Today, Authors Alliance is thrilled to announce the release of a brand new educational guide for authors: Third-Party Permissions and How to Clear Them, authored and edited by Authors Alliance staff. We were inspired to create this guide, the fifth in our series of author guides, by the myriad questions we receive from authors about the third-party permissions process. The difficulty for many authors is that publication contracts usually place the ultimate burden for clearing permissions and paying any associated fees on the author, but the legal issues involved can be difficult to wrap one’s head around, particularly when approaching the process for the first time. We created this guide in order to fill that gap, demystifying the legal and procedural aspects that can make permissions so challenging.
Our guide walks authors through the permissions process, beginning with an overview of copyright and publication contracts to help readers understand why permissions are required in the first place. Then, we explain circumstances in which permission is not required (like when the use of third-party materials is a fair use or the materials are in the public domain) to help authors determine whether to request permission in the first place. Next, we offer some tips on how to identify and locate a rightsholder and go over the process of actually securing the permission. Finally, we conclude with a discussion of potential options for authors who are unable to obtain permission after making a concerted effort to do so.
Our new guide covers both text and image permissions, and we note throughout where these two types of permissions work differently. We created the guide with the goal of making the permissions clearance process as clear and comprehensible as possible in order to demystify a part of the publication process that can be intimidating for first time and veteran authors alike.
Our guide is available today for free as a PDF under a CC-BY 4.0 license, and will be available to purchase as a print book later this year. We are indebted to the expert reviewers, publishers, and authors who helped us make this guide a reality and ensured it reflected the realities of third-party permissions in publishing as well as serving the needs of our diverse body of members. We are delighted to bring you this new resource, and hope it helps take some of the sting out of permissions so you can focus on what really matters: creating new works of authorship that can contribute to the commons of knowledge and help you reach your goals as an author.
Since we first published this guest post by Authors Alliance member Lois Farfel Stark in August 2018, Authors Alliance has received numerous questions from authors on clearing third-party permissions—an understandably daunting part of the publishing process. Inspired in part by this post’s perennial popularity, we are pleased to announce the upcoming release of a brand new guide on the topic of clearing third-party permissions. Stay tuned for the guide later this month, and if you haven’t already, consider joining Authors Alliance to receive updates about these and other new resources.
Over ten years ago—when I began writing my new book, The Telling Image: Shapes of Changing Times—I knew I wanted to create a book that focused on images. The central topic of the book is how humans make sense of the world by finding a shape, an image, to hold everything together.
The journey from that moment to now has been one of discovery mixed with learning. In order to gather the over 200+ images into the book, I had to teach myself about copyright law—a task that is not easy, even on paper. Your book’s journey may be different, and you may even find yourself needing to consult with a lawyer, depending on the situation.
Copyrights for image use are complex, and copyright duration can be extremely long. The U.S. Copyright Act defines an image as a “work of visual art” which includes painting, drawing, print, sculpture, and photographic images. Other copyrightable pictorial, graphic, and sculptural works noted in the Act include “. . . two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”
Eventually, I included a variety of images in my book, from early blueprints of corporate boardrooms to charts and diagrams used by physicists. Many uses of images require permission from the copyright holder, unless the use falls under an exception to copyright law like fair use or when the work is in the public domain. Uses within the copyright owner’s exclusive rights include reproducing the image in print or online, creating derivative works (new works based on the original), distributing copies of the image (i.e., by publication), or displaying the image in public. Seems pretty straightforward, right? Not so much. Each image in this book ended up having its own acquisition story.
Last week, we released a brand new resource on frequently asked questions regarding copyright ownership in course materials produced for online learning—the product of a semester’s worth of work by student clinicians at the Georgetown Law iPIP clinic, Elise Widerlite and Harry Levin, supervised by Amanda Levendowski and Nina Srejovic. In this week’s post, we share some of the stories and copyright challenges that led us to develop this resource. The FAQ is in large part a response to the changes made in higher education instruction during the COVID-19 pandemic, but there is reason to believe that the information it contains will continue to be relevant and informative for university faculty in the future.
Universities Grapple with Copyright Policies
Even prior to the start of the pandemic, online instruction had for years been increasing in popularity, and universities were grappling with how to handle copyright issues in materials created for online learning. By custom or through policy, many universities allow faculty to retain copyright ownership over traditional academic materials they create, such as syllabi and lesson plans, but this arrangement can and often does differ for materials created for instruction in non-traditional settings—such as those created for online courses.
In October 2019, Purdue University adopted an intellectual property policy that treated all online courseware and online modules as “works for hire,” meaning that the university would own the copyright in these materials rather than the professor-creators. Once in-person instruction moved online in the early months of 2020, faculty became concerned that the university could claim ownership over traditional course materials that had moved to an online format due to the exigencies of the pandemic, and asked the university to pledge that it would not seek ownership over these materials or use them commercially without the professors’ consent. In response to faculty complaints, Purdue clarified that it did not seek ownership in traditional course materials used in courses that had moved online, and agreed to seek permission from instructors before commercializing the online course materials that it did consider to be works for hire.
The disconnect between Purdue’s 2019 IP policy and the faculty expectations during the pandemic shows the challenges that the shift to online instruction caused for universities and professors alike. Uncertainty in copyright ownership helps no one, and we created our new FAQ to shed some light on how various university policies can interact to govern copyright ownership in online course materials.
New Copyright Challenges in Online Instruction
The move to remote instruction also exposed some oddities in university intellectual property policies. At American University (“AU”), the university sent professors guidance on intellectual property rights in the course materials they created prior to the start of the Fall 2020 academic term. The university policy stipulated that if faculty members produced materials for online instruction using commercial software (like Skype or Google Hangouts), those faculty members would own the copyrights in those materials. If, however, the faculty members used the university-provided Blackboard software to develop those same types of materials, AU would own the copyright in the works. Faculty members pointed out that it was strange that the copyright ownership in these materials depended on the software used to produce them and not their content: a lecture recorded using Blackboard would be subject to different copyright ownership rules than an identical lecture recorded using Skype. And other university faculty chimed in with similar stories: at some universities, faculty are even unable to delete videos they recorded using Blackboard software from university course pages.
Faculty members at AU also expressed fears that the Blackboard-created course materials could be used by the university once they were no longer teaching there, such as in the event of a labor dispute between faculty members and the employing university. In our FAQ, we discuss the possibility of a university using online course materials created by a faculty member once that faculty member no longer teaches at the university to help faculty members who may find themselves in this situation.
Unexpected Consequences: The Ghost Professor
Changing copyright ownership structures in materials created for online learning can result in unexpected consequences for students and the academic community. In January of this year, a student at Concordia University in Canada discovered that the professor of the online course he was enrolled in was, in fact, deceased. Incredibly, the student only made this discovery when he attempted to email his professor about a matter related to the course. Concordia confirmed that the professor of record for the course was deceased and stated that the course materials had been part of the university’s online catalogue prior to the pandemic: the now-deceased professor recorded the lectures with an understanding that they would be used for online instruction without further in-person involvement by the professor.
While the precise copyright ownership structure that led to this result is not known, it shows an unexpected consequence of handing over rights in online course materials to a university. As we discuss in the FAQ, handing over all rights can result in a lack of control for the professor over how course materials are disseminated in the future.
Online Instruction Going Forward
While many academic institutions that had implemented distance learning during the 2020-2021 academic year will begin offering in-person classes for the upcoming fall semester, there is reason to believe that the copyright and authorship challenges exposed by the temporary move to remote instruction are here to stay. A recent survey of university students found that students had a more positive outlook on online learning than they did before the start of the pandemic, and that a higher percentage of students wanted online learning options compared to before the start of the pandemic. Additionally, faculty at a number of universities have expressed a desire for flexibility in where and when they work. Like many employees across sectors, many university faculty do not wish to return to working in-person five days a week, due to challenges of the pandemic or the adjustments these challenges necessitated. Where in-person instruction is not possible or feasible full-time, online learning can fill the gap, just as it did during the pandemic, making copyright issues in materials produced for online learning of continuing relevance.
Our FAQ seeks to address these issues and more. We hope it will prove a valuable resource for university faculty that will create or have created online course materials and seek clarity regarding who owns the copyrights in those works and how the works can be used. We encourage you to dig in to the FAQ and share it with those in your professional or personal circles that may find it useful.
Authors Alliance is grateful to Harry Levin and Elise Widerlite, student attorneys at Georgetown Law practicing D.C. law pursuant to D.C. App. R. 48 under the supervision of Amanda Levendowski and Nina Srejovic, for researching and authoring this FAQ.
Many universities’ policies and customs provide that professors have full copyright ownership in the traditional academic materials they create, such as syllabi and lesson plans. However, this arrangement may differ for online course materials. For example, universities may assert ownership over copyrights in materials that are created for online presentation outside of the confines of the traditional classroom or academic term. As such, materials produced for an online class, a hybrid course taught over the summer, or for a project with a third-party provider may be subject to different rules. Since the shift to a virtual learning environment brought on by the COVID-19 pandemic has prompted faculty at many universities to create new course materials to facilitate distance learning, many faculty authors have questions about who owns the copyrights in these materials. Because the allocation of copyrights affects how course materials can be used, modified, and shared, it is important for faculty to have clarity about copyright ownership in the materials they create.
This FAQ answers common questions faculty may have about how to determine who owns copyrights in the materials they create for online courses, as well as whether and how uses of those materials may be limited. It is for faculty who have created or will create online course materials and want to understand their rights under their faculty contracts, university policies, and other agreements with their institution. It provides faculty with the information they need to navigate the terms that govern copyrights in the online course materials they create and provides resources for learning more about the copyright issues involved.
This FAQ addresses U.S. copyright law. It does not address other areas of law, including privacy, trademark, and state law issues. This FAQ is not legal advice nor does using this FAQ create an attorney-client relationship. Please consult an attorney if you would like legal advice about your rights, obligations, or individual situation.
This FAQ has three parts. Part I provides an introduction to online course materials and copyright as it relates to those materials. Part II explains how course agreements can shape how you and your university can use, modify, and share online course materials. Finally, Part III provides additional guidance and resources. To get the most out of the FAQ, you may wish to have your institution’s intellectual property policies, your employment contract(s), and any project-specific contract(s) in hand.
News about non-fungible tokens (“NFTs”) selling for eye-popping sums has been hard to miss. Nyan Cat, an iconic GIF of a cat with a Pop-Tart for a torso flying through space, sold for nearly $600,000. Twitter CEO Jack Dorsey’s first tweet—a mere five words—recently sold for nearly $3,000,000. And an NFT representing digital artist Beeple’s Everydays: the First 5000 Days collage set a record in March as the third most expensive artwork ever sold from a living artistwhen it sold at a Christie’s auction for more than $69,000,000.
While NFTs offer a new avenue for creators to get paid for digital assets, many have questions about what exactly an NFT holder “owns” in relation to the digital object and whether that ownership includes copyrights. This post explains these concepts and how they relate to ownership of physical objects.
NFTs are unique cryptographic assets that exist on a blockchain. NFTs facilitate the sale of digital items by providing owners of digital objects with a registration record to keep track of and verify the ownership of a digital file. Because NFTs can be used to represent unique digital items, they provide a way for individuals to own and collect “authentic” versions of digitally native assets.
Digital artists have struggled to monetize their creations since digital art can be readily copied and shared online in its original form. NFTs don’t change this: digital files represented by NFTs can still be copied and shared (setting aside the copyright implications of doing so). Instead, NFTs represent something that cannot be copied: the right to claim ownership of the underlying digital work. In this respect, NFTs can be used to create artificial scarcity by making only one NFT to represent a work, bringing “ownership” of a digital work of art more in line with ownership of a physical work of art.
Like physical art, the NFT itself can be sold. Because of the record keeping function of the blockchain, some NFTs ensure that artists get a percentage of the sales proceeds every time the ownership changes hands on the secondary market, a feature that is somewhat akin to an artist resale right, or droit de suite, that exists in many European countries and provides that artists receive royalties for their works when they are resold.
On its own, an NFT does not transfer intellectual property rights to the NFT holder. This means without an additional license or transfer of copyrights, the NFT holder does not acquire the rights to make and sell copies of the digital artwork. While this may seem surprising, this is analogous to how ownership works in the physical world: the ownership of a physical object is distinct from the ownership of copyright. The owner of a painting may do whatever she wants with the physical copy—sell it, give it away, etc.—but she does not acquire the copyrights in the painting simply by purchasing the physical copy. Without further authorization, the owner of a copyrighted painting typically cannot, for example, make and sell greeting cards with copies of the painting on them, which would be unauthorized reproductions of the work. In this way, ownership of the NFT is similar to owning a physical copy of any creative work, though the NFT owner simply has the token recording ownership rather than a physical manifestation of the object.
That said, a digital artist can elect to transfer or license some or all or of her copyrights to the NFT holder. For example, when MetaKoven bought the NFT representing Beeple’s Everydays at auction, he also acquired some rights to display the artwork online. While it is not yet clear what MetaKoven will do with these rights with respect to Everydays, in December he purchased a different collection of digital artworks by Beeple, which he is displaying in a digital museum (where he is also selling fractionalized ownership of the collection). Whether art lovers will find the virtual gallery experience approachable, let alone a satisfactory parallel to the analog world—and whether collectors and investors will continue to find appeal in ownership of NFTs—is yet to be seen.
Authors of written works wondering what opportunities they might have to take advantage of the NFT craze may look longingly at the recent sale of a New York Times column by Kevin Roose about NFTs that was itself turned into an NFT. Pitched as “the first article in the almost 170-year history of The Times to be distributed as an NFT,” it recently sold for $560,000 in a charity auction. Illustrating the concept that ownership of the NFT does not itself transfer any copyrights, Roose’s article makes clear “the NFT does not include the copyright to the article or any reproduction or syndication rights.” The NFT holder acquires no more rights to copy and share the article than someone who accesses the column through their New York Times digital subscription or who has a copy of the Times delivered each morning.
Unsurprisingly, commentators disagree as to whether the NFT hype is here to stay or will soon die down. In the meantime, NFTs offer a novel way for tech savvy creators to bring attention to and potentially monetize their digital works.
Last week, we celebrated a new batch of works from 1925 entering the public domain. In copyright, the public domain is the commons of material that is not protected by copyright. When a work enters the public domain, anyone may do anything they want with the work, including activities that were formerly the “exclusive right” of the copyright holder like making copies of, sharing, and adapting the work.
Some people mistakenly think that the “public domain” means anything that is publicly available. This is wrong: The public domain has nothing to do with what is readily available for public consumption. Just because a work is freely available on the internet, for example, doesn’t mean the work is in the public domain. Under today’s copyright laws, copyright protection is automatic. This means, for example, that a photographer could take and upload a photograph to a publicly accessible website, and—despite its public availability online—unauthorized uses of the photograph may be infringing, unless the use is otherwise allowed under an exception to copyright.
Just how do works become a part of the public domain? In this post, we’ll share some of the ways in which works enter the public domain or simply exist as a part of the public domain because of the limits of copyright.
Copyright Expiration
One way that works become a part of the public domain is the expiration of their copyright protection. Copyright protects works for a limited time and after that, the copyright expires and works fall into the public domain. Under U.S. copyright law, as of 2021, all works first published in the United States in 1925 or earlier are now in the public domain due to copyright expiration. Copyright law has changed over time and the term of copyright is now calculated based on the life of the author. Under today’s copyright laws, works created by an individual author today won’t enter the public domain until 70 years after the author’s death.
It can be devilishly difficult to determine whether a work’s copyright has expired. For example, while works first published in the United States in 1925 or earlier are in the public domain, unpublished works created prior to 1925 may not be. We recommend Peter Hirtle’s Copyright Term and the Public Domain in the United States and Berkeley Law’s “Is it in the Public Domain?” Handbook to help you evaluate a work’s copyright status.
Failure to Comply With Formalities
While 2021 brings certainty that works first published in the United States in 1925 are in the public domain, changes in copyright duration and renewal requirements during the 20th century mean that works first published in the United States between 1926 and March 1, 1989 could also be in the public domain because their copyrights were not renewed or because the copyright owner failed to comply with other “formalities” that used to be required for copyright protection. These formalities included requirements that the copyright owner register her work with the Copyright Office and mark the work with a copyright notice upon publication. Analysis from the New York Public Library revealed that approximately 75% of copyrights for books were not renewed between 1923-1964, meaning roughly 480,000 books from this period are most likely in the public domain.
Under today’s copyright laws, authors of new published works are no longer required to comply with any formalities to be eligible for copyright protection, though there are significant benefits to doing so.
Uncopyrightable Subject Matter
Copyright law is not unlimited. There are certain things that are seen as fundamental building blocks of creativity and authorship and are therefore simply not protected by copyright, entering the public domain automatically.
An important category of things that are not copyrightable are facts—even if those facts are obscure or were difficult to collect. For instance, suppose that a historian spent several years reviewing field reports and compiling an exact, day-by-day chronology of military actions during the Vietnam War. Even though the historian expended significant time and resources to create this chronology, the facts themselves would be free for anyone to use. That said, the way that the facts are expressed—such as how they are articulated in an article or a book—is copyrightable. The lack of copyright protection for facts is central to copyright law: Even “asserted truths,” or information presented as factual which later turns out to be untrue, are part of the public domain.
Ideas, themes, and scènes à faire are categories of expression that are also outside of copyright protection. These concepts are closely related, and the overarching justification for excluding them from copyright protection is that they are simply too general and standard to a particular genre or convention for an individual creator to be granted a temporary monopoly on them. Here again, though copying the words used to express the idea or theme could constitute infringement, the similarity of general ideas, themes, or other elements of a work which are standard in the treatment of a given topic cannot form the basis of an infringement claim. For more on ideas, themes, and scènes à faire, check out our post on uncopyrightable subject matter for fiction writers.
Other Exclusions
The U.S. Copyright Office provides information about additional types of works and subject matter that do not qualify for copyright protection, including names, titles, and short phrases; typeface, fonts, and lettering; blank forms; and familiar symbols and designs. It is worth noting that other areas of intellectual property, such as patent or trademark law, could provide protection for categories that are not eligible for copyright protection.
The Copyright Act provides that works created by the United States federal government are never eligible for copyright protection, though this rule does not apply to works created by U.S. state governments or foreign governments. And under the government edicts doctrine, judicial opinions, administrative rulings, legislative enactments, public ordinances, and similar official legal documents are not copyrightable for reasons of public policy.
The U.S. Copyright Office also reminds potential registrants that works that “lack human authorship” are uncopyrightable, using as an example “a photograph taken by a monkey.” Sound familiar?
Abandonment / No Rights Reserved
In theory, a copyright owner can voluntarily abandon her copyright prior to the expiration of the work’s copyright term by engaging in an overt act reflecting the intent to relinquish her rights. Abandoned works then become part of the public domain, free from copyright and available for anyone to use.
Creative Commons offers a “No Rights Reserved” tool for copyright owners who wish to waive copyright interests in their works and thereby place them as completely as possible in the public domain. And recently, satirist Tom Lehrer added a statement to his website granting permission to the public to download and reuse his lyrics, noting that they “should be treated as though they were in the public domain.” That said, a scholarly article by Dave Fagundes and Aaron Perzanowski criticizes the current state of the law surrounding copyright abandonment. The authors assert that the lack of a clear, reliable way to abandon copyright frustrates authors who wish to abandon their copyrights, and the practical effectiveness of abandonment is undermined by the lack of a broadly accessible record of abandoned works.
Literary aficionados and copyright buffs alike have something to celebrate as we welcome 2021: A new batch of works published in 1925 is entering the public domain on January 1. In copyright, the public domain is the commons of material that is not protected by copyright. When a work enters the public domain, anyone may do anything they want with the work, including activities that were formerly the “exclusive right” of the copyright holder like copying, sharing, and adapting the work.
If you agree with BBC Culture’s assessment that the year 1925 was a “golden moment in literary history,” and maybe even “literature’s greatest year,” there is reason to be excited about the latest collection of books to enter the public domain in the United States. Some of the more recognizable titles include:
F. Scott Fitzgerald’s The Great Gatsby (published in 1925, renewed in 1953)
Virginia Woolf’s Mrs. Dalloway (published in 1925, renewed in 1953)
Sinclair Lewis’s Arrowsmith (published in 1925, renewed in 1952)
Ernest Hemingway’s In Our Time (published in 1925, renewed in 1953)
John Dos Passos’s Manhattan Transfer (published in 1925, renewed in 1953)
Theodore Dreiser’s An American Tragedy (published in 1925, renewed in 1953)
Copyright owners of works first published in the United States in 1925 needed to renew the work’s copyright in order to extend the original 28-year copyright term. Initially, the renewal term also lasted for 28 years, but over time the renewal term was extended to give the copyright holder an additional 67 years, for a total term of 95 years. This means that works that were first published in the United States in 1925—provided they were published with a copyright notice, were properly registered, and had their copyright renewed—are protected through the end of 2020.
Once in the public domain, works can be made freely available. Organizations that have digitized text of these books, like Internet Archive, Google Books, and HathiTrust, can now open up unrestricted access to the full text of these works. HathiTrust alone will open up full access to more than 35,000 titles originally published in 1925. This increased access provides richer historical context for scholarly research and opportunities for students to supplement and deepen their understanding of assigned texts. And authors who care about the long-term availability of their works may also have reason to look forward to their works eventually entering the public domain: A 2013 study found that in most cases, public domain works are actually more available to readers than all but the most recently published works.
So what new creativity might we have to look forward to with the current collection of 1925 works entering the public domain? Blake Hazard, F. Scott Fitzgerald’s great-granddaughter and a trustee of his literary estate offers one possibility. Hazard told the Associated Press that, as The Great Gatsby’s95 years of copyright protection was coming to a close, “We’re now looking to a new period and trying to view it with enthusiasm, knowing some exciting things may come. […] I would love to see an inclusive adaptation of Gatsby with a diverse cast. Though the story is set in a very specific time and place, it seems to me that a retelling of this great American story could and should reflect a more diverse America.”
As we discussed last week, some features of fiction work are outside of copyright protection altogether. But what about literary characters? As it turns out, the answer is not entirely clear cut. Some literary characters are entitled to copyright protection, and courts employ different tests to make this determination on a case-by-case basis. As a general rule, the more well-defined and unique a character is, the more likely it is to be entitled to copyright protection. This principle was established by the renowned Judge Learned Hand in a 1930s case, Nichols v. Universal Pictures. In that case, Judge Hand pushed back against attempts to claim copyright in characters that were defined mostly by scènes a faire and were therefore “stock figures.” More recently, courts have refined this analysis while considering the copyrightability of popular characters.
In Detective Comics v. Bruns Publications—decided just a few years after the Nichols case—a court found that the Superman character was subject to copyright protection despite arguments that the character embodied the stock hero “Hercules” character commonly used in epics and action stories. Because Superman had original attributes beyond a Hercules type, the court found he could be copyrighted, and that a competing comic, Wonderman, infringed the copyright in the Superman character with its Wonderman character. The court observed that both Superman and Wonderman “conceals his strength beneath ordinary clothing but after removing his cloak stand revealed in full panoply in a skintight acrobatic costume.” Both were described as “the strongest man in the world” and “the champion of the oppressed,” and the only significant difference in their portrayal in the comics was that Wonderman wore a red uniform and Superman a blue one. The court concluded that the authors of Wonderman had “used more than the general types and ideas” present in the Superman character, and found infringement.
Litigation involving famous detective Sherlock Holmes illuminates the nuances of copyright protection for literary characters a bit further. In a 2014 case, Klinger v. Conan Doyle Estate, the estate of Sir Arthur Conan Doyle sued the editor of an anthology of stories inspired by Sherlock Holmes, alleging that her work infringed the copyright in several Sherlock Holmes stories that had not yet entered the public domain. At the time of the lawsuit, a bulk of the stories had entered the public domain based on the expiration of the copyrights in those stories. The court rejected the estate’s argument that because some of the stories were still under copyright, the characters of Sherlock Holmes and his sidekick, Watson, remained under copyright. Because Klinger’s anthology was inspired by the Sherlock Holmes cannon as a whole, much of which had entered the public domain, the estate could not claw back copyright protection simply because a few stories about Holmes remained under copyright. Therefore, even if a character can be protected by copyright, when the underlying work enters the public domain, so too does that character. In this way, the court circumscribed copyright protection for literary characters.
But the Conan Doyle estate’s attempt to stake out a valid copyright in the character of Sherlock Holmes, despite many of the stories having entered the public domain, did not end there. Recently, the estate filed a lawsuit against Netflix, alleging that its new series, Enola Holmes, infringed the copyright in the Sherlock Holmes stories which remained under copyright. In this case, the estate is arguing that these later stories portrayed a different version of Sherlock Holmes than that of the early stories, and alleges Netflix appropriated the character traits of the version of Holmes portrayed in the late stories. Among the Holmes traits the estate alleges that Netflix copied are an affinity for dogs and a respect for women, which it argues were not present in the early stories that have entered the public domain. This lawsuit demonstrates the uncertainty in protection for literary characters: the question is the same as the one considered in the Klinger case, but with new factual circumstances, a court will once again consider the copyrightability of Holmes and whether Netflix’s new work infringes the estate’s copyrights.
Another recent court case involving a popular Disney film provides a contemporary example of characters which are too general and ill-defined for copyright protection. In Daniels v. Disney, the author of a series of children’s books sued Disney, alleging that its popular film, Inside Out, infringed her copyright in the “Moodster” characters in her own work, which were “color-coded anthropomorphic emotions,” such as a yellow character representing happiness and a red character representing anger. The court found that the Moodsters characters were not sufficiently “delineated” and consistent to qualify for copyright protection: the appearances and names of the Moodsters changed over time, with only the colors and associated emotions remaining consistent across different works. In a sense, the court found that the characters were embodiments of the idea of associating color with emotion, making the claim also based on an uncopyrightable idea. Because the moodsters were not protected by copyright, the court did not need to consider whether Disney’s anthropomorphized emotions constituted infringement. Daniels has appealed the ruling to the Supreme Court, which has not yet decided whether to hear the case. Authors Alliance will keep its members and readers updated about this case as it develops.
It is a basic tenet of copyright law that some things are simply outside of copyright protection. These are often referred to as uncopyrightable subject matter. There are a few a bright line rules in the United States—for example, that titles of literary works, slogans, and lists of ingredients cannot be copyrighted—but outside of these principles, things become a bit more complicated.
Categories of uncopyrightable subject matter affecting fiction writers are ideas, themes, and scènes à faire. These concepts are closely related, and the overarching justification for excluding them from copyright protection is that they are simply too general and standard to a particular genre or convention for an individual creator to be granted a temporary monopoly on them—which is what copyright provides.
Ideas and Themes
Ideas and themes cannot be copyrighted, although the expression of a particular idea or theme can be. In other words, when a fictional work involves a particular concept, a later work’s use of this concept cannot form the basis of an infringement claim, though copying the words used to express the idea or theme could constitute infringement.
In Williams v. Crichton, the author of a series of children’s books sued the author of Jurassic Park, alleging that the film infringed his copyright in his own book, which also involved “the concept of a dinosaur zoo.” After examining each work in turn, the court concluded that both portrayed dinosaur zoos, but also found that the idea of a dinosaur zoo could not be copyrighted. The dinosaur zoos were expressed in different ways: one was in a natural remote island, another an entirely man-made attraction.
Similarly, in Allen v. Scholastic, a court considered an allegation that J.K. Rowling’s Harry Potter and the Goblet of Fire infringed the copyright in a lesser-known picture book. Both works had a wizard protagonist who participated in a wizarding competition, and both were “primarily created for children,” but the similarities ended there: Allen’s work was just sixteen pages, whereas Rowling’s was over 700. The works were “distinctly different in both substance and style” and elicited “very different visceral responses from their readers.” Here too, the idea of a wizarding competition was found to be outside of copyright protection.
In Madrid v. Chronicle Books, poet Lori Madrid alleged that the Pixar film, Monsters, Inc., infringed her copyright in a poem about a monster which is frightened to discover a human child in its closet. Madrid argued that the presence of “a big, fat, furry monster with horns on its head” and “monsters in children’s bedroom closets and vice versa” in both works was evidence of infringement. The court disagreed, finding that both were uncopyrightable ideas. The court pointed to other earlier works which also made use of these ideas—such as Maurice Sendak’s Where the Wild Things Are—as evidence that they were not the kind of original, creative expression copyright seeks to protect.
Themes—which often flow from ideas central to a work—are similarly not subject to copyright protection. In the Scholastic case about Harry Potter, themes of friendship and competition in both works were found insufficient to establish a copyright infringement claim, as these concepts were too general such that finding infringement would go against copyright’s goal of encouraging the free exchange of ideas. And in the Chronicle Books case about Monsters, Inc., the theme of a mother-child relationship was similarly too general to serve as the basis of an infringement claim.
Scènes à Faire
Scènes à faire (from the French for “scenes to be made”) are characters, settings, events, or other elements of a work which are standard in the treatment of a given topic. The doctrine of scènes à faire recognizes that these elements are not copyrightable and cannot form the basis for a claim of infringement. In the Jurassic Park case discussed in the previous section, for example, the court found that “electrified fences,” “workers in uniforms,” and “dinosaur nurseries” were scènes à faire that flowed naturally from the unprotectable idea of a dinosaur zoo. Because the idea of the dinosaur zoo itself cannot be protected, and a dinosaur zoo is likely to include these elements as a logical matter, they also are not subject to copyright protection.
Courts have found that certain ideas or literary genres are associated with particular scènes à faire, such that those elements cannot form the basis of an infringement claim. InHogan v. D.C. Comics, considering an allegation that one vampire novel infringed another, a court found that “imagery of blood, religious symbolism such as crosses and allusions to the bible” were indispensable to vampire tales, making these elements scènes à faire in this context. Similarly, in DuBay v. King, considering an allegation that Stephen King’s The Dark Tower series infringed the copyright in a cartoon published in the late 1970s and early 1980s, a court found that similarities in the protagonists’ “looks” did not constitute infringement where both were “[a] western, or cowboy-looking loner often in desolate or eerie surroundings.” Because such a costume and presentation was standard in a story about the Old West, these similarities were scènes à faire and could not form the basis of an infringement claim.
A recent decision from the Ninth Circuit Court of Appeals, Corbello v. Valli, may finally put to bed over a decade of litigation over alleged copyright infringement in the hit Broadway musical, Jersey Boys. The play depicts the history of the musical quartet, Four Seasons, which rose to prominence in the 1960s. The Ninth Circuit held that historical facts—even those which an author later claims are untrue—are not entitled to copyright protection, and cannot form the basis of a successful copyright infringement claim. The decision provides substantial clarity for authors wishing to use historical facts from other works in their own later works, and affirms that facts are not copyrightable—full stop.
Background
The case concerned several alleged similarities between Jersey Boys and an unpublished autobiography written by Four Seasons member Tommy DeVito and a ghostwriter, Rex Woodward. The autobiography purported to be a “straightforward historical account,” and describes itself at the outset as the “complete and truthful chronicle of the Four Seasons,” narrated by DeVito. The work was completed in 1991, but Woodward died shortly thereafter, and DeVito and Donna Corbello—Woodward’s widow and the plaintiff in the case—were unable to find a publisher for the work.
In 2005, Jersey Boys debuted on Broadway, where it ran for 12 years. The musical also toured North America and the United Kingdom several times and won four Tony awards—by all accounts a huge success. Corbello believed that the success of Jersey Boys could lead to increased interest in the band, and in 2007, sought to confirm the copyright registration for the unpublished autobiography, but discovered that the copyright for the work had been erroneously registered in DeVito’s name only. After re-registering the copyright for the autobiography in both authors’ names, Corbello learned that the play’s writers were given access to the work to use in their research.
In 2007, Corbello sued DeVito for breach of contract, various forms of copyright infringement, equitable accounting, and other causes of action. After multiple proceedings, the case proceeded to trial, where the jury found that Jersey Boys infringed the unpublished autobiography and that 10% of the play’s success was attributable to the autobiography. However, the district court subsequently found that Jersey Boys’ use of the copyrightable portions of the autobiography was fair use—a doctrine which allows creators to use brief portions of copyrighted works without permission or payment for certain purposes, such as criticism, news reporting, or parody. Unsatisfied with this finding, Corbello appealed to the Ninth Circuit, which heard the case in June 2019.
The Decision
In a decision by Circuit Judge Marsha Berzon, the court rejected Corbello’s argument that the similarities between the Jersey Boys and the autobiography infringed Corbello’s copyright in the autobiography, overturning the jury’s finding of infringement altogether without discussing whether fair use would have applied. This was because each of the elements that the Jersey Boys creators took from the autobiography were historical events and facts, which are not protected by copyright—a basic tenet of copyright law.
The court examined in detail each of the alleged similarities between the autobiography and the play—including certain dialogue, origins of Four Seasons songs, and the occurrence of a particularly raucous party—and concluded that the similarities were due to the use of the same historical facts in both works. In some cases, the similarity was even based on a well-known event that DeVito had recounted elsewhere, such as a staged murder in one of the band member’s cars. The court concluded that each similarity between the two works was based on historical facts as well as shared common phrases and what are known scènes-à-faire—ideas and scenes that are standard in the treatment of a certain topic, such as a shoot-out in a western film.
“Asserted Truths”
Judge Berzon rejected Corbello’s argument that because some of the facts Jersey Boys took from the autobiography were apparently fabricated by DeVito, those should be entitled to copyright protection as non-factual creative expression. In what it called the “asserted truths doctrine” (known as “copyright estoppel” in other jurisdictions), the court stated that where a text represents itself as historically accurate—and therefore factual in nature—the copyright holder cannot later claim that the work was fictionalized in order to obtain copyright protection.
The court examined both the text of the autobiography and the manner in which it was submitted to publishers and found it was represented as fact: the work explicitly represented itself as factual, and pitch letters emphasized that the autobiography would disclose “the truth” about several events and reveal “the secret past that the performers successfully hid for almost three decades.” The fact that Corbello now claimed that some elements of the autobiography were fictionalized or inaccurate and that these same elements were present in the play did not change the court’s analysis: what matters is how the text is presented, not how it is later characterized by the copyright holder.
Finally, the court rejected the argument that the “asserted truth doctrine” did not apply to an unpublished work, finding that regardless of whether the audience for the work is “a few actual readers” (for unpublished works) or “the general public,” the representations of truthfulness determine the factual nature of the work for purposes of copyright protection. It is thus the apparent nature of the work—in this case, a factual autobiography—and not whether it is in fact fully accurate or factual, that determines whether it is entitled to copyright protection, or unprotected as factual in nature.
Implications for Authors
This decision clarifies the bounds of unprotected facts under copyright law and simplifies the process a court must undertake to determine whether allegedly infringing uses are factual in nature, or events recounted actually happened—it need only look to the work itself to see if it represents itself as factual. It also underscores the important point that facts are not protected by copyright law, and makes it easier for creators to use facts from other works in their own works without fear of copyright liability. The decision serves as an obstacle for those who seek to bring copyright infringement suits based solely on factual information, strengthening protections for authors who seek to use facts present in copyrighted works to contribute knowledge and scholarship to their communities. It also makes clear that these creators will not be held liable for using factual information from other works that later turns out to be untrue, further easing the threat of copyright liability when nonfiction works are relied upon as accurate.
Over ten years ago—when I began writing my new book, 
