Would my fake Maltese Falcon be legal?

[commasense]

Over in this thread, I’ve asked about how to make my own replica of the Maltese Falcon statuette. I’m aware that if I were to actually do this, I might possibly be in violation of copyright or other laws.

Are there any IP lawyers who would care to offer an informed opinion on this question? Here are the issues as I see them:

If I do as I suggest in the other thread and actually scan frames from the film, I am making copies of a very small portion of a work copyrighted by Warner Bros. So technically that might be a violation, unless we can claim that we’re using such a tiny portion of the original (maybe a hundred frames out of a film that contains about 145,000 frames) that it falls under fair use.

Is there a legal basis for the potential claim by the studio that it holds a copyright not only on the film itself, but also on the props that appear in it? This seems far from clear to me. Are there any precedents for such a claim?

If not copyright, could Warner assert some other IP claim on reproductions of the dingus? AFAIK, there are no authorized official Falcons available at the studio store, so this wouldn’t be precisely analogous to making fake Gucci bags. And I haven’t heard about anyone going after these cheap knock-offs. Of course, that means nothing in and of itself, but their fairly widespread availability suggests to me that if they’re not 100% legal, at the very least Warner doesn’t seem terribly concerned about them. Would we have a laches argument, perhaps?

If we decided that scanning in actual frames might be a violation, would making a copy the old fashioned way, having a skilled artist sculpt his own version by eye, overcome some, most, or all of the other objections? “No, your honor, this is not the Maltese Falcon, but an original work of art that just coincidentally happens to bear a striking resemblance to the Falcon.”

Finally, I’m assuming that if, like the owner of this site, I limit myself to a relative handful of copies and don’t start mass producing them and selling them in Wal-Mart, even if they are technically illegal, I’m not likely to show up on WB’s radar and could probably get away with it. Right? (Hypothetically, I mean. I’m not asking anyone to condone illegal behavior.)

Thanks.

[JerH]

I’m not an IP lawyer, so there’s probably some flaws, in what I’m saying, so keep that in mind.

In general, IP protection (copyright, trademarks, patents, etc.) only apply to commerce. For example, I could paint Superman logos all over my bedroom walls if I wanted, and DC Comics wouldn’t have a case. However, if I changed my house to a bed and breakfast and started advertising “you can stay in the Superman Room”, then I’d be in trouble because I was using their intellectual property without permission for my own personal gain.

In the specific case of the falcon - I’m not sure if scanning the frames would be a violation (because copyright law has gotten very weird regarding movies and music), but again, as long as you’re not distributing the scans there’s not much they could prosecute you for. If you were just making a Maltese Falcon for yourself, to place on the mantle as a conversation piece or something, I think the same logic would apply, as long as you’re not making them for distribution or sales. However, if you did intend to distribute them, you could run into some issues.

[commasense]

I’m not an IP lawyer, either, but I’m pretty sure you’re wrong about the commerce thing, at least with respect to copyright. It’s true that, as I suggested at the end of the OP, keeping a low profile and not going into big business is one way to stay out of trouble, but that’s not because it’s legal, but just because it’s not worth a giant conglomeration’s time to come after you.

Copyright is the right to copy, and commerce, or lack thereof, is not one of the criteria for a violation.

You may be thinking of trademark infringement. Use of someone else’s trademark in commerce is undoubtedly illegal, and there may be precedents that say that private copying of trademarks is not a violation. I don’t know, but it’s not relevant to this case, unless Warner Bros. has a trademark on the dingus. (Worth looking into, perhaps.)

Anyway, the case here is more complicated, since what I’m really copying (apart from possibly those few frames) is an item that itself is probably not copyrighted separately from the film in which it appears.

[Gfactor]

IAAL.

The commerce thing is spurious.

In order to register a trademark, one must use the trademark in commerce.

Because of the nature of trademark protection, purely private use is unlikely to result in infringement.

FindLaw for Legal Professionals | Law & Legal Information

[commasense]

So what’s your opinion (I accept all standard disclaimers) on the OP, Gfactor?

[Gfactor]

Is there a legal basis for the potential claim by the studio that it holds a copyright not only on the film itself, but also on the props that appear in it? This seems far from clear to me. Are there any precedents for such a claim?

It would probably be found to be a derivative work.

See discussion.
And here:

Copyright protection also extends to derivative works, which might include replicas “inspired” by protected designs, or replicas which incorporate protected themes, names, or concepts into seemingly “original” works. For example, an unauthorized sculpture of a Klingon’s skull could be considered a derivative work that infringes on Viacom’s copyrights to Star Trek, even if the skull itself is an original creation from the imagination of the sculptor.

http://itaweb.com/jhyphen/toys/caveat.htm

[Little_Nemo]

On precedent that might be relevant here was over Frankenstein. The movies are obviously based on Mary Wollstonecraft Shelley’s 1818 novel which is public domain, so anyone can make a movie out of the subject. Boris Karloff played the creature in the well-known 1931 Universal production. In 1957, when Hammer was planning on making a new Frankenstein movie, they were told that they could not base the appearance of their creature on Karloff’s appearance in the 1931 movie. So while neither movie had a copyrightable claim to the story, Universal had legal protection on Karloff’s make-up, which is essentially a prop.

[commasense]

Nemo: Do you know if that case actually came to trial, or might it just have been some extra-legal bullying of a small studio by a larger one? After all, at least in terms of Halloween masks and other pop culture products, the Karloff look is Frankenstein’s monster, and I’m pretty sure not all of those products are licensed by Universal. And Mel Brooks’ monster is pretty firmly based on the Karloff makeup, too.

[askeptic]

Gfactor
Are Damages an element of a copyright claim?

[Gfactor]

Yes.

http://straylight.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000504----000-.html

[Acsenray]

The movie producer does not own rights in things just because they appeared in their movie.

What you would have to ask is who made the statuette? Say it was a member of the movie producer’s props department. Then it’s possible that Warner Bros. owns a copyright in the design of the statuette as a work for hire. That would be the place to start.

Then you should check to see whether Warner Bros. or someone else has already licensed this design to someone else to produce replicas for sale. I’m thinking that in most cases, movie producers don’t bother to claim rights to objects made for their movies or license the designs for production, but in the case of the Maltese Falcon, it doesn’t seem too farfetched to think that the movie producers would have thought of this already.

This is completely a wild guess on my part, and I’m not your lawyer anyway, so you may not rely on this as advice, but I have seen fandom-type merchants who reproduce things that have been seen in movies. In many cases, they have had to come up with names and descriptions that don’t refer explicitly to the movie or television show that the object came from.

It’s possible that so long as no one associated with the production has given any though to making money by licensing such designs and, very importantly, you don’t actually use terms from the movie (like “Maltese Falcon”) in connection with your design, that no one will interfere with you.

[Gfactor]

@acsenray

The movie producer does not own rights in things just because they appeared in their movie.

What you would have to ask is who made the statuette? Say it was a member of the movie producer’s props department. Then it’s possible that Warner Bros. owns a copyright in the design of the statuette as a work for hire. That would be the place to start.

He’s right. I was being a little imprecise here. If the Falcon was not a work for hire (and somebody else owned the rights to it), then the results might be more complicated.

Then you should check to see whether Warner Bros. or someone else has already licensed this design to someone else to produce replicas for sale.

Whether they have licensed it or not seems irrelevant to me. On the one hand, if they have licensed it, they may not actually have owned the rights to it. And on the other hand, the fact that they haven’t licensed it yet does not mean that they don’t own the rights.

I’m thinking that in most cases, movie producers don’t bother to claim rights to objects made for their movies or license the designs for production, but in the case of the Maltese Falcon, it doesn’t seem too farfetched to think that the movie producers would have thought of this already.

Not sure what you mean by this.

But hey, I did a little more research.
Current location of the bird.
Where can I get a copy?

Copyright registration for a sculpture called the Maltese Falcon.

14. Registration Number: VAu-172-423
    Title: Maltese falcon.
    Description: sculpture.
    Claimant: acMichele Boyer
    Created: 1989
    Registered: 29Jan90
    Author on © Application: Michele Boyer.
    Special Codes: 5/S

I have no idea what this sculpture looks like, but it is obviously not the one from the film.

[DocCathode]

@commasense

Nemo: Do you know if that case actually came to trial, or might it just have been some extra-legal bullying of a small studio by a larger one? After all, at least in terms of Halloween masks and other pop culture products, the Karloff look is Frankenstein’s monster, and I’m pretty sure not all of those products are licensed by Universal. And Mel Brooks’ monster is pretty firmly based on the Karloff makeup, too.

Universal still holds the rights to Karloff’s make up. It came up most recently AFAIK in the made for television Frankenstein-Big Man On Campus. Further back, the makers of the film Monster Squad were denied permission to use any of the Universal studios make ups for Frankenstein (OTTOMH identifying details include neck bolts, stitched wrists), the Mummy (distinctive clay make up), Dracula (widow’s peak), wolfman, and the Creature From The Black Lagoon. The many Halloween masks and products are sufficiently different to qualify as new creative works. This generally involves moving the bolts to the forehead, etc. Peter Boyle’s monster was different in some details (OTTOMH he had a zipper in his neck), further Young Frankenstein very likely falls under the category of parody or satire and is legally protected.

[Little_Nemo]

Do you know if that case actually came to trial, or might it just have been some extra-legal bullying of a small studio by a larger one?

There was no actual court case. As I recall, when the 1957 film was in pre-production Universal sent Hammer a legal notice of their rights. I’m not a lawyer so I can’t comment on the strength of their argument, but Hammer apparently acknowleged they were valid and was careful not to infringe on them.

[Chronos]

The movie is, I think, irrelevant here. The statuette itself is a work of art, and somebody holds the copyright to that work of art. That somebody might be Warner Bros., if it was a work for hire (quite likely). It might be the original sculptor, whoever that is. It might be someone else entirely, to whom the original owner has sold the rights. But the point is, somebody owns the rights to that sculpture. The only questions then remaining are, does your work count as a “copy” of the original, and does it fall under Fair Use?

[Walloon]

@acsenray

Then you should check to see whether Warner Bros. or someone else has already licensed this design to someone else to produce replicas for sale.

Haunted Studios has been the official licensee since 1963 of replicas of the Warner Bros. Maltese Falcon statuette.

[commasense]

Does it automatically follow that every prop built for every movie is covered under its own separate copyright? That seems a little farfetched to me. Do you have a cite? Do other people here have opinions on that claim?

But let’s say you’re right, Chronos. Would the copyright holder have to have renewed it in the 1970s when they modified the law? Absent that, would it now be in the public domain?

And if it is still under copyright, how different does a copy have to be to be a different work, not an illegal copy? Are those cheap knock-offs I linked to above different enough? Where is the dividing line?

And if the act of copying requires virtually as much creativity as making the original (unlike the purely mechanical process of copying recordings, books, or other copyrighted works) is it a violation? That is, if I don’t use the high-tech methods my other post contemplates (which, it turns out, are impractical) but sculpt it by hand using the pictures of the original as a model, have I violated copyright? What about all the art students who sit in galleries and copy famous paintings, not all of which are in the PD? Are they violating copyright?

Couldn’t I say that my hand-made version was an original work of art that was an interpretation of the original?

[Walloon]

@commasense

Does it automatically follow that every prop built for every movie is covered under its own separate copyright? That seems a little farfetched to me.

When the copyright of a motion picture is registered, all of the elements original to that motion picture are also part of that copyright, including the script, the msuic, the make-up (e.g., the Frankenstein monster), the costumes, the props, the choreography (if it has dances). The copyright of all of those same elements were renewed when the motion picture copyright was renewed. In the case of The Maltese Falcon (1941), Warner Bros. renewed its original 28-year copyright in 1969, and that copyright, now owned by Turner Broadcasting, extends through 2036.

@commasense

And if the act of copying requires virtually as much creativity as making the original (unlike the purely mechanical process of copying recordings, books, or other copyrighted works) is it a violation? That is, if I don’t use the high-tech methods my other post contemplates (which, it turns out, are impractical) but sculpt it by hand using the pictures of the original as a model, have I violated copyright?

Yes, you have. That’s known as a “sweat of the brow” argument, and the U.S. Supreme Court has specifically rejected it as a defense in copyright infringement.

[Gfactor]

@Walloon

Yes, you have. That’s known as a “sweat of the brow” argument, and the U.S. Supreme Court has specifically rejected it as a defense in copyright infringement.

NQR. The Supreme Court rejected the “sweat of the brow” theory as a basis for copyrighting factual compilations.

Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known alternatively as “sweat of the brow” or “industrious collection,” the underlying notion was that copyright was a reward for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler’s Circular Publishing Co., 281 F., at 88:

  "The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious [499 U.S. 340, 353]   collection. The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number acquires material of which he is the author. (emphasis added).

The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement - the compiler’s original contributions - to the facts themselves. Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was “not entitled to take one word of information previously published,” but rather had to “independently wor[k] out the matter for himself, so as to arrive at the same result from the same common sources of information.” Id., at 88-89 (internal quotations omitted). “Sweat of the brow” courts thereby eschewed the most fundamental axiom of copyright law - that no one may copyright facts or ideas. See Miller v. Universal City Studios, Inc., 650 F.2d, at 1372 (criticizing “sweat of the brow” courts because “ensur[ing] that later writers obtain the facts independently . . . is precisely the scope of protection given . . . copyrighted matter, and the law is clear that facts are not entitled to such protection”).

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282 (1991)
In *Feist *, the Court rejected the argument that facts, which are ordinarily not copyrightable, become so when compiled because the copyright law should protect the labor expended in compiling factual information. After reviewing the history of the doctrine and the Copyright Act, the Court concluded:

Because Rural’s white pages lack the requisite originality, Feist’s use of the listings cannot constitute infringement. This decision should not be construed as demeaning Rural’s efforts in compiling its directory, but rather as making clear that copyright rewards originality, not effort. As this Court noted more than a century ago, “great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way.” Baker v. Selden, 101 U.S., at 105.

Id.

commasense’s argument is a little different, if I understand correctly. He suggests that it might be a defense that he put a lot of effort into they copying of the original work, his copy should not be considered an infringement. Problem is, as the *Feist * court indicates, copyright rewards originaliy–not effort. If you created a useful method of copying such statuettes and could demonstrate, utility, novelty, and non-obviousness, you might be able to patent the copying process.

[commasense]

Walloon: Unless you can show me on Haunted Studios’ Web site where it says they are licensed by Warner Bros., I think you have been taken in by their carefully worded but misleading claims. Their black bird is not a terribly accurate copy of the original. Compare theirs to the real thing (the upper pictures).

You’re contradicting Chronos’ assertion that the dingus holds a separate copyright, but neither of you has provided a cite.

If Haunted Studios has, as they claim, sold their bird to Warner Bros. (which I’m not willing to accept at face value), it would suggest that the studio either doesn’t hold or claim a copyright on it, or they don’t consider the Haunted Studios bird to be a violation because it is sufficiently different. (Note that the site says they have sold it to studios such as Warner Bros., which could be taken to mean like Warners, but not Warners.)

I’m still interested in getting some idea of how different is different enough, if there have been any precedents to establish that.

(BTW, this has become a purely intellectual query, since, as I said, an automated reproduction is not practical given the current state of the art, and a manual reproduction is way beyond my artistic capabilities or my willingness to pay for someone else’s abilities. If I do anything, I’ll buy one of the cheap knockoffs, and hope that one of the MK Falcons becomes available.)