Advertising Law Blog

A July 2009 copyright decision in New York confirmed a trend towards strengthening copyright protection for fictional characters by limiting the ability of others to make commercial use of the fictional characters in outside works of literature. Last September, publication of a Harry Potter encyclopedia, authored by a fan, was enjoined in United States District Court for the Southern District of New York. Then famed author J.D. Salinger sued, also in New York's Southern District, to stop the publication and sale of "60 Years Later: Coming Through the Rye," a novel based on the Holden Caulfield that Salinger created in "Catcher In The Rye". Just last week, Judge Deborah Batts found a substantial similarity between Catcher In The Rye and 60 Years, as well as between the Holden Caulfield and "Mr. C" characters in 60 Years, such that 60 Years was an infringement of Salinger's copyright. The author of 60 Years, Frederik Colting (writing under the nom de plume J.D. California), claimed that his references to Salinger's copyrights were fair uses, and therefore his book was not actionable. Colting argued his book commented on and criticized Catcher In The Rye and therefore was an example of fair use or parody. Judge Batts did not agree: "60 Years' plain purpose is not to expose Holden Caulfield's disconnectedness, absurdity, and ridiculousness, but rather to satisfy Holden's fans' passion for Holden Caulfield's disconnectedness, absurdity, and ridiculousness, which Catcher has elevated into the realm of protectable creative expression." Judge Batts preliminarily enjoined the publishing, distribution and sale of 60 Years in the United States.

The effect of the two rulings should cause authors and publishers to think twice before featuring a famous character of someone else's creation in their own works. "Copyright law must address the inevitable tension between the property rights it establishes in creative works, which must be protected up to a point, and the ability of authors, artists, and the rest of us to express them- or ourselves by reference to the works of others, which [also] must be protected up to a point," wrote Judge Batts.

The fair-use doctrine mediates between the two competing interests, and there is a test to decide whether the use of someone else's copyright is permissible or not. The doctrine of fair use has a four-factor test: (1) what is the nature, purpose and character of the use of the copyright (is the second person's use commercial in nature or for nonprofit, educational purposes); (2) what is the nature of the copyrighted work (very simply, Catcher In The Rye is a book, which by nature is meant to be protected by the copyright laws); (3) what is the amount and substantiality of the portion used in the second work in relation to the copyrighted work as a whole (how much of the copyrighted material is being used by the second person); and (4) what is the effect of the new use on the potential market for or value of the copyrighted work? How each factor is to be weighed is up to the individual judge.

If it is unclear whether a proposed use of copyrighted material in a new work can pass this four-part test, a finding of copyright infringement should be considered before publication.