Article by Nicola Solomon published in The Author of Winter 2003/4 Vol. CXIV No.4. Leading literary lawyer Nicola Solomon is Head of Publishing with solicitors Finers Stephens Innocent (179 Great Portland Street, London W1W 5LS, tel. 020-7344-7652). She has kindly given AKME permission to reproduce this article, and can be e-mailed at nsolomon@fsilaw.co.uk.
The article is reproduced without any comment or editing by AKME.
Sequels and spin-offs are back in the news. The Evelyn Waugh estate was furious when Michael Johnston published Brideshead Regained, an unauthorised sequel to Brideshead Revisited; Barbara Taylor Bradford recently failed to prevent the screening of an Indian television series Karishma which she claimed was based on her bestselling novel, A Woman of Substance; Alice Randall has been allowed by Margaret Mitchell's estate to continue publication of The Wind Done Gone, her sequel to Gone with the Wind, on payment of a large sum to Morehouse College, a historically black school in Atlanta; Karen Wallace's recently-published Wendy, a prequel to Peter Pan, has had enthusiastic reviews; and fanfic - writing new stories for famous fictional characters - is a new craze on the internet.
Imitation is the sincerest form of flattery, but how can you prevent others from capitalising on your best ideas and ensure that the reputation of your own work is not damaged by poor imitations? Consider the following scenarios - all based on real cases.
I told the publisher about my idea for a history of trout. He rejected it but now I notice that the same publisher is publishing 'The story of trout' by another author.
There is no copyright in an idea. However ideas can be protected by the law of confidentiality. If you show a concept to a publisher, whether commissioned or not, state (preferably in writing) that the idea is valuable and given in confidence. A valuable idea communicated in a situation of confidence cannot be used by the recipient without your consent. The idea must be sufficiently well developed for you to be able to prove that it was a valuable concept. You should also make a dated copy of exactly what you told the publisher so that you can later prove that it is your concept that is now that publisher's bestseller.
I wrote an academic biography of Cromwell's younger sister after years of original historical research. Now a popular author has taken my facts and research to write a historical novel about her.
This may amount to an infringement of copyright, depending on the amount of your work taken. In order to infringe copyright, the author must have copied a substantial part of your work. What is substantial is a question of quality rather than quantity but the court will start from the viewpoint that what is worth copying is worth protecting. You are more likely to be successful if your words have been copied. Courts generally take the view that academic works are written to add to the sum of human knowledge and will not consider it illegitimate for those facts to be used in a work of fiction, unless the whole structure has been taken. The court will consider whether the author has used your original work and labour in order to avoid her own expenditure of effort.
I wrote a very successful novel and the same plot elements have been used in a TV series.
This happened to Barbara Taylor Bradford who obtained an injunction in the Calcutta high court in May against the transmission of the 262-episode blockbuster series Karishma - A Miracle of Destiny, claiming that it was a copy of her novel, A Woman of Substance. Indeed, the makers had actually told a magazine that their series was based on her book and she only learned of the series when an Indian fan e-malled her ecstatic congratulations. However, ultimately the courts ruled that she had failed to establish conclusively that Sahara had copied a substantial part of her novel, and said the programme could go on air. Ms Taylor Bradford also has to pay the costs of the action although an earlier order that she must pay Sahara damages of 150,000 rupees (just over £2,000) for each week of delay in airing the series was overruled. Extraordinarily, Sahara has now filed a criminal case against Ms Taylor Bradford claiming extortion.
I wrote a successful novel and now someone has written an unauthorised sequel.
A similar battle was fought over Lo's Diary, a novel retelling the late Vladimir Nabokov's Lolita from the young girl's point of view. That dispute ended with an agreement to share royalties. If your original words or settings, plot-lines and character development have been used, then you may be able to claim copyright infringement. However most sequels and fanfics only take your original characters and create new situations for them. When Michael Johnston published Bridesbead Regained, James Gill, who represents the Evelyn Waugh estate, said 'You cannot just wander into someone else's property and take their characters.' Surprisingly, however, you often can. Characters are not protected under English law; copyright protects the words and form in which ideas are expressed, not the ideas or characters themselves. Characters' names are too short to qualify for copyright protection. The situation is different in the United States (for example in relation to The Wind Done Gone which tells the story from a slave's point of view) since United States copyright law contains specific reference to the author controlling sequel rights.
If the sequel is not an infringement of copyright, you may still be able to use the law of passing off, which is intended to stop someone trading on another's reputation. Passing off applies if the public is confused into thinking that the sequel was written or licensed by you. While the sequel usually has the new author's name prominently on it, you can still claim that confusion was likely because the public often does not remember the author's name but only the title of the novel and the names of the characters. For this reason some sequels now bear both the names of the new author and the original author.
You could also claim passing off if the public might think you had licensed the sequel. This was one of the claims made against Michael Johnston and, fearing legal action, he backed down. He has now agreed to sell his book only on the internet and then only until the first print-run has gone. All copies must carry a sticker indicating it is not an authorised sequel and further publication is forbidden.
If the sequel is titled 'unofficial' you cannot claim passing off because there is no suggestion of endorsement. To succeed in a passing off action you also have to show that you have suffered actual financial loss, not that the sequel author has unfairly gained. This is difficult as the likely effect of most sequels is to enhance rather than diminish sales of the original. One way to try to prevent unauthorised sequels is to write or endorse another author to write your own sequel. The Du Maurier estate asked Sally Beauman to write Rebecca's Tale after she wrote a 1993 New Yorker article blasting the quality of a previous, unauthorised sequel.
I wrote a best-selling novel and dolls are now being marketed which look exactly like my character Lucy Ladybird.
If your character is illustrated then it may be a little easier to protect; English law recognises the principle that a picture is worth a thousand words. Your original drawings will have copyright and any new works which use a substantial part of any of those drawings will be an infringement. So pictures or three-dimensional objects which bear a suspicious resemblance to your character, even if they don't bear its name, will be infringements. Rather than being defensive it is good to get in first and ensure that all your marketing possibilities are exploited. Consider this when you sign your contract; if you do not think that your publisher can properly exploit all the character rights (character merchandising is a very specialist field) then try to retain merchandising rights and the rights to spin-off books such as colouring and pop-up books. Be careful if the publisher is going to help you develop the character. There is a risk that they could claim rights in the developed images, for example if the idea is animated by computer. Make sure that you own not only the original rights but also any material which is created from your original design. Ensure that any merchandising licences have proper quality control provisions - it is most irritating if Lucy comes out looking like a spider with measles.
I called my book Jiggery Pokery Pockety Pie - now I see there is another book out with the same title.
Titles are usually too short to qualify for copyright protection, and there is little you can do if someone else lifts your title unless they are trying to suggest a connection with you - see the advice for sequels above. If your title is distinctive and you are using it for marketing you might be able to register it as a trademark; for example Peter Rabbit is registered as a trademark which would be infringed if you published a Peter Rabbit book. There are limits on what you can register as a trademark, notably descriptive names. Although the registration process is expensive it has the great advantage that trademarks can be re-registered every ten years, so protection can be perpetual.
I am an author called John Blakeson known for my science fiction. Now an author called Karen Blakeney - and I happen to know that is not her real name - has brought out a science fiction series which, although packaged differently, is obviously placed next to mine on the bookshelf and affects my sales.
If there is no likelihood that the public will be confused into thinking the books are by you, there is nothing you can do to prevent this irritating kind of product placement which publishers do sometimes use in order to try to get new books noticed.
I illustrated a cute skunk for use on greetings cards. Now the character appears in an avant garde multi-media performance carrying out unspeakable acts.
Not as uncommon as you may think - consider this ad: ' ... the coming of age of Heidi in a video installation. No confusion - this is not a spoof, parody or homage: this is a sequel. And like all truly inspired sequels Heidi 2 is more shocking, more glamorous and bloodier than the original! ... Heidi 2 is a macabre comedy in which birth, family, sex and gender roles are deformed and filtered through popular culture and narrative tropes...' Even if there is no actual copyright infringement or passing off then it is possible, though unlikely, that you could claim for infringement of your moral right not to have work subjected to derogatory treatment if the installation damages the integrity of your original work or your reputation.
My answers set out the current English law. However publishing is becoming far more international and many countries, such as the United States and most of continental Europe, have laws against unfair competition which may provide protection for characters and sequels. Also, this is a developing area as 'brand owners' try new ways to protect income sources, and the courts struggle with the conflicting rights of the original author or his or her estate to benefit from his property and the rights of an author to freedom of artistic expression and development. The court may be sympathetic to the sequel author, feeling that an estate should not cast a hand over what is written later, as happened when a French court rejected a claim by descendants of Victor Hugo to stop a newly published sequel to Les Miserables. The author's descendants argued the new book, Francois Ceresa's Cosette ou le temps des illusions, infringed Hugo's intellectual property rights. The court noted that Hugo, in his lifetime, had said he had not wanted his descendants to have any control over his literary legacy. Equally the courts may be sympathetic to the rights of the original author, feeling that the property created by his/her genius and hard work should not be exploited by the sequel author who should have created an original work from scratch instead.
Be comforted by the thought that few sequels or spin-offs cash in on the original author's reputation as hoped and they often quickly disappear. There is no real evidence that they damage sales of the original although publication can be very irritating. As the law is uncertain you should always speak to a specialist solicitor or the Society [of Authors] before commencing action to protect your rights and reputation.
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