Monday, January 13, 2014

Three points to help you avoid infringing when using popular source material

Every year, new versions of classic tales reappear in popular culture. Sherlock Holmes showed up in both movies and television. 2013's breakout surprise hit TV show was based on Washington Irving's "The Legend of Sleepy Hollow". And since the stories and characters upon which these hits are based are often themselves in the public domain, you might be tempted to create your own retellings of these tales too.

You can, but you need to be careful.

In a prior post on the character of Sherlock Holmes I made two important points about using pre-existing characters:
  1. Where there are portions of a character in the public domain and portions that aren't, it's permitted to fork the characters to use only the public domain elements.
  2. Forking characters in this way doesn't infringe on the rights of a copyright holder who might own non-public-domain elements to those characters.
But what may not be clear is how you can take a public-domain character and make them your own creation such that no one else can use your version of them, and in contrast when you're making too close use of someone else's version of the characters. A recent judgment from Canada gives us 3 good rules to help you make that decision.

[A quick word on Canada. It's cold. Okay that's two words. Also, since it's a different country from the USA, this might lead some people to think its judgments are of no use here. Not true. Although American lawyers would be ill-advised to cite a Canadian judgment in court, the fundamental principles of copyright law are remarkably similar in all common-law jurisdictions. In particular Canadian law tracks very closely to that of the UK. And so although the terminology might be a bit unusual if you read the judgment, the rules it enumerates are helpful everywhere.]

As the judgment says, Claude Robinson was a dreamer who created an educational TV program idea based on Robinson Crusoe, "The Adventures of Robinson Curiosity". He shopped it to various companies including Cinar Corporation. Cinar was a well-known creator of children's television shows, benefiting from Quebec's pioneering tax credit system, and since tax credits were easier to obtain for shows created at home finding a Quebec-created show would be a great head start. But they were never able to find funding for the project and so Robinson Curiosity never got out of the water.

Or so Robinson had thought.

But then one day he saw the pilot episode of a show called "Robinson Sucroë" with a character based on Robinson Crusoe wearing glasses and a straw hat, living on an island, and interacting with a group of sidekicks. Just like his character. And even though there were differences between the two shows ("Curiosity" had a group of animals as sidekicks while "Sucroë" had people, and "Sucroë" had a band of pirates as villains which doesn't exist in "Curiosity), when Robinson looked into the people behind "Sucroë" he found it was Cinar.

Concluding that Cinar had infringed his idea, Robinson sued. Almost 20 years later the Supreme Court of Canada rendered its judgment ultimately upholding that Robinson was right and that he was entitled to damages as a result. And in the process, the Court gave 3 principles that we can use to help us create characters that we can call and protect as our own.

First: Consider the work as a whole, not just a list of its elements. A copyright owner has the exclusive right to reproduce all or substantially all of their work. For a straight copy it's easy to know when unlawful copying has occurred, but not so much for reuse and repurposing. Copyright law doesn't protect ideas, just their expression, so it's always an open question whether copying has occurred when the copier reimagines the original work rather than quoting it directly.

The answer to this is always a judgment call but this case makes the point in pretty easily-understood terms: look for the thing that constitutes the creative effort made by the author and protect that, not just a laundry list of characteristics. And so if you want to use a character similar to one in someone else's work you have to look at the entirety of the other character and consider whether, by using a character with some similarities, you've taken the essence of that character and copied them. This is directly contrary to the test used to determine copyright infringement in computer software, called abstraction-filtration-comparison. Under that test you would look at the list of features of the program that's accused of being a copy, compare it to the features in the other program, and determine whether so many significant features were copied that the one is a copy of the other. Under the test from the Cinar judgment, that wouldn't work.

That makes sense. It doesn't matter that Hamlet is Danish. It doesn't even really matter that he was a prince. It matters a lot that his uncle married his mother after killing his father and he's paralyzed by inability to act. If you want to retell the story of Hamlet, you can move the story from Denmark without much trouble. Take away his uncle and there's not much Hamlet left.

But if you've read my recent post on Sherlock Holmes (and if you haven't, there's a handy link below) you'll know that making a list of characteristics is exactly what that court does and what's necessary to know whether a version of Sherlock or any other public domain character infringes the copyrighted portions of the character or draws only on those elements in the public domain. And Robinson Crusoe is also in the public domain. So that leads to the next point.

Second: Consider what is really the protected work against which yours is compared. In the Cinar case, the judge held that although the idea of a person stuck on an island interacting with the environment is nothing new, and that the particular story of Robinson Crusoe was in the public domain, "Sucroë" still infringed upon "Curiosity" because of the specific similarities between the way the stories were told in each. Cinar could have avoided infringement by returning to the original Robinson Crusoe story and retelling it in a new way with new characters having new personalities.

At first glance this may look like it turns my first rule on its head. "Curiosity" was found to be infringing because its cast of characters had the same personality traits as those in "Sucroë". But those personality traits were Robinson's glosses on the original story of Robinson Crusoe, and in the context of retelling a public domain story that's the protected element.

Again the court was able to find infringement and was right to do so, and this gives some visibility into a way to know when your iteration of a public domain character is different from someone else's. When you adapt a public domain work, by definition the essence of the original creation is someone else's. So the only way to determine whether infringement has occurred is to remove that original creation. This results in something I often refer to as a "doughnut analysis" (if you're feeling healthy or are from New York feel free to substitute a bagel), where you have to cut a hole in the center of what you're looking at and consider only the ring around the edge. In this case Robinson Crusoe was the hole, and the particular characters and elements used to tell that story in "Curiosity" is the doughnut. And when compared to "Curiosity", the "Sucroë" doughnut left an empty taste in the court's mouth.

Okay, that was a horrible pun. But it contains a morsel of truth: a doughnut analysis is more likely to lead to a finding of infringement than comparing two creative works on their merits. Because the underlying subject material always has to be excised from the analysis a doughnut analysis just leaves less to compare, and so if the two retellings of the same subject seem too similar to each other (as opposed to both being compared to the original) it almost has to be because of the new elements.

Third: Consider staying closer to the original source. The test for infringement is whether a reasonable person would think the two works are similar. So ask yourself: would an outside observer think that both you and the other creator are both using the same source material, or would they think that you're telling the same story? If the latter, think about changes.

Two people using the same source material aren't automatically infringing each other. In Hollywood different movies often rework the same source material, sometimes even being released in the same year (e.g. "Dangerous Liaisons" vs. "Valmont"). But when each retelling of the source stays close to the original, it's more likely they will be found to have inspired themselves from the original and not from each other.

How can you put this into practice? One way is to ask the old writer's question "what happened next?" For example, when Sherlock Holmes woke up this morning, what happened next? If your answer to that sounds like Robert Downey Jr. telling wisecracks, or has him in the modern era updating his blog like Benedict Cumberbatch, you might like to go back to Sir Arthur Conan Doyle's stories (the public domain ones, naturally) and start again.

[Note: this is perhaps uninteresting to the rest of you, but the Cinar case holds some personal significance to me. I worked on a small part of it when I was a litigator in Montreal (unrelated to any of the elements of this post). I helped hire one of the lawyers on the case, Marc-André Grou, when I was at my last law firm; it was his first job out of law school. Another of the lawyers, Cara Cameron, was a couple of years behind me at McGill law school. And doing work on a different lawsuit involving Cinar Corporation was my introduction to entertainment law. Small world, sometimes...]

Cinar Corporation v. Robinson
Legal Minimum post on Sherlock Holmes


  1. Thank you for this. I have often had a difficult time explaining the "essence" concept to others when discussing copyright law in general. It becomes even more complex when it is based on something in the public domain. At least for me, this seems quite clear.

    1. Thanks to you for reading. I'll be working up some more detailed explanations in the coming weeks and hopefully you'll find those useful too.


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