Article by Nicola Solomon published in the New Law Journal , 25th march 1994 and in abriged form in The Author of Spring 1994. Leading literary lawyer Nicola Solomon, a Deputy District Judge and Partner of Finers Stephens Innocent (179 Great Portland Street, London W1W 5LS, tel. 020-7344-7652) has kindly given AKME permission to reproduce this article. She can be e-mailed at nsolomon@fsilaw.co.uk.
"Daphne du Maurier would approve," states the cover to Susan Hill's Mrs de Winter, the sequel to Rebecca. Maybe she would and her estate certainly did but, now that publishers have caught on to what film moguls have known for a long time - that sequels are good business - how can a solicitor advise an author who wants to stop an unwanted sequel or an author who wants to write a sequel without legal action?
Copyright
One might assume that it would be an infringement of copyright to use characters and style developed by another person. Not so; copyright protects the words and form in which ideas are expressed, not the ideas or characters themselves. The type of copying envisaged by the law, taking large chunks of original text, is unlikely in the case of sequels which aim to develop an original story, not replicate it. Even if some words and phrases are used from the original, the court may refuse protection on the grounds that the main purpose of copyright is to allow inventors of commercial works to exploit them without unfair competition. Since a sequel is arguably more likely to enhance than inhibit sales of the original, a court might hold that trying to use copyright law to protect the original work is a form of oppression. In one case (Chappell & Co Ltd v DC Thompson & Co Ltd [1928/1935] MCC 467) the first four lines of a popular song "Her Name is Mary" were used as the opening paragraphs of a serial story. The court held that as the defendants were using the words for a totally different purpose which had no adverse effect on the plaintiff's sales, there was no infringement of copyright.
Another tack might be to claim that taking the tone, style and characters together, perhaps, with the presentation of the original work, amounts to stealing the original skill and labour and is therefore an infringement of copyright. Sir Stephen Spender recently (October 28, 1993) managed to block publication of a novel by David Leavitt, While England Sleeps, which he claimed drew its plot from his autobiography World Within World. (The case later settled but on the basis that there was infringement of copyright in the actual words, not only the plot.) However, the courts are extremely wary of developing copyright law in this way, as was shown in the case of Hughie Green (Green v Broadcasting Corporation of New Zealand (1989) The Times, July 24), who failed to prevent New Zealand television using the title "Opportunity Knocks" for their programme in which they also used the phrase 'For X ... opportunity knocks", the clapometer and other features of the programme's format. The court decided that such features were too nebulous to be described as a dramatic work and too imprecise to be protected by literary copyright.
Writers of sequels to classic novels may have even less fear of being sued for infringement of copyright because copyright only exists for 50 years after the death of the author (soon to be 70 years, to harmonise with the European position). Emma Tennant, who has just written a sequel to Pride and Prejudice, therefore need not fear, since Jane Austen has been dead for too long to complain. However, if you are asked to advise about a sequel to an illustrated book, do check that both author and illustrator are out of copyright. In the case of The Willows in Winter by William Horwood (published end of 1993), a sequel to Kenneth Grahame's Wind in the Willows, Grahame died in 1932 and has therefore been out of copyright since 1983. EH Shephard died only in 1976 (at the grand old age of 97) and his estate could therefore sue if the illustrations are copies of his originals. William Horwood, however, is struggling with a different copyright problem. Dixon Scott, who wrote an earlier sequel called A Fresh Wind in the Willows (1983), is claiming that Horwood's sequel is a copy of his own; a reminder that a sequel will itself be protected by copyright law, even if it draws heavily on the original, as long as some skill and labour has been expended on it
Passing off
If the original author cannot show that the sequel infringes copyright, you might next consider the law of passing off, which is intended to stop a person profiting from use of another's goodwill and good name. Although this is obviously the intention when writing a sequel, there are several major hurdles in establishing that a sequel amounts to passing off. First, the original author would have to prove that there was a misrepresentation suggesting to the public that the work was written or endorsed by the original author. Almost all sequels have the name of the new author prominently on them so the public are unlikely to think the book was written by the original author, although an original author might be able to claim that confusion was likely because the public would not remember their name but the name of their work. This may have been the case for some of the early cases of sequels. The sequel to Heidi, Heidi Grows Up (1880), was not written by Heidi's author, Johanna Spyri, but by her translator Charles Tritten, a fact which came as a great surprise to all the Heidi lovers I know. It is presumably for this reason that most recent sequels have both the names of the author of the sequel and of the original author on the cover so it is quite clear to the public that the authors are different. This means that the original author is unlikely to be able to prove that the public was actually confused or was likely to be confused. The courts are fairly robust and define the public as sensible, ordinary people looking at the book. When the Morning Star sued the publishers intending to bring out the Daily Star newspaper on the basis that people might be confused, the courts dismissed the case stating that "only a moron in a hurry" would be likely to confuse the two newspapers (Morning Star Co-op Society Ltd v Express Newspapers Ltd (1979) FSR 113). Judges consider themselves reasonable people and although plaintiffs are increasingly turning to surveys to prove there is actual confusion in the market place, judges may well pour cold water on the findings of these extremely expensive enterprises (United Biscuits [UK] Ltd v Burtons Biscuits Ltd FSR [1992] 14).
Even if an original author is able to show confusion, you may find that there is little actual damage. Although it might be extremely easy to prove that the author of the sequel has gained by the use of your client's reputation in the original work (and indeed this is presumably why the sequel was written or at least published), it is not the sequel author's gain but the original author's loss which is relevant. Obviously the original author's sales may be enhanced by sales of the sequel rather than otherwise (as in the case of Stringfellows v McCain Food (GB) Ltd (1984) RPC 501 where McCains put out some thin oven chips called "Stringfellows" and showed them disco dancing. Stringfellows Discotheque complained but the court stated that while McCains may have had their sales increased by such a ploy it is extremely unlikely that Stringfellows itself would have lost any sales and they therefore did not win their case).
The damage need not only be in lost sales; it could be for any other reason, including if the original author could show that she had intended to write a sequel herself and is now unable to do so (which may be why most of the sequels seem to be written after the original author is dead) or that she or her estate could have endorsed another sequel, either by receiving money for the rights or positively recommending it. This is by no means a remote possibility. Alexandra Ripley was chosen by the Margaret Mitchell Estate to write the sequel to Gone With The Wind and the estate presumably obtained some financial advantage from this. The words I quoted at the beginning - "Daphne du Maurier would have approved" - together with the titling of that book as "the sequel" to Rebecca rather than "a sequel" as in the Wind in the Willows book, might well be enough to suggest an endorsement by the original author, which would allow the estate to claim damages had they not approved the work. Not only the wording but the book's style or "get up" may represent a connection or endorsement and might well allow the publisher to sue if for example the book was published in the same format or with a similar cover illustration to the original. An author of a sequel would therefore be well advised either to seek endorsement from the original writer's representatives (which may be gladly given) or to make it absolutely clear that the book was not endorsed in any way by the original author so as to avoid a claim of passing off.
The damage in passing off could also be damage to character or loss of reputation of the original author. In the case of IPC Magazines Limited v Black and White Music Corporation and another (February 1983) the plaintiff published a weekly science fiction magazine featuring the character Judge Dredd, a futuristic police officer. The defendants put out a single record containing a song about Judge Dredd and the plaintiff sought an injunction claiming that Judge Dredd's character would suffer because of the nature and poor quality of the song. The courts refused to grant an injunction stopping the defendants from selling the record because they felt that even though it was clear that the defendants had sought to exploit the character's reputation and goodwill, and confusion was likely in that a substantial number of people would assume that the plaintiff had endorsed the record, the plaintiff was unlikely to suffer damage because the words of the song were not likely to impugn the character of Judge Dredd.
The difficulty with a claim in passing off is that there is nothing wrong with entering a creator's market or creating work in the same style (Gordon Fraser Gallery Limited v Tatt (1966) RPC 505); the original author actually has to prove that there will be confusion in the sense that the public will assume there is a connection with the author such as licensing or endorsement, or even authorisation, in order to be able to sue.
Defamation and moral rights
You could advise the original author to make a claim in libel if the work is defamatory but, again, this would involve proving that the original author had been lowered in the estimation of right thinking people generally, which is unlikely if the new author had not claimed or suggested endorsement of the work by the original author. You could also suggest that the new author may be in breach of the original author's moral right not to have work subjected to derogatory treatment (s 80 of the Patents Copyright and Design Act 1988). Sir Stephen Spender made this claim against David Leavitt in the litigation over the book While England Sleeps. However, Viking claims that settlement was purely on the basis of the alleged copyright infringement and they do not accept that there was derogatory treatment. This seems correct in view of the fact that, in order to succeed in proving derogatory treatment, the original author would have to prove that the sequel was an addition, deletion or adaptation of the original rather than a whole new work in its own right. While these words are not defined in the Act, a court may feel that it is going too far to suggest that a sequel is a treatment when a translation is not. The original author would also have to prove that the treatment amounted to distortion or mutilation of the original and was prejudicial to the honour or reputation of the author, and it is hard to imagine a sequel that would lead to this finding since, as in passing off, the original author may have difficulty in showing that the public would assume a connection between them and the sequel.
Breach of contract
The original author might have a claim in breach of contract if their own publisher had commissioned another person to write the sequel, since many contracts contain option clauses regarding revisions or further works. Even if the contract was not specific on this point, it may well be felt that there is a confidential relationship preventing the original publisher from commissioning a sequel from anyone other than the original author or their estate.
In the case of Schering Chemicals Ltd v Falkman Ltd [1981] 2 All ER 321, David Elsten was hired by Schering to teach executives how to cope with media interviews on the subject of the drug Primados which, it was claimed, caused some problems in pregnancy. In this way he got the idea of making a TV programme about the drug. Although the programme did not use any confidential information or information that was not in the public domain, the Court of Appeal granted an injunction because they said he had entered into a personal confidential obligation to Schering which he betrayed by making the programme and he had unfairly exploited the confidential relationship with Schering by accepting further payment to make the programme. The court was saying that he was, in effect, treacherous by helping Schering's image and then being critical of it.
However, if he had passed the idea on to another person, giving them the information for free, they would have been able to use it. To attract confidentiality the concept must be identifiable and have some significant elements of originality not already in the realm of public knowledge. It must have been developed to the stage at which it has commercial potential and it must have been given in circumstances which create a moral obligation not to make further use of it without consent or communication (Fraser v Thames Television [1983] 2 All ER 101 the Rock Follies case where half a million pounds in damages were given to the original writers of the Rock Follies idea.)
Misrepresentation
An original author who is able to show a false suggestion that the sequel was authorised by her would be able to make a claim in misrepresentation. It is established law that an author of a biography may not falsely represent that a book written by him had been approved of or authorised by its subject or family (Lord Brabourne v Hough [1981] Fleet Street Reports 79 - an interim injunction was refused). However, to obtain any money damages you would still need to show actual loss.
Writing a sequel to an already popular work allows an author access to established public interest and it is not surprising that this practice is gaining in popularity with publishers who do not want the risk of having to make a market for new fiction. It seems that an author who wishes to write a sequel to another's work may well have very few legal pitfalls so long as the author and publisher ensure that no suggestion is given that the work is that of the original author or is endorsed or approved by her, since that might well lay both new author and publisher open to a claim for an injunction or a substantial share of any profits that the book makes.
The law stated in this article relates only to the UK. In the US, copyright in characters is far more established and the rules preventing unauthorised use may be more restrictive, so when advising clients you should ask where the book is likely to be published or distributed, and advise that they take separate advice on the legal position there.
As for advising the author who does not want someone else to write a sequel to their work: suggest they either write or authorise their own sequel or follow Shakespeare's example and kill off all their characters at the end of the work. Of course that wouldn't prevent a "prequel" - Childhood in Elsinore, perhaps...
Click to return to the top of this file. Return to AKME's Law Library index. Return to The Remedy + options. Return to The History of AKME.
e-mail: akme@btinternet.com