of Scrooge’s first panels in Christmas on Bear Mountain. (Photo credit: Wikipedia)

Since you drew the fictional character on paper and named it, you automatically have a copyright; cartoons and drawings are not the exception. “Thus a drawing, picture, depiction, or written description of a character can be registered for copyright.” (U.S. Copyright Office 2010, p.1). However, if you have no evidence that you drew this character first, no dated copy, no registration with the copyright office, then you could be unprotected and without copyright benefits. When you file with the copyright office, the date of registration is the date the office receives the materials and fees (U.S. Copyright Office, 2010). Fictional characters are often worth more than the books and stories from which they gain their attributes (Foley, 2009). Intellectual property has become the legal means to protect fictional characters that are worth millions. According to Foley, Forbes magazine lists the net worth of the top fictional characters each year. In 2007, Walt Disney’s character, Scrooge McDuck was valued over $28.8 billion (Foley, 2009). The character, Tex, may have protection under copyright law, but only after he has character and life, “usually copyright law protects a fictional character within the context of the work in which the character appears.” (Zecevic, 2005, p. 365). However, fictional animated characters have the potential to reap large profits as is evident in the fact that heirs of Jack Kirby have tried to reclaim copyright of the comic book characters he created in Marvel Comics (Scipior, 2011).

Although it is always difficult to bring up legal matters with friends, the friendship will have a better chance if the business relationship is outlined on paper in the form of a legal agreement. Most companies will not share any ideas until you have signed a legal non-disclosure form. It is better to take this stance with a friend as well. Unfortunately, at the end of the award-winning film, your friend only credits you with the “idea,” which does not bind her legally to share any copyright benefits. However, you have a case in that you gave her a fixed, tangible drawing of the character, and in doing so; you held a copyright of that drawing (17 U.S.C. § 101, 2008). She could actually be infringing on your copyright of Tex, even if you did not file a formal copyright (Stim, 2010). The fact that she completed the 3D animation without including you may indicate that she thought you had no interest and you freely gave her the drawing, or she knew it was a good character and decided to run with it so she could have all the benefits. Of course, your idea, even though sketched-out, would not have resulted in the film without your friend. A legally binding agreement should have been spelled out in a formal contract at the beginning. In all likelihood, she holds the rights to the film and you may hold the right to the character, as you drew it.

The name of your character, Tex Tip Top, though clever enough, cannot be copyrighted, as names and titles are excluded from copyright protection (Stim, 2010). There is still the possibility of a trademark, but that is not clear either. “Federal trademark protection does not attach automatically when a character is created (Feldman, 1990, p. 705). The name cannot be trademarked until it is identified with goods or services (Feldman, 1990). If Tex Tip Top is made into an action figure, his name can be trademarked with legal protection. There is some conflict in who can make the action figure. Legally, you hold a copyright of the figure drawn on paper. She most likely has the film right, where Tex gets his character. Since the character was fully developed by your friend, you may not be able to trademark the name Tex Tip Top as the sole owner, because of another complication of the trademark law that requires the character to have developed “secondary meaning” (Foley, 2009). For example, Mickey Mouse is immediately connected with Disney. Therefore, Tex has not been in the public view long enough to be associated with it’s creator, and probably cannot be trademarked until years later, if he gains in popularity. Tex would have secondary meaning with the film of your friend. This seems to be a bit backwards, no protection until the character becomes as famous as Mickey Mouse, but for some creators, such as the characters of Star Wars, their infamy was not delayed. The time to file the trademark seems to be difficult to determine. If you claim the copyright to your fictional character as drawn on the paper you gave your friend, you may be able to produce the action figure, after which time a good is now provided and a trademark may be assigned.

The fictional character, Tex Tip Top may have copyright protection, separate from the movie. This means two copyrights – the movie and the fictional character. Tex Tip Top must be “deserving of copyright protection separate from the original work in which the character first appears.” (Foley, 2009, p. 925). Tex cannot be just a stock character; he must have originality. The creator of the film, who took your drawing and turned it into a fictional character within a story, may not be able to claim the copyrights. Assuming she wrote the script and story for Tex, she may apply for a copyright on Tex and have “exclusive right to create derivative works.” (Foley, 2009, p. 926). But, this is complicated, because the drawing of the character was already fixed on paper by you, the originator, who can claim copyright (U.S. Copyright Office, 2010). However, the law is not that clear and the courts must often decide on copyright infringement of fictional characters, determining if the character is even worthy of protection. (Foley, 2009) For example, “Detective Comics, Inc. sued Bruns Publications for infringement of the fictional character Superman.” (Foley, 2009). In this case, the court ruled that the Bruns character, Wonderman, infringed on the character of Superman under the distinct delineation standard, that Superman embodied “an arrangement of incidents and literary expressions original with the author” (Foley, 2009, p. 928). The court found that Wonderman had too many similarities to Superman, yet they did not want to forbid any and all characters that were heroic in nature. Superman had protection under law by his character – the method of power he used and his costume (Foley, 2009). The more distinctive the fictional character of Tex Tip Top, the better chance he will hold up in court as a distinct delineation. Under this description, the friend who produced the Tex Tip Top into a 3D animation film, writing the story and giving Mr. Top character in a tangible form, may claim to have ownership. However, if she developed that character and did not give him a unique personality and costume, she could be infringing on another fictional character already famous, such as the Superman controversy. She could be infringing on your original drawing, or if she changed it, and copied another, she may be infringing there. An equitable agreement would be to share the trademark and copyrights of the character and film, and all proceeds from the sale of any action figures or other paraphernalia. But of course these legalities should have been formed prior to any disclosure.

The question of when Tex Tip Top enters the public domain remains to be answered. When a fictional character is covered by both a trademark and copyright, he may never enter the public domain. The copyright can expire, but the trademark continues (Foley, 2009). In the 1970s, two cases went to court that seemed to support the protection of the trademark after the copyright expires for illustrations and “graphic representations of characters.” (Foley, 2010, p. 955). With respect to a fictional character, the other case in court ruled “if the fictional character serves a trademark function, it will be removed from the public domain in the same manner as any other trademark.” (Foley, 2010). Also, of conflict is the possibility that the trademark can limit the fair use copyright. This is of particular concern, when the purpose of the copyright is not only to protect the creator for a designated period of time, but also to encourage more creative talent by building upon previous creations (Stim, 2010).

Case Study Challenge 2
You find a great photo on the Web, download it to your computer, modify the photo with one of your own photos in an image-editing program such as Adobe Photoshop, and then silk-screen it onto 20 shirts.

1. Based on your knowledge of copyright, identify whether the following are copyright myths or facts, and give the reasons for your answer.

a. There was no copyright symbol on the Web page where you found the photo, so it is not protected by copyright.
b. Because the photo was freely available on the Web, it is in the public domain.
c. The picture looked really old, so it is probably in the public domain.

2. Based on your answers, read the following statements and identify any rights of the original author that might have been violated.

a. You’re going to donate the shirts for a charity’s silent auction, so you won’t make any money off of it.
b. You’re not selling the photo, just the shirt.
c. You plan to send half the proceeds from your t-shirt sales to the Web site where you found the photo.
d. Determine if the image is public domain.

In Case Study Challenge 2, you find a great photo on the Web, download it to your computer, modify it with Adobe Photoshop and silkscreen it onto 20 shirts. Even though there was no copyright symbol on the Web page where you found the photo, this is no indication that the photo is not copyrighted. As of 1989, the U.S. Copyright Law does not require creators of fixed works to formally register their works to have a copyright (Waxer & Baum, 2007). Once the author of the photo published it on the Internet, unless he specifies that it is in the public domain, you have no way of knowing the legal implications of using the photo. In fact, you would have to assume that the owner holds a copyright, since it is automatically granted once fixed on that Web page (Stim, 2010). The only way to determine if the owner has placed it in the public domain is to contact the said author. Otherwise, the owner of the photograph has reason to notify you to cease and desist, and can file a suit against you for using it without authorization. Even a photo that appears to be old is not a safe download. The only photos that are in the public domain are (1) those that were published prior to 1923; the copyright has expired (2) those from 1923 to 1964 when the owner did not renew the copyright, (3) the owner placed them into public domain (4) works published before 1989 that were not officially copyrighted (Waxer & Baum, 2007).

The owner of the photo has all rights and therefore you cannot legally silk screen the photo on a shirt. Copyright protects the creator of the photo and prohibits its use by others, as an original or in altering it (Waxer & Baum, 2007). Donating the proceeds from the sale of said shirts to the owner of the photo does not preclude a lawsuit being filed against you. There are no legal provisions for use of a copyrighted photo and forwarding the monetary benefits to the owner. In fact, the purpose of copyright is to protect the owner from infringement that might result in the use of the protected photo in a manner that the owner would not approve (Stim, 2010).

A better option than selecting a photo with no indication of copyright is to choose among those that are in the public domain or creative commons. Photos taken before 1923 are in the public domain and can be used without complication of law. The Library of Congress has a searchable database of available photos (Waxer & Baum, 2007). Other sites are universities, government sites, public libraries, and photo sharing sites that display the Creative Commons mark. Photos taken before 1989 may be difficult to determine if the creator filed a copyright. You also have the problem of earlier photos that may or may not have been renewed with a copyright. For this reason, it is best to assume that photos are copyrighted unless specified otherwise. Those that are in the Creative Commons will be available with some restrictions, most notably, to give attribution. The Creative Commons site allows creators/authors to choose the type of restrictions they desire and post them with the photo – the “copyright holder keeps copyright but allows people to copy and distribute copyrighted work provided they meet stipulations in the license.” (Waxer & Baum, 2007).

United States Capitol, 1830s

Collection: A. D. White Architectural Photographs, Cornell University Library

Accession Number: 15/5/3090.00571

Title: United States Capitol, 1830s

Architect: Benjamin Henry Latrobe (English, 1764-1820)

Print date: ca. 1829-ca. 1839

Building Date: 1793-1962

Location: North and Central America: United States; District of Columbia, Washington

Materials: lithograph

Persistent URI: http://hdl.handle.net/1813.001/5spn

There are no known U.S. copyright restrictions on this image. The digital file is owned by the Cornell University Library which is making it freely available with the request that, when possible, the Library be credited as its source.

References

Feldman, D.B. (1990). Finding a home for fictional characters: A proposal for change in copyright protection. California Law Review, 78(3). Retrieved from http://ehis.ebscohost.com/ehost/pdfviewer/pdfviewer?sid=b980221e-258c-4e0a-b60d-0baefa3cb7c9%40sessionmgr4&vid=2&hid=116

Foley, K. (2009). Protecting fictional characters: Defining the elusive trademark-copyright divide. Connecticut Law Review, 4(3). Retrieved from

http://burger.law.uconn.edu/system/files/private/foley.pdf

Scipior, V. J. (2011). The amazing spider-man: Trapped in the tangled web of the termination provisions. Wisconsin Law Review, (1).

Stim, R. (2010). Stanford University Libraries: Copyright & Fair Use. In Overview and Resources. Retrieved from http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/.http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview

United States Copyright Office. (2010). Cartoon and Comic Strips. Retrieved from http://www.copyright.gov/circs/circ44.pdf

Waxer, B. M., & Baum, M. L. (2007). Copyright on the Internet. Boston, MA: Thomson Course Technology.

Zecevic, J. (2006). Distinctly delineated fictional characters that constitute the story being told: Who are they and do they deserve independent copyright protection? Vanderbilt Journal of Entertainment and Technology Law.