Out Of Character: Jersey Boys, Detective Stories, & The Case Of Space-Traveling Tardigrades

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At heart, and still, I am a non-singing Jersey Boy, and one who grew up reading Sherlock Holmes stories and watching Star Trek, the Original Series (before it even needed that modifier), in reruns in the 1970s while also keeping up with the real Rocky. And, I have been writing for ILN IP Insider for five and one half years (first article appeared in March 2015), and have shown my Star Trek chops and character knowledge here on several different occasions, like bouncing from planet to planet. So, to paraphrase that famous opening, I have tried exploring “Law: the final frontier. These are the voyages of ILN’s enterprise. Its continuing mission: to explore strange new cases. To explain new rights and new rationalizations. To boldly show where lawsuits have gone before!”

So this is an interesting post for me to able to write, as it combines a discussion of fact and fiction writing, copyright, and elements what makes a character, real or otherwise, memorable. It stems from three cases, two quite recent and one a few years older, that nonetheless may see a new chapter opening with a more recent filing in New Mexico. That these cases involve The Jersey Boys, Star Trek, and Sherlock Holmes, respectively, just makes them a little more fun.

Let’s start with the three cases. They are Donna Corbello v. Thomas Gaetano DeVito et al., a case that the United States Court of Appeals for the 9th Circuit decided on September 8, 2020, Abdin v. CBS Broadcasting Inc., which the 2d Circuit decided on August 17, 2020, and Klinger v. Conan Doyle Estate, decided by 7th Circuit in 2014 but potentially quite relevant to a new lawsuit filed this summer. “What are they about?”, and “how are they connected?” are fair questions. Asking those questions here is the equivalent of Star Trek’s “Captain’s Log” (or “Standard orbit, Mr. Sulu”), Holmes’ “Come, Watson. The game is afoot,” or “Ladies and Gentleman, the Four Seasons”–It means it is time to start.

What are they about?

Corbello is The Jersey Boy’s case. Essentially, this case involved whether that musical about Frankie Valli and the Four Seasons infringed on the autobiography of group member Tommy DeVito (who unfortunately passed away just a few weeks ago). The questions in the case revolved around whether the musical infringed the book’s copyright, or whether, as the Corbello court ultimately concluded, “each of the alleged similarities between the Play and the Work are based on historical facts, common phrases and scenes-a-faire (scenes that are ‘indispensable, or at least standard, in the treatment of a given idea, …or elements that were treated as facts in the Work and are thus unprotected by copyright.” That reference to “treated as facts in the Work” is most interesting because the court was not saying they were facts—“Under the doctrine [of copyright estoppel or the asserted truths doctrine], elements of a work presented as fact are treated as fact, even if the party claiming infringement contends that the elements are actually fictional. An author who holds their work out as nonfiction thus cannot later claim, in litigation, that aspects of the work were actually made up and so are entitled to full copyright protection.” Thus the most interesting part of assessing whether The Jersey Boys musical infringed Tommy DeVito’s unpublished autobiography involved asserted truth, :whether or not actually factual.” As the court would conclude repeatedly, in words or substance, “Facts presented in a historical work, ‘whether correct or incorrect,’ may be used by subsequent authors without infringing” and “asserted facts do not become protectable by copyright even if, as [copyright holder] now claims, all or part of the dialogue was made up.” Thus, the court provided a direct, simple answer to the rhetorical question from My Boyfriend’s Back – “What made you think he’d believe all your lies?”—and it was basically “you said it was true, so you’re stuck with it,” (which, for clarity in this context, is not a direct quote from the court’s opinion).

Next is Abdin, the latest in a long line of Star Trek-related copyright cases. This time CBS is the defendant facing the claim that it infringed on a character created by another, rather than it is usual role of protecting its own characters, repeat and fleeting, specifically starring or generally in the chorus, from infringed (as I had previously written about). Interestingly, though this case involves the creative fictional characters found in a video game and the latest Star Trek spin off, it captures some attention because the disputed characters are tardigrades, which, as the 2d Circuit noted, are “real life microscopic organism[s] with the unique ability to survive in space.” (As the Court added, “The tardigrade, also known as a ‘water bear’ or ‘moss piglet,’ is a microscopic eight-legged animal less than one millimeter in length.”) Essentially, this case involved the question of whether Abdin’s 2014 video game (which included a “giant blue tardigrade” character) was infringed when the first season of the Star Trek series Discovery included, when it debuted in 2017, a fictional character known as “Ripper, ‘a huge and seemingly dangerous beast that resembles a massive version of Earth’s micro-animals, the tardigrade.’” As the Abdin court further explained, “Ripper shares qualities similar to those of an Earth-based tardigrade, such as the unique ability to ‘survive extreme heat and sub-freezing temperatures, including the vacuum of space.” The video game had added size and the ability travel (rather than just survive) to the standard biological facts concerning tardigrades. Nevertheless, both the district court and appellate court found no infringement because “Abdin’s space-traveling tardigrade is an unprotectable idea because it is a generalized expression of a scientific fact — namely, the known ability of a tardigrade to survive in space.” As for other alleged infringements, “many of the alleged similarities in the parties’ works (e.g., the use of a space ship, space travel, and alien encounters) ‘are unprotectable elements that follow naturally from a work’s theme rather than from an author’s creativity.’” As the Abdin court noted, “[w]hile the characters do share some traits such as hair color, race, and profession, the Videogame’s many characters have a wide range of physical traits and the suggestion that a copyright infringement claim can be based on such generic and common characteristics is ‘highly illogical.’” Indeed, “after extracting the unprotectable elements from Abdin’s Videogame — the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits — …the Videogame and Discovery are not substantially similar because the protectable elements, as described above, are markedly different.”

And finally, Klinger is a case about an anthology by modern authors (rather than Arthur Conan Doyle) of stories “inspired by, and in most instances depicting, the genius detective Sherlock Holmes and his awed sidekick Dr. Watson,” as the 7th Circuit described it. That case raised the question of whether repeating a character (like Sherlock Holmes) in successive works extends the period of time such characters are protected by copyright by having the rights run from the last work created rather than first, regardless of what protectable character trait is copied or when it was first applied to that character. The estate of Arthur Conan Doyle argued in Klinger that, as a matter of copyright law, the Klinger court posed the question this way, “copyright on a ‘complex’ character in a story, such as Sherlock Holmes or Dr. Watson, whose full complexity is not revealed until a later story, remains under copyright until the later story falls into the public domain.” (We will leave aside, as the estate did in that, trademark rights and the metaphysical question (perhaps to return to in a later post) of whether a fictional character enjoys a right of publicity (or perhaps whether real actor has a right of publicity in the portrayal of a fictional character, or some amalgam)). The estate argued that “the fact that early stories in which Holmes or Watson appeared are already in the public domain does not permit their less than fully complexified’ characters in the early stories to be copied even though the stories themselves are in the public domain.” The appeals court found there to be “[l]acking any ground known to American law for asserting post-expiration copyright protection of Holmes and Watson in pre-1923 stories and novels going back to 1887.” The court also rejected the policy arguments for extending character copyright for all evolving character, or at least all “round,” developed characters (which has also been the focus of some interesting scholarship). Thus, the new authors could publish their stories.

So we have three interesting cases. In one of them, an author of a work of fact claimed some his foundation was actually made up and protectable. In another, an author of a work of fiction claimed some of the actual science supporting his story could not be copied. And finally, one involved numerous authors relied on the fact that the fictional characters from which they were cribbing were too old to be protected. Though all coming from slightly different perspectives, each gave victories to the later creator—the belated playwright over the earlier autobiographer (Corbello), the recent screenwriter over the prior video game designer (Abdin), and new anthologists over the old estate (Klinger). The questions arises as to whether this is a random trio or if there is something else at work here.

While the Estate of Conan Doyle suggested in the earliest case in our trio that its claims were about protecting property from what one might call, to borrow a phrase, character assassination, the Klinger court saw it more as some sort of reverse ransom for character abduction (or maybe more accurately character leasing):

We can imagine the Doyle estate being concerned that a modern author might write a story in which Sherlock Holmes was disparaged (perhaps by being depicted as a drug dealer — he was of course a cocaine user — or as an idiot detective like Inspector Clouseau of the Pink Panther movies), and that someone who read the story might be deterred from reading Doyle’s Sherlock Holmes stories because he would realize that he couldn’t read them without puzzling confusedly over the “true” character of Sherlock Holmes. The analogy would be to trademark dilution, see, e.g., Hyatt Corp. v. Hyatt Legal Services, 736 F.2d 1153, 1157-59 (7th Cir. 1984), as if a hot-dog stand advertised itself as “The Rolls-Royce Hot-Dog Stand.” No one would be confused as to origin — Rolls-Royce obviously would not be the owner. Its concern would be that its brand would be diminished by being linked in people’s involuntary imagination to a hot-dog stand; when they thought “Rolls-Royce,” they would see the car and the hot-dog stand — an anomalous juxtaposition of high and low. There is no comparable doctrine of copyright law; parodies or burlesques of copyrighted works may or may not be deemed infringing, depending on circumstances, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580-81 and n. 14, 588, 591, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), but there is no copyright infringement of a story or character that is not under copyright. Anyway it appears that the Doyle estate is concerned not with specific alterations in the depiction of Holmes or Watson in Holmes-Watson stories written by authors other than Arthur Conan Doyle, but with any such story that is published without payment to the estate of a licensing fee.

[Klinger v. Estate of Conan Doyle, 755 F. 3d 496, 503 (7th Cir. 2014) (emphasis added)]

Of course, the Klinger court may overstate the notion to say that copyright has nothing akin to dilution. I say that because the very concept of fair use seems imbued with the notion that allowing too much of a work to be copied or requiring too little transformation in a derivative work simply dilutes and diminishes a creator’s right too much to be considered fair. Dividing lines between protected parody and prohibited pastiche take up a fair amount of space on court dockets, and even in previous ILN posts here and there (and there and here).

This issue of character control found in our three cases are not issues of concern only under US copyright law, but actually ones with which many jurisdictions have contended. For example, in Japan, questions of the copyright protection of characters been debated since at least the 1970s, when a Japanese court decided Hasegawa v. Tachikawa Bus K.K., I Chosakuken Hanreishu 721 (Tokyo District Court, May 26, 1976). In that case, a comic strip creator sued a bus company that placed character images on its buses that were no exact copies of any comic strip depiction or scene. The court found for the artists nonetheless because “if a person were to look at the defendant’s buses and in his/her mind immediately connect those figures on the bus with the plaintiff’s copyrighted figures, that would sufficiently establish a copyright infringement,” as one commentator summarized the test the Japanese court developed. Likewise, there has been some debate over such questions in the UK, and interestingly (and not unexpectedly), the example of Sherlock Holmes is at the center of claims in that country as well. As one commentator has noted, “the traditional view” is “that English law does not recognize character copyright,” or more accurately:

Thus, it appears that a literary character cannot stand-alone and if it is to be afforded co-protection, I will only be “on the back of the ‘substantial copying’ requirement.” Martino opines that a literary character may be indirectly protected by copyright, provided that it is distinctive and forms an important part of the work in question. The assessment is qualitative in nature and even though the copies component in which the characterization features may be comparatively small, it may represent the essence of the work. Thus, if the character embodies the heart and soul of the story, it may be regarded as a substantial part. However, it is not the literary character itself that is protected but rather the entire work in which it appears.

[Wood, CA (2014), The Idea/Expression Dichotomy In Copyright Law As Related To Fictional Characters, MA Commercial Law [Unpublished], University of Johannesburg, at 28, at https://ujcontent.uj.ac.za/vital/access/services/Download/uj:13741/CONTENT1]

Though not entirely clear, it appears, according to Wood, that South African courts would follow the English, rather than American or Japanese, approach. In fact, in the leading South African case of Paid Phase Entertainment CC v. SABC, 597 JOC (W), the so-called Madam & Eve case, the court refused to enjoin character cooptation not very different from that the Japanese court precluded in Hasegawa. Id. at 40-50. Finally, as one considers Corbello and what Tommy DeVito’s unpublished autobiography really was, I am struck by something our Greek ILN colleagues just noted—under Greek law “mere facts and information…fall outside the scope of protection if they … contain no element of personal contribution (eg, evaluation, criticism or interpretation).” Given the very nature of a memoir as an archetype where “the author has more flexibility here because she is telling a story as she remembers it, not as others can prove or disprove it,” Greek “personal contribution standard” might support arguments that DeVito’s embellishments or counterfactual additions are protectable elements of personal contribution. As the DeVito character in the musical muses, “You ask four guys HOW it happened, you get four different versions.” Sounds pretty personal to me, even if DeVito filled in some gaps with what he wished he had said, or with a better way of saying what he did.

Particularly with regard to fictional characters, “’[f]illing in the gaps . . . is the favorite task of many who pen pastiches.’” Professor Lantagne noted in Sherlock Holmes And The Case Of The Lucrative Fandom: Recognizing The Economic Power Of Fanworks And Reimagining Fair Use In Copyright. Our trio of cases illustrated that. (Such gap filling also has antecedents in antiquity. As one commentator has noted, “the official gospels leave many gaps to be filled in by the imagination,” and second and later century authors filled gaps that could answer questions (as the Infancy Gospel of Thomas did) like “What sort of child was Jesus?” and “other scholars have “treated Gospel of Peter as a pastiche based on the canonical gospels”). These cases also set up an interesting analytical construct by comparing the Abdin, Klinger and the Axanar case about which I have written earlier. As one commentator has noted, “[e]very artist builds on the creativity of the past, reshaping what already exists in the world. The mind cannot feed on itself, but must use what has been supplied to it from outside,” and we have seen how this concept has been challenged in copyright law, especially in music cases. Simply stated, the Star Trek Abdin case essentially supports the notion that one may build beyond a flat or general character like a tardigrade without running afoul of infringement or fair use issues, but filling in gaps or telling backstory as to a rounded or developed character such Garth of Izar is likely to create issues. One can see that in the Star Trek Axanar case, as previously described. It is also seen in Klinger to the extent that one considers character traits first appearing in “[t]he final 10 stories” Arthur Conan Doyle “published between 1923 and 1927” using the Holmes and Watson characters that where created and developed over 46 earlier stories and four novels whose copyright has expired.

Klinger, somewhat unique among our triad for its clarity, illustrates that expired copyrights leave characters usable by others, even though the original copyright holders may have continued to use them in works still protected. One commentator saw this as a positive, noting:

Fictional characters, like real people, are part of the world in which we live. Characters such as Sherlock Holmes, Bart Simpson, Superman, Tarzan, James Bond, and Mickey Mouse may be better known and more valuable than any particular work in which they appear…. Fictional characters help form the modern myths out of which we operate and are an important part of the cultural heritage on which an author can draw to create something new. They can encapsulate an idea, evoke an emotion, or conjure up an image[,]

[Leslie A. Kurtz, The Methuselah Factor: When Characters Outlive Their Copyrights, 11 U. Miami Ent. & Sports L. Rev. 437 (1994), at 440—441, available at: http://repository.law.miami.edu/umeslr/vol11/iss2/8]

Based on those concepts, that author conclude that “[w]hen a fictional character has entered the public domain, there are strong policy reasons for keeping it there, thus allowing others to make use of it.” Id.

But, if such a character “encapsulate[s] an idea, evoke[s] an emotion, or conjure[s] up an image,” it is because the character’s creator has memorialized a uniquely memorable expression of the idea, not the idea itself—James Bond is not cool or suave itself, but a memorable expression of it. Creators and creator’s legal successors can enjoy the economic fruits of the continued popularity of embodying beyond any patent or other term the real thing when it is in an aluminum can of Coke. That could mean that there should be arguments for those same sort of folks to continue to benefit exclusively from marketing the original consulting detective even 135 or more years later, as Klinger references (Coca-Cola was first sold in May 1886, approximately eighteen months before Sherlock Holmes first appeared in print). But “[i]f that is what you think, you’re not from Jersey“ because here we know what the [copyright] law is. (As noted above, trademark and right of publicity may be another matter).

Jersey Boys (the movie at least) ends with them singing Oh What A Night, which includes the lyrics “What a lady, what a night/Oh, I, I got a funny feelin’ when she walked in the room/Oh my, as I recall it ended much too soon.” I mention because this article may be ending much too soon in talking only about those three concluded cases—as I mentioned early on, there is a new lawsuit and she (that is Enola Holmes, Sherlock Holmes’ sister) is just now figuratively walking in the [court]room in New Mexico, and creating that funny feeling. In this new Sherlock Holmes copyright suit just started this summer, the Conan Doyle estate challenges a television series focused on Holmes’ sister Enola. The estate makes copyright and trademark claims and alleges infringement of Holmes’ and Watson’s significant new character traits as emerging only in last ten stories published between 1923 and 1927, which are still under copyright.

So I close (and I don’t need lessons or a contest to say these lines) as Tommy DeVito opened the musical: “I’m getting ahead of myself. You wanna begin at the beginning…I’m the guy you wanna talk to.” As for a case like Conan Doyle Estate Ltd. v. Nancy Springer et al., case number 1:20-cv-00610, District of New Mexico, the cases that we just reviewed suggest, “it could happen. It did happen…And this is where all of ‘em start”—the law, seeing what is left of the copyright term, understanding fair use, separating fact from fiction for you, figuring out what creative trademark or other claims may be out there as a character defense, and then getting the right judge or jury to listen. And we’ll keep watching as it evolves; with any luck, we’ll get another article out of it. As Tom DeVito said (at least in movie version of The Jersey Boys), “You gotta have skills, talent and vision. And luck!.”

Just sayin’.

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