Copyright Aid

Hi, Andy,

Many thanks, again, for all your time and expertise. I learned a lot, and am continuing to do so, going down one rabbit hole after another, though it grieves me to say that I’ve yet to run into Alice. Currently, I’m reading all the case summaries for copyright fair use, and I’ll be ...

Hi, Andy,

My apologies for not replying sooner, but you gave me a lot of homework, and each link procreated more, and those, in turn, whole legions. I think you know the tune. And, like Alice, I followed many down the rabbit hole. But, like Robert Frost,

Oh, I saved the rest for another day,
Yet knowing how way leads on to way,
I doubted if I should ever come back.

The California Celebrity Rights Act rather knocked me off feet, but after I’d “heard great argument about it and about,â€￾ I took cheer from the following, to see that, not only was I not down and out, but that I had solid standing:

. . . any person using such personality's "name, voice, signature, photograph or likeness on or in products, merchandise or goods" without prior consent is liable to be sued for damages and profits arising from the unauthorized use . . .

but

"a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of these works, shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work."

My initial thought was, Surely that is the world’s biggest “but.â€￾ The book under alleged indictment is a literary work that is both fictional and nonfictional entertainment. It seemed too sweeping, too good to be true. But then I thought, of course! Were this not so how could there ever be an unauthorized biography, criticism in a magazine or newspaper, a parody of a song, the vitriolic rhetoric of political commentary on radio, television, the internet, documentaries exposing corruption such as employees of planned parenthood caught on tape and hidden camera discussing illegal acts; a painting of Tiger Woods; a depiction of blues brothers Johnny and Edgar Winter in a DC Comic as worms, the Autumn Brothers—all done without permission, and all protected by the First Amendment? Further, the New York County Supreme Court in Nussenzweig v. DiCorcia determined that personality rights do not trump legitimate First Amendment rights of artistic free expression.

Respecting trademark, the District Court of the Central District of California dismissed athlete Jim Brown's theory of false endorsement under the Lanham Act and determined that the First Amendment protects the unauthorized use of a trademark in an artistic work when the mark has artistic relevance to the work and does not explicitly mislead as to the source or content of the work.

I was further shored up to read the Lanham Act’s three-prong test for trademark infringement, at least two of which must be met:

1. the conduct of the defendant must have a substantial effect on United States commerce
2. the defendant must be a United States citizen
3. there must be an absence of conflict with foreign law.

My sending up Elsie the Cow, as you noted, is unlikely in the extreme to have any adverse effect upon Borden Dairy’s commerce. And I am not a United States citizen. Two prongs unmet. Furthermore, Justice Scalia opined, “the plaintiff must have suffered or be imminently threatened with a concrete and particularized "injury in fact" that is fairly traceable to the challenged action of the defendant and likely to be redressed by a favorable judicial decision.â€￾

Then, too, I was all the more pleased to discover, that there is also poetic justice in the countersuit of Malicious Prosecution of Trademark, as the estate of Princess Diana discovered when it had to pay the Franklin Mint $25,000,000 for malicious prosecution.

With that, I take heart to look over at Elsie, pleased to see that she, having twice as many, is on even more solid footing.

That said, as you pointed out, the law regarding personality rights varies from state to state, and with so many states and so many celebrities, well, it is all too many with me; and fortified with the above, I think I am just going to have to publish and be damned. After all, many, such as Adam and Eve, Jonah, Jesus Christ, Shakespeare, Chaucer, Antony and Cleopatra and the like, are long dead, and are somewhat unlikely to bring suit. Of the living, my gut tells me that the majority will not complain, some will even be flattered. Any that do, I shall summarily write them out of my will to educate through entertainment, and boldly include them in my Rogue’s List of Mercenary, Washed-up, Anal-retentive Celebrities Not Worth Including, and see how they like that publicity, which they have my permission to enjoy without let or hindrance, or compensation.

Cheers,

David

Hi, Andy,

Many thanks again for your time and learned insights. I feel as though I’m attending a school of higher learning through you, an ivy-league school at that (Oxford perhaps?).

I was indeed conflating copyright law with trademark law. Being but a few days into this, and having only read the copyright infringement decisions relating to parody/satire, some of which were with Disney, Mattel, Barbie Doll, Warner Bros., DC Comics, Dr. Seuss), I made the leap that these fictional characters and toys, etc., all must surely be covered by trademarks.

I am pleased to read that you don’t feel I need to comply with Borden’s demand; however, I feel it is likely that Borden would press their suit, even knowing they might not prevail, calculating that they can, as you suggest, bully an individual who doesn’t have the resources to mount a protracted defense. And as I use some 15 such fictional characters, all of whom I’m assuming will be trademarked, it could mire me in endless litigation. So, reluctantly, I began today replacing these characters with fictional characters of my of my own devising, or real persons, living or dead, which illustrate the great majority of the stories. Yet it occurs to me now that I might write backup stories for these, and publish the book as is, and if I get other cease and desist letters, replace them. I’m assuming that if you get a c.a.d. (gotta love the acronym), and you desist, that that ends it. It may be that some would not complain. Question: if I were to use a famous fictional character with a pedestrian name (let us say Tom Jones) and which name is trademarked, yet I represent this character as being a person wholly unrelated to the famous Tom Jones (assuming I didn’t accompany the story of the pedestrian Tom Jones with an image of the famous one), am I thus saved harmless? Or could the trademark holder argue, “Yes, but you knew very well—didn’t you?—that people would naturally make the association with my famous Tom Jones, and therefore you were seeking to co-optively piggyback upon his fame, thus infringing on my trademark in an all-too-transparently devious manner.â€￾ [tongue out of cheek]

Regarding using the photo of Elsie: if I did proceed with the Elsie story, I would try to get permission from the copyright holder, which may in fact not be Borden. This spawns several questions regarding images:

1) if you take an image and transform it in a major way, is this considered fair use?

2) I previously read in one of the threads on this forum that if you post a video on YouTube, that you are in effect waiving your copyright protection bye-bye. If this is so, then there is no problem with using a screenshot? But I assume that if someone were to post a video that he doesn’t hold the copyright to, that the actual copyright holder would still retain copyright protection?

Regarding searching of trademarks, is searching the USPTO database sufficient, or do you have to search elsewhere? I would greatly appreciate any links, in the event that some of the fictional characters I use are not trademarked, hence there would be no need for me to change them.

Thanks in abundance and in advance for any insights you may offer.

David

By the bye, I live in beautifully tropical, relatively low-populated Belize.

Hello, Andy,

Thank you very much for your time and expertise in crafting such a detailed response. The legalese of it all makes me feel doubly guilty: first, like I am a dastardly criminal desperately seeking to avoid my justice deserts; second, that I have, through my pseudonymous subterfuge, put you to such pains to cover the manifold legal contingencies and courses of action. When, in fact, mine is quite a simple case of alleged trademark infringement, which, I can see, not least owing to your response, is something that will consume, and in short order, exhaust my meager savings and what little time I have left in this life. Therefore, I am now wonderfully at liberty to drop my suedonym and come clean about my alleged nefarious crime.

I have written, over the course of some years, a comprehensive doubly novel grammar covering 330 rules of grammar, punctuation, spelling, and style. What is doubly novel about this grammar is that it is a work of nonfiction written in the guise of a novel. Each rule takes the form of a one-page (81/2x11) story in the manner of a fable (“a short narrative making an edifying or cautionary point, often employing as characters animals that speak and act like humansâ€￾), which you understand, of course, makes each one literally fabulous, each having as its aim the teaching of a moral (rule). A further novel twist is that each is illustrated by one or more celebrities. And so it is that we come to the alleged trademark infringement. Elsie the Borden Cow very charmingly and endearingly illustrates the rule Use the imperative mood to express command. As each rule is further illustrated by an accompanying photo or illustration, I found a charming photo of Elsie being presented with a 70th birthday daisy cake presented to her by Selena Gomez. (There have been 33 Elsies since the first in 1939). I wrote to Borden Dairy and asked if they were the copyright owner of the photo, and if they would grant permission to use it, or another of their choosing. Subsequently, I received a letter from their law firm stating that Elsie and Borden are registered trademarks and that they couldn’t grant permission. Well, had he stopped there it would have been sufficiently lawyerly to make their “we are not amusedâ€￾ point. But he had the effontery to append that, since my book was not yet published, it would not be too inconvenient to remove the photo and all references to Elsie and Borden from the book, and at my earliest convenience to inform him that I had done so. From my unpublished book. That was an abridgment too far, and like waving a red flag in front of a bull. And were I not at such a great remove I would have said, “Bring it on,â€￾ because, having read 21 parody/satire rulings, mine is as strong a case of fair use as any, satisfying all four counts:

1) it is both a parody in that it “imitates for comic effect or ridicule,â€￾ and a satire, as Elsie says,

“Maybe there’s a breed of cow I haven’t heard about (I could never herd about anyone) that expresses milk high in irony. Yes, surely that’s it; a special breed that exists (it can’t be called living) behind the Iron Curtain where the prevailing mooed is there’s no such thing as a strong request, let alone a polite one; just stern commands and bossy orders (Obey!). I got wind once (common in us cows who eat a lot of grass) of a herd of cowmissars there that go around giving such moody imperatives; a breed that, instead of giving milk, ironically milks the people, like Farmer Borden, dry. But I had thought such talk fancy. Maybe these cowmissars can get themselves in the mood to boss their calves, their own flesh and milk, around with ‘Give it up for the State!’; ‘Chew your cud—now!’; and ‘Shut up about your damned God!’ in order to make themselves understood on behalf of the Mother Country, but I can’t even contemplate such a State of existence.â€￾

As such, it is highly transformative.

2) It’s purpose is educational

3) I use no more of the original work than necessary (little more than the trademarked terms Elsie and Borden)

4) due to its parodic nature it is highly unlikely to be confused with any Borden Dairy products or interfere with any potential market for the original.

This raises some trademark questions:

1) Are trademarks perpetual as long as the business or individual perpetuates them?

2) Since trademarks are specific to the term or image, how close can you legally come (say Mikey Mouse, Supperman, Hairy Potter) without infringement? I’m guessing that if it’s just the name, you can come that close, but that if, in addition, you also appropriate their persona and identifying characteristics, not so much! Also, I’m guessing that there’s nothing preventing anyone from using the name Harry Potter in a fictional context that has nothing to do with the original.

I’m sure as I delve into this I’ll have more, but I’ll close by saying, thanks again, Andy, for your time and your kind response.

David Madison

Hello, copyright-thinking people,

This site has been a godsend to me, giving me a good grasp on copyright law. Having spent the last two days poring over it, many of my questions have been answered, and I wish to thank the commenters for their insights and time, in particular Andy J. One pressing ...