Copyrights and movie scripts

Factual Questions
21

The issue around characters is interesting. Character names can’t be copyrighted, but they can be (and, in some cases are) trademarked, and they’re generally treated as separate from the works they appear in. For example, the name and character Batman is a trademark; you can’t use either one without permission from DC Comics. In fact, characters tend to be trademarked separately for each use, so Batman as used for live stunt shows and amusement park rides is a different trademark than Batman as used for stationery products such as party goods, pencils, and so forth. (I assume that there are others, but I’m not looking at each and every entry in the USPTO database.)

Occasionally, some works that feature a trademarked character enter the public domain; an example of this is the old Superman radio show. You can use the radio shows for whatever purpose you like, but Og help you if you try to sell Superman merchandise; DC’s lawyers will be all over you like white on rice if you do.

22

Yest, but batman the cricket player with a funny bat and a schoolboy hat would likely not be infringing. A superhero named after a bat might. If he is near a big city, has a rich secret identity, etc. - expect a letter from the lawyers. If instead he is a vampire superhero (hey, can I pitch THAT movie?) and various othe weird and wonderfully very different details… you might have a case; a few million later in legal fees, you might be allowed to keep filming.

The key in any trademark or copyright dispute is whether the resemblance is coincidental and not likely to be confusing, or close enough to be a copy. Also involved is whether it impacts the market for the original. Disney, for example, will not want porn stoies or pictures of its characters (recall if you’ve seen it the cartoon character orgy from the 60’s). Nobody is going to mistake it for a DIsney product, but it cheapens the characters and makes the market less desirous of them.

As another note - for example, “Snow White” is the fairy tale character that is public domain. “…and the Seven Dwarfs” is a Disney embellishment, copyrighted, trademarked and litigated 7 or more ways from Sunday… not to mention the names, charcteristics and depictions.
Anyone can do Pocahontas, Pinicchio, Sleeping Beauty or Alice In Wonderland. however, if it looks too much like Disney, or steals details that were in their movies but not the original stories, expect to be sued.

( Ah, Trademark… Just like - anyone can make a Cola, Pepsi won that court case years ago. however, if the can colour, design, logo type font, etc. are too close to Coke, expect a registered letter. IIRC, Virgin Cola lost a case and had to redo their cans when they first came out, due to the colour and look of them. The question is - does it look close enough that the average person might think the products are related? )

23

(Semi hijack of OP)

isn’t there a difference copyright law for things (movies) that are: ‘based on…’ vs. ‘inspired by’ like you would need a copyright agreement for based on but you don’t for ‘inspired by’?

And for the character copyright. What if that name was completely made up? Can you copyright a made up name?

(My answer to OP)
I think this answers something. Out of everything I’ve seen/heard/read I was told that as soon as you put pen to paper or type the first letter of the first word that it is copyrighted all ready.

24

I recall a trademark case involving a magazine title. Oprah Winfrey started a magazine and titled it O. The problem was there already was a magazine titled O - a porn magazine which was published in Germany but sold in the United States. The German magazine sued Winfrey - they weren’t claiming exclusive rights to the letter but they felt that another magazine with the same title was too close to be acceptable.

I can’t find the decision but it was surprising. The judge ruled in Winfrey’s favor but not on the issue that a single letter was too common to trademark (which might have been reasonable). His ruling essentially said that somebody like Oprah Winfrey was more entitled to the name than a pornographic magazine was.

25

There was an interesting situation involving the superhero spoof, The Tick. Ben Edlund created The Tick comic book in 1986. In 1994, Sunbow Entertainment turned it into a popular Saturday morning cartoon series. FOX paid Edlund for the rights to produce a live-action TV version in 2001. That’s when they hit a snag.

FOX envisioned The Tick like *Seinfeld *with superheroes. The Tick and his sidekick Arthur, along with Die Fledermaus (a Batman parody) and American Maid (Wonder Woman) would be the four main characters. But Edlund didn’t create Die Fledermaus or American Maid – Sunbow did – so neither of them were included in the package that FOX purchased. They ended up creating two similar characters who were just different enough to avoid copyright conflict: Batmanuel and Captain Liberty.

26

Neither term is related to actual copyright. They may imply how faithful something is to the source material (or may not) but nothing more.

Again, names cannot be copyrighted. They can trademarked for some uses and traits or sayings of the character may be so ingrained that any use would be in violation, but the name itself cannot be copyrighted.

Under current law your writing (and other forms of art) is assumed to be copyrighted by you as soon as it is expressed in tangible form. (Conversation in and of itself is not tangible and not copyrightable, e.g.) However, to have any real recourse under the law you have to register the copyright with the Library of Congress. That gives you several things, mainly the ability to file a lawsuit in court and to get attorney’s fees and statutory damages if you win. A violation of an unregistered copyright can get you only actual damages, and those are normally negligible.

What’s the difference? Take a Cecil column. If someone reprints it without permission that’s a violation of copyright. But the actual damages would be limited to however much the Chicago Reader charges for reprint fees. Statutory damages, however, could be virtually any amount because they are meant to discourage violations through the wallet.

27

Actually, the test is for “likelihood of confusion.” The other things you mention can be considerations in evaluating whether there is likelihood of confusion, but they are not independent considerations.

You are roughly describing the concept of “trademark dilution.” The example you give is specifically “dilution by tarnishment.” But protection from dilution isn’t granted to all trademarks, only to “famous” marks.

Not quite, by my understanding. Disney didn’t create the seven dwarfs, but they did create those specific seven dwarfs, including the names, visual depictions, and personality traits. So, there could be in theory a completely different “Snow White and the Seven Dwarfs,” but the dwarfs couldn’t be Doc, Grumpy, Happy, Sleepy, Bashful, Sneezy, and Dopey.

I can’t imagine any principal of trademark law that would support this. I’d love to read the decision myself.

28

The complete ruling can be found here.

To my non-legal eye it reads as if the ruling of lack of confusion was strictly on technical issues. But maybe a lawyer would read it differently between the lines.

29

Okay, that’s a very ordinary trademark ruling and it’s not based on either technicalities or an assessment that Oprah Winfrey deserves it more. And the ruling is quite substantive, not technical. The plaintiff basically failed to show that it had any rights that were being violated.

The plaintiff basically lost in the most basic way possible, by failing to establish that it has rights in a distinctive mark.

It’s not the first time I’ve seen a case ruling that the letter O by itself was not inherently distinctive. (The other case was about orange-flavored vodka.)

And when you font have inherent distinctiveness, you have to establish acquired distinctiveness, which, to put it simply means that you’ve been using the mark long enough that consumers have learned to associate it with you.

The key term here is that an otherwise descriptive or suggestive mark might become distinctive when it has earned “secondary meaning” – that is, a meaning in addition to its otherwise obvious meaning.

A lot of trademark plaintiffs fail when they are faced with establishing secondary meaning. And I’m not surprised that a European porn magazine with a limited profile in the United States might have trouble doing that. Secondary meaning takes evidence like advertising, circulation, consumer surveys and the like.

Without a distinctive mark, you never even get to the question of likelihood of confusion necessary for a trademark infringement claim.

The next part of the ruling kills the plaintiff’s trademark dilution claim even putting aside its failure to show ghat it has a distinctive mark. First of all, it hasn’t demonstrated that it’s mark is famous. As I mentioned above, U.S. dilution law only protects famous marks and I can again believe that this mark isn’t famous in the United States. I’m no stranger ti titles of adult magazines and I can’t recall hearing about this one.

Even if it was a famous mark, the court says that there’s no showing that any dilution has occurred.

Dilution by blurring occurs when a secondary use harms a mark’s unique association with the plaintiff. I’m not surprised that the single letter O doesn’t have a unique association with a Dutch porn mag.

Dilution by tarnishment occurs when a secondary use is associated with something unsavory, and that almost always means sex or drugs. I can believe that Oprah’s magazine doesn’t tarnish anything through unsavory associations.

So the court doesn’t say anything at all like one party deserves to have the mark more than another. Te plaintiff failed to establish the most basic elements of trademark claims.

30

By technical I meant in the common sense of legal technicalities rather than a tricked up subjective judgement so I’m glad to see that you agree.

31

My thanks to Exapno for finding the original decision.

If the judge had just ruled that O is not distinctive enough and neither magazine was entitled to its exclusive use, I’d have let it slide. That’s a neutral decision, even if I don’t happen to agree with it.

But the judge raised the issue of the comparative content of the two magazines and used it in his decision.

It seems clear he’s saying that Winfrey’s magazine is “better” than the German magazine so the German magazine loses nothing if people get it confused with Winfrey’s. And it also appears, from the logic he uses, that if the timing had been reversed and the German magazine had been started after Winfrey’s, the judge would have ruled the opposite way and found against the German magazine because its content would have tarnished the image of Winfrey’s magazine.

To me, such a content-based decision is wrong. The decision should have been the same in both cases. The judge should only have determined if the two identically named products were similar enough to be confused (and I feel two magazine with the same title would qualify) and then found in favor of whichever magazine had prior claim.

If Winfrey’s magazine took the German title, then find in favor of the Germans. If the German magazine had taken Winfrey’s title, then find in favor of Winfrey. But the judge shouldn’t have ruled that it was okay for Winfrey to take the German title but it wouldn’t have been okay for the German magazine to take Winfrey’s title if the situations had been reversed.

32

You’re missing something here. The question of whether Oprah’s magazine is “entitled” to use its name never comes up in the case. Oprah’s magazine is not asserting trademark rights of any kind, and it isn’t even clear exactly what trademark Oprah’s magazine would assert if it had.

The decision is not based on Oprah’s claim that it has any exclusive rights in the term O or O: The Oprah Magazine or something else. This kind of thing makes a huge difference in trademark law. So the court never says what Oprah is permitted to use and what it isn’t.

The entire decision addresses only the claims that the European magazine has asserted and it fails to make even the most basic claims to get it through the door of two kinds of claims (1) trademark infringement, and (2) trademark dilution.

And the most basic thing a plaintiff must assert for a prima facie case in either kind of claim is that it has rights in a protectable mark. The plaintiff here has failed to do that. That means the entirety of the rest of the decision is hypothetical. The plaintiff fails on both claims because it has not asserted a distinctive mark that can possibly protected under trademark law.

Now, it’s possible that this is entirely a failure of evidence. The European magazine might have protectable rights, but the point is that is has failed to come forth with enough evidence to establish it.

Again, this part of the decision was not necessary for the court to get into, but it went ahead and did so, probably to make things simpler for the litigants if they decided to try to pursue things further.

But regardless, this has nothing to do with Oprah Winfrey having a “better” magazine. It has to do with the nature of the claim that the plaintiff is setting forth. As I mentioned, the plaintiff made (at least) two claims. One is for trademark infringement, which requires a finding of likelihood of confusion. This claim failed because the plaintiff did not assert a protectable mark.

The second claim is for trademark dilution. This claim also failed because the plaintiff did not assert a valid mark.

But, even if it had asserted a valid mark, it still would not have been able to proceed with a trademark dilution claim because dilution law protects only “famous” marks. What marks are famous? It’s hard to say in advance. We know Coca-Cola and Xerox and Kodak are definitely famous marks, but we don’t know whether a European adult magazine with limited profile in the United States is famous.

The court notes that, assuming that the plaintiff had a protectable mark, it still had failed to establish that the mark was famous. Again, this might merely be a failure of evidence, but it is the plaintiff’s burden to meet.

Now, we’re finally getting to the part of the opinion that you seem to have objections to, but note that even before we get to this part of the opinion, the plaintiff has already lost, in about three different ways. This is deep, deep dicta we’re talking here.

The plaintiff has asserted a claim for trademark dilution. If you are making a claim for trademark dilution, you have to assert either dilution by blurring or dilution by tarnishment.

We’ll skip over the dilution by blurring part here, since that doesn’t seem to worry you, but suffice to say, the plaintiff has failed to offer any sufficient basis for it to go forward with such a claim.

So now let’s get to the part about dilution by tarnishment. If the plaintiff is asserting a claim of dilution by tarnishment by Oprah Winfrey’s magazine, the plaintiff is asserting that even if there is no likelihood of confusion (because confusion is an issue for infringement, not dilution) that Oprah’s use of the term harms the reputation of its mark.

The portion you quote from the court is the court merely the court examining the plausibility (had the plaintiff not already lost its case two or three steps previously) of a claim that the use of the name O: The Oprah Magazine harms the reputation of the plaintiff’s mark.

You see what’s happening here? It’s the plaintiff saying to the court that Oprah is harming his reputation. Thus it’s the plaintiff who is inviting the court to make this examination into content that you’re objecting to here.

This is not a situation in which the government is stepping in and saying “We like Oprah better than porn, so we’re going to let Oprah get away with violating people’s rights because she’s wholesome and porn isn’t.” It’s the plaintiff saying, “Oprah is harming my reputation,” so the court is looking at whether it’s at all plausible that (had the plaintiff not already lost the case three ways to Sunday) that this use might harm his reputation.

That’s what he did – for the infringement claim, because confusion is the key to infringement. Or, rather, I should say that it is what he would have done if the plaintiff had been able to even get through the door of an infringement claim, but he failed to establish that he even had a protectable mark, so the question of likelihood of confusion never actually becomes an issue.

But again, the plaintiff did not assert only an infringement claim. He also asserted a dilution claim, which is a claim that Oprah’s use, though it may not be confusing, nevertheless harms his reputation.

To the extent that you have any misgivings about the content of the two magazines being compared, it’s because the plaintiff invited such a comparison by asserting a harm to his reputation.

There are plenty of cases in trademark law in which two parties are allowed to continue using similar marks. Trademark law does not award exclusivity in all cases when it’s not necessarily warranted.

33

Ah, now I see that reading the link on my mobile didn’t show me everything and I didn’t click around enough. What I’ve been reading is a summary of the decision, not to the full decision itself, which starts when you click the “1” at the bottom of the page.

I’ll also note that the case caption says “Hearts Corp.” when the defendant is actually “Hearst Corp.”

Given that, I see that there was actually an application of the likelihood of confusion test, which came out in favor of Oprah. In essence, there is a ruling that there is no confusion here. In such a case, the court doesn’t give anyone exclusive rights.

What if neither had “taken” the other? Which was apparently the case here. One of the likelihood of confusion factors is bad faith, which looks into whether there was an intent to capitalize on the reputation of the plaintiff’s mark. There was no such showing here.

There are also several other facts mentioned by the court here that go against the plaintiff:

  • After buying the rights to the <<O>> magazine in the United States in 1994, only two issues were published, one in 1995 and one in 1996, with limited sales (under 1,000 copies). Oprah’s magazine was launched in 2000, and then the 2001 issue of the European magazine was published. There’s a very good case here for abandonment.

  • There are at least six other magazines using similar O marks.

  • There’s scant evidence of actual confusion

  • The magazines serve very different audiences at significantly different prices per issue and in a store where they were both offered for sale, were displayed in different sections.

  • The evidence as presented to the court led it to state that “the mark is virtually unknown in the commercial marketplace.”

34

Thank you Ascenray. Fascinating…

yes, I read about this topic from time to time, but the exactness of the details does require your professional knowledge…

So to what extent can a company claim “trademark”? I can see Batman or Micky Mouse or even Little Mermaid are trademark. But how deep can that go? I assume trademark has to be individually applied for? Do you think someone at Disney for example trademarked Clarabelle Cow, who probably hasn’t been in a cartoon there for 60 years or more? Or the kid with the Donkey ears in Pinocchio? Or would they rely on copyright for minor details like that?

I agree, unless your product is known well enough to be associated in the minds of the public with a certain image - quality product, wholesomeness, whatever - it cannot really be “diluted”. OTOH, what two companies are just startng out, but one has a prior trademark, rather than already being established. I don’t want “Fred Fine Furniture” to be associated with “Freddy’s Knockdown Cardboard Furnishings” - if Fred hasn’t established the major market presence to any great extent, are you saying he’s outta luck? I can see the argument that O vs O are not overlapping markets (or is it “Big O” vs “The Big O”? :smiley: )

Just like Apple Records and Apple Computers, which has no connection with music :slight_smile: (Actually, they didn’t before iPods, when the agreement was signed years ago)

35

To the extent that they use the trademark in commerce. Companies holding “famous” marks can prevent uses even in fields in which they are not using that mark in commerce.

No, trademark rights are acquired through use in commerce, not through application. You can register your mark at the federal level and often at the state level too, but unregistered marks are also protected at both levels.

You can get copyright protection on a character you create. You can’t get trademark protection unless you are using that mark in commerce.

For example, in 1980, D.C. Comics premiered a villain called the Terminator in The New Teen Titans. D.C. thus held copyright protection in that character. In 1984, James Cameron’s movie The Terminator starring Arnold Schwarzenegger kicked off a franchise using a completely different character and a completely different storyline. The Schwarzenegger Terminator was featured in all kinds of products. D.C. was stuck. It had a valid character with the name Terminator, but it couldn’t use the “Terminator” mark on a wide range of products, including comic books, because the Schwarzenegger Terminator was already being used in commerce for goods that were probably likely to be confused. So in order to be able to publish a periodical under the character’s name without coming into conflict, D.C. changed the name of its character to “Deathstroke the Terminator.”

Similarly, D.C. owns the rights to Captain Marvel and the Marvel Family, but it runs them under the “Shazam!” title because it can’t feature them in commerce under the name “Captain Marvel,” because of Marvel’s Captain Marvel. Even though the D.C. Captain Marvel is older (originally published by Fawcett), the trademark “Captain Marvel” was not used in commerce after 1953 (incidentally, because D.C. sued Fawcett for infringing Superman). By the time D.C. revived the character, Marvel was already using the term “Captain Marvel” in commerce.

Specific consumer markets and geographical markets can create boundaries when two businesses use confusable marks. Even when one business is onlder, if it has limited its use in commerce to a small geographical area, it can find itself hemmed in when a later user markets its name more widely.

36

Ascenray, I don’t see what you feel it is I’m missing.

I acknowledged in my post that if the judge had simply ruled that neither magazine was entitled to exclusive use of the letter O than I wouldn’t have had any problem with the decision. Nor would I have had an issue if the judge had ruled on the basis of abandonment.

But the judge brought up the issue of the content of the magazines. So it’s fair to call him on this issue as he made it part of his decision.

If the judge had just said that the content of the two magazines were so dissimilar that nobody would confuse the two, then that would still be neutral. But that’s not what he said. He said the image of Winfrey’s magazine did not damage the image of the German magazine but then he went on to say “quite the opposite is true”. He apparently felt that the image of the German magazine would be damaging to Winfrey’s magazine if that became a relevant issue before the court.

Unless you’re saying that trademark isn’t the proper legal term (maybe service mark is the correct term) then I don’t see how you’re saying that the issue of whether Winfrey’s magazine was entitled to use the letter O didn’t come up in the case. That was the central issue of the case. Winfrey may not have been asserting exclusive ownership of the title but the German magazine was making that assertion. So the decision that the German magazine was not entitled to exclusive use was a ruling in Winfrey’s favor.

37

What you’re missing is that the judge didn’t bring this up. The plaintiff brought it up by making a claim of trademark dilution.

That would address the plaintiff’s trademark infringement claim. It would not address the plaintiff’s trademark dilution claim. Dilution is not about confusion.

It is what he said when addressing the trademark infringement claim, because infringement is based on confusion. Dilution is not based on confusion, so he couldn’t stop there.

Yes, because a claim of dilution by tarnishment is a claim of damage of reputation. He had to do this analysis, because the plaintiff chose to make a claim of dilution. He didn’t choose to do it. The German magazine said, “Oprah is damaging my reputation” so the court had to look into the question of whether anything about Oprah or her magazine could damage his reputation.

If Hearst had counterclaimed with its own claim of dilution by tarnishment, then there would have been a whole set of questions that would have been asked.

Suffice to say, it doesn’t matter what he went on to say, because this isn’t a substantive portion of the opinion. It really has no bearing on the application of the law or the outcome. It’s merely an observation – “No, Oprah’s use of this mark doesn’t damage the plaintiff’s reputation. (As an aside, if things were the other way around, Oprah might have a legitimate claim that this guy might damage her reputation.)” Yeah, maybe, but Oprah would have to meet a whole lot of other tests first.

No, that’s not what I’m saying. I’m saying that Oprah didn’t make a claim of exclusive rights in any particular term. We don’t know whether, if things had been the other way around, whether Oprah would make a claim on the letter O by itself, or whether Oprah would claim that <<O>> was infringing or tarnishing. Oprah would have to establish its own protectable mark, and would have to meet the tests of likelihood of confusion. We don’t know whether some mark asserted (what mark? “O” or something else?) by Oprah would qualify as “famous.” That’s why the court’s comments on things being the other way around aren’t significant in any way.

Of course it’s in her favor. I didn’t say it wasn’t. What it doesn’t say is whether Oprah has any exclusive rights in any particular term.

38

I watched the DVD commentary for Mary Poppins, and apparently the writer of those books had a lot of control over the movie. She had cast approval, script approval and sat on the set every day to make sure the costumes and direction was up to her standards.

She must’ve had a good attorney.

39

It wasn’t her attorney. Travers just refused to sell. Disney tried to buy the rights from Travers for something like 25 years and she insisted on script approval.

40

A good agent, who might or might not be an attorney, could help her get what she wanted, by knowing the marketplace and the inclinations and past history of all the relevant players.

As in, just how badly did Disney want the book, and what parts of a deal would they hold fast and what parts would they be willing to negotiate. As in, are there any other potential buyers for the book rights, and what might they be willing to pay, and could a movie they made be meaningful competition for Disney films. As in, have some of the upper level management at Disney changed recently and might the new blood be more favorable to making a deal on desirable terms.

Basically, the information and personal relationships that make up the bread and butter of a Hollywood agent’s work.