Understanding the line between public domain and copyright is difficult to discern, as described in a post about the This Land is Your Land JibJab controversy. For example, people can't even agree on whether all, part, or none of "Happy Birthday" is protected by copyright or in the public domain. In an upcoming New York University Law Review article, Brooklyn Law School Professor Jason Mazzone calls the claiming of copyright in public domain materials "copyfraud."
This intellectual property cautionary tale starts because I was puzzled by the copyright notice in a historical mystery novel. Published in the United States in 2004, “Tale of Hill Top Farm” by Susan Wittig Albert is based on the life of Beatrix Potter and includes references to many of her famous characters, including Peter Rabbit, his friends, and relations. Part of the copyright notice reads:
“Frederick Warne & Co Ltd is the sole and exclusive owner of the entire rights titles and interest in and to the copyrights and trademarks of the works of Beatrix Potter, including all names and characters featured therein. No reproduction of these copyrights and trademarks may be made without the prior written consent of Frederick Warne & Co Ltd”
On quick reading, a person could easily assume that this company owned the copyright in all of the Peter Rabbit books, and that therefore none of the books could be copied without permission. But is this accurate?
The simple answer is -- NO!
Wasn't Peter Rabbit first published in the United States so long ago that it is in the public domain?
More after the jump
Peter's excellent copyright chart shows that works published in the United States before 1923 are in the public domain. The earliest definite authorized edition of The Tale of Peter Rabbit was published in the United States in 1904. (Also, U.S. copyright status was muddled for the Tale of Peter Rabbit in the United States because Warne failed to properly register a copyright, leading to many pirated versions by 1904. For more, see either of Leslie Linder’s books, A History of the Writings of Beatrix Potter or The History of The Tale of Peter Rabbit, both published by Warne.)
Not all of Potter's well-known twenty-three stories are in the public domain in the United States. The Tale of Little Pig Robinson (published 1930) is protected by copyright and definitely not in the public domain. Two other tales are most likely in the public domain: Cecily Parsley's Nursery Rhymes (the New York Public Library has a US edition published in 1922) and Appley Dapply's Nursery Rhymes (I confirmed via library staff that the University of Illinois has a US edition published in 1917).
Beatrix Potter's twenty other stories, including those that concern Peter Rabbit, his friends, and relations, are all included as free e-text separately and in collected stories as part of Project Gutenberg:
The Tale of Peter Rabbit, The Tale of Squirrel Nutkin, The Tailor of Gloucester, The Tale of Benjamin Bunny, The Tale of Two Bad Mice, The Tale of Mrs. Tiggy-Winkle, The Tale of the Pie and the Patty-Pan, The Tale of Mr. Jeremy Fisher, The Story of A Fierce Bad Rabbit, The Story of Miss Moppet, The Tale of Tom Kitten, The Tale of Jemima Puddle-Duck, The Tale of Samuel Whiskers or, The Roly-Poly Pudding, The Tale of the Flopsy Bunnies, The Tale of Ginger and Pickles, The Tale of Mrs. Tittlemouse, The Tale of Timmy Tiptoes, The Tale of Mr. Tod, The Tale of Pigling Bland, and The Tale of Johnny Town-Mouse.
Several of the cover illustrations of these tales, were the object of a trademark dispute in Frederick Warne & Co. v. Book Sales, Inc., 481 F. Supp. 1191 (Southern District of New York, 1979). In this case, "Warne [the publisher] concedes that the seven works [The Tale of Peter Rabbit, The Tale of Two Bad Mice, The Tale of Mrs. Tiggy-Winkle, The Tale of Mr. Jeremy Fisher, The Tale of Squirrel Nutkin, The Tale of Benjamin Bunny, and The Tailor of Gloucester] are in the [U.S.] public domain." [emphasis added]
So in the U.S. is Frederick Warne the owner of all trademarks in the Beatrix Potter characters names and illustrations?
First, a brief but hardly complete overview of trademark law. The purpose of a trademark is to distinguish one manufacturer’s products from another, according to the U.S. government definition, “A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
The ™ symbol is used when trademark rights are claimed but the mark has not been registered with the United States Trademark and Patent Office, while the ® is used to indicate that the mark has been registered. If trademarks are not protected by use by others, they can fall into the public domain, but can be reclaimed by anyone who establishes exclusive and active use.
You can use a trademark as an adjective. But using a trademark as a noun or a verb undermines the mark's distinctive value. This dilution of a trademark may turn a trademark into a generic description, as happened to aspirin, the generic term (in the U.S.) for acetylsalicylic acid. Aspirin was originally trademarked by the Bayer Corporation. See Judge Learned Hand’s decision in Bayer v. United Drug, 272 F. 505 (Southern District of New York 1921).
In Frederick Warne & Co. v. Book Sales, Inc., the court addressed the issue of overlapping trademark and copyright issues and held that the
"fact that a copyrightable character or design has fallen into the public domain should not preclude protection under the trademark laws so long as it is shown to have acquired independent trademark significance, identifying in some way the source or sponsorship of the goods."
Understanding that the public was most likely to identity the illustrations with their creator, the court said to trademark them Warne must show that the illustrations and characters had come to represent Warne as a publisher rather than just Beatrix Potter as their creator:
“[I]t would not be enough that the illustrations in question have come to signify Beatrix Potter as author of the books; [Warne] must show that they have come to represent its goodwill and reputation as Publisher of those books.”
In Viva R. Moffat's article, Mutant Copyrights and Backdoor Patents: The Problem of Overlapping Intellectual Property Protection, 19 Berkeley Technology Law Journal 1473 (2004) the problems for the public with works protected by trademarks, yet in the public domain, are identified:
“Frederick Warne & Co. sought to establish and maintain its trademark rights in the pictures of Peter Rabbit while the copyright was in effect and then continued to press those trademark rights after the copyright expired. Here as well, the drawings of Peter Rabbit initially were the product, or part of the product, and then became, at least according to the plaintiff, a trademark signifying the source of the product.
Frederick Warne demonstrates the way in which the expanded notion of trademarks and trademark rights has led to overlap. The conclusion that Peter Rabbit has risen to trademark status is a stretch, yet the court did not appear reluctant to confer trademark rights on Frederick Warne & Co. It is hard to believe that the picture of Peter Rabbit has come to function as a trademark or that there is really a significant risk of confusion in this instance. Indeed, it is only if the trademark rights are granted here that people will come to associate Peter Rabbit with a single source rather than believing that he is part of the public domain.” (emphasis added)
The issues in Warne v. Book Sales came down to an question of fact regarding whether the illustrations represented Warne as a publisher, the parties settled, and no formal decision was issued. However, this was not the end of the legal battle concerning trademarking the work of Beatrix Potter.
In a Trademark Trial and Appeal Board case, In re Frederick Warne & Co., 218 U.S.P.Q. (BNA) 345 (T.T.A.B. 1983), one of the book cover illustrations at issue in Warne v. Book Sales, The Tale of Jeremy Fisher, reappeared as an issue of trademark contention. The administrative decision was that a book cover illustration, even one depicting a character from a book, can be a registerable trademark, unlike the title of an individual book, but registration was appropriately refused in this case because the illustration was merely descriptive of the character forming the story of the book:
“The cover illustration at issue was drawn by the book's author [, Beatrix Potter,] to be used on [Warne’s] editions of the book[,] The Tale of Mr. Jeremy Fisher. But there is nothing in the record to support the claim that it was adopted and used in 1906 as a trademark to distinguish applicant's editions from any others. Indeed, the fact that applicant was the exclusive authorized publisher for quite some time and that there were no competing editions until relatively recently leads us to believe that its initial appearance on the book cover had no other purpose at that time than to serve as a depiction of the main character of the book. …
[I]t is clearly a descriptive illustration serving to depict in visual form the figure about whom the book's "Tale" is told. The cover illustration differs from the illustrations of Jeremy Fisher found inside the book only in the featured action in which the frog is involved. All were the creation of the author and all serve to further an understanding of the story. It is difficult to perceive a purchaser who would be likely to make the necessary distinction between those illustrations found between the covers of the book as being the creative work of Miss Potter and that appearing on the cover as a mark of identification of the publisher. In our opinion, the obvious impression would be that one and all are the author's creation and that all appear as aids to an understanding of the text. It is applicant's burden to prove that the public has come to view the illustration in question not as a visual description of Mr. Jeremy Fisher created by Beatrix Potter but as a trademark.” (emphasis added)
This case was favorably cited by the Second Circuit for the premise that a “cover illustration showing main character of book is clearly descriptive of book's contents, not an identification of publisher.” (Pirone v. MacMillan, Inc., 894 F.2d 579 (United States Court of Appeals for the Second Circuit 2000)). Based on these two cases, I would argue that any U.S. Warne registered trademarks in the cover illustrations of Beatrix Potter are invalid.
So what trademarks does Warne have in Beatrix Potter related items?
Warne’s trademarks in Beatrix Potter’s works are quite extensive.
Warne does presently have registered trademarks related to The Tale of Mr. Jeremy Fisher for toilet soap, music boxes, and toy stuffed animals and dolls.
Warne’s Peter Rabbit related trademarks include Peter Rabbit brand:
children's story books; bed blankets, diaper bags; pillows; crystal figurines; educational entertainment services rendered in an amusement theme park; educational and teaching materials for reading purposes, namely printed teaching manuals, printed activity guides for use, user manuals, and instructional forms, and interactive software, packaged together; interactive computer software for educational reading purposes; jewelry – specifically rings, bracelets, necklaces and pins; animated motion picture and video film series; rugs; cookies; jigsaw puzzles; picture story books for children; books; sheets, quilts, comforters, pillowcases, bed skirts, blankets and shower curtains; toilet soap; children's picture books; candy; children's household ware -- specifically pots, jugs, plates, mugs, cups, trays, saucers, bowls, compotiers, honey pots, containers for eggs and coins, porringers and chamber pots; music boxes; equipment sold as a unit for playing table-type board games; toy stuffed animals and dolls; pewter statues; pictures; and buttons.
Of the other potential trademarks at issue in Warne v. Book Sales, presently Warne has registered trademarks in either the name of the character or the title of the book for The Tale of Mrs. Tiggy-Winkle (brand for buttons for clothing; toilet soap; music boxes); The Tale of Benjamin Bunny (brand for bubble bath; buttons for clothing; music boxes; toy stuffed animals and dolls; pewter statues; pictures); The Tailor of Gloucester (brand for music boxes; pictures); and The Tale of Squirrel Nutkin (brand for toy stuffed animals and dolls). Warne previously had registered trademarks for The Tale of Two Bad Mice, but these trademarks are dead.
Warne also has a large number of Beatrix Potter registered trademarks. While Warne does have many trademarks in Beatrix Potter related items, they are not the only owner of Potter-related registered trademarks, even in the U.S. For example, Peter Rabbit and Peter Rabbit Farms are registered trademarks of Peter Rabbit Farms for fresh fruits and vegetables.
New Versions of Illustrations?
So what about the complication that many versions of Beatrix Potter's books have "value-added" materials, including new versions of the original illustrations?
According to Margaret Mackey, Professor at the School of Library and Information Studies, at the University of Alberta, and author/editor of two books concerning Peter Rabbit, Beatrix Potter's Peter Rabbit: A Children's Classic at 100 and The Case of Peter Rabbit: Changing Conditions of Literature for Children, the twenty three original tales have been reissued
"with their watercolor illustrations "re-originated." What this meant was that Warne returned to the original paintings, made new transparencies, and used newer forms of reproduction to guarantee a fresh faithfulness to Potter's original work. [This] also allowed the company the opportunity to recopyright the illustrations."
While Mackey discusses the aesthetic value of the new reproductions, whether these new illustration versions are considered to be copyrightable in the U.S. is uncertain. According to the Southern District of New York, in Bridgeman Art Library v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999), photographs of art works in the public domain lack sufficient creativity for new copyright protection because they were exact copies, lacking originality (described as “a creative spark.”)
The copyright issue, as described in Bridgeman, comes down to whether the new versions are original in any way, containing a creative spark. The court describes elements of originality, including “posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved”, but “’slavish copying,’ although doubtless requiring technical skill and effort, does not qualify” for copyright protection. The court states the copying was slavish though “it may be assumed that this required both skill and effort, there was no spark of originality -- indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity.”
To describe what “slavish copying” consists of, the Bridgeman court cites to Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987), where the following efforts were considered to be slavish:
“The work done by the various participants was long, time-consuming, and artistic in every sense of the word. The original drawings had to be retraced by hand in three separate stages to correspond to the three separate colors, red, yellow, and blue. Every bit of grass, every check on Dorothy's dress, every bit of shine on the Tin Woodman's body had to be redrawn with pen and ink on acetate and sometimes twice or more.”
Warne describes their efforts with the new reproductions in their new editions of Tale of Peter Rabbit in a Publisher’s Note as:
“Taking the first edition as a guide, the aim has been to follow faithfully Beatrix Potter’s intentions while benefiting from advances in modern printing and design techniques. The colours and detail of the watercolors are here reproduced more accurately than ever before, and it has now also been possible to disguise damage that has affected the artwork over the years.”
Warne and the archivists, artists, and technicians who worked on this restoration project would not agree that their efforts were “slavish copying.” However, it seems most likely that these new versions would indeed be denied copyright protection in the U.S. due to lack of originality under the Bridgeman analysis.
Influence of Non-US Law
Are those in the US able to do whatever they want with Potter's U.S. public domain materials that aren’t trademarked? It's still not that simple.
While there are several websites that have put Beatrix Potter public domain materials online, they have confronted the additional wrinkle that many of these works are still under copyright protection due to the "ghost" of returning copyright -- outside of the United States -- and their websites, of course, are accessible anywhere.
Many U.S. websites with US public domain materials include copyright statements which are influenced by copyright status elsewhere, but do not mention U.S. public domain, such as Ohio University's Wired for Books' Kids Corner, which includes mostly U.S. public domain materials. The University of Virginia's Electronic Text Center places on its Beatrix Potter e-texts a statement that does not mention public domain status in the U.S., but mentions copyright in the European Community:
"The use of the works of Beatrix Potter are protected by copyright in some countries, including those of the European Community. In such countries any reproduction or commercial use of the text or images of the works of Beatrix Potter may not be made without the permission of Frederick Warne & Co."
Understandably, websites that post public domain materials may not want to state this fact – due to concerns about others’ copying their hard work. But for the public domain to remain vibrant, it would be helpful to the public if all were made aware of its use.
To better understand the position of Frederick Warne's copyright statements regarding Beatrix Potter and Peter Rabbit, I talked with Karen Mayer, General Counsel and Vice President, Penguin Group (USA) Inc. (Frederick Warne is a division of Penguin.)
According to her, Penguin Group, like any other publisher, is claiming copyright in the works that are under copyright, but there are other issues involved in a copyright statement – including copyright status in other countries, as well as trademark issues, or new illustrations.
With regards to works in the public domain, Penguin Group is claiming copyright “not to more than we own. That’s all any copyright notice can do.” According to her, some works of Beatrix Potter are still under copyright (for my notes affirming this, see above).
Also, Mayer says that copyright statements are still important – giving “historical notice”, informing people of the original publication date, for example in the case of Peter Rabbit, the original publication date in the UK of 1902.
So where does this leave those in the US who want to use public domain materials?
· Remember that U.S. public domain materials available belong to the (U.S.) public!
· Be very careful that the materials you are going to use are in the public domain. If you think it is possible something is in the public domain, you may be right -- but do your research. Remember that copyright is not the only possible issue, trademarks and other intellectual property may be at issue.
· Read copyright statements carefully. Even technically accurate statements can be misleading. Presently, U.S. copyright law has “essentially no statutory protection—none, zip, zero—for the public domain. The Copyright Act provides no civil remedy against publishers who improperly claim copyright over materials that are part of the public domain,” says Mazzone. While there is a criminal penalty for placing a fraudulent copyright notice on materials, 17 U.S.C. 506(c), the punishment, a fine, is limited to $2,500, and in the few cases of prosecution for violating this statute, there are no known cases (by this author) for placing a fraudulent notice on public domain materials.
The original or present publisher does not have the ability to either grant or deny permission to public domain materials -- if they are truly in the public domain! Mazzone describes the present situation as “Like a for-sale sign attached to the Brooklyn Bridge, the upside to attaching a false copyright notice is potentially huge—some naïve soul might actually pay up. The only downside is that the false copyright notice will be ignored when savvy individuals understand the legal rules and call the publisher’s bluff.”
· If you what you doing with US public domain materials has the possibility of being seen, reproduced or distributed outside of the U.S., such as posting on your website, consider adding a statement, similar to that of Project Gutenberg, that the materials are in the public domain in the US, but may not be elsewhere.
· Violating copyright (or arguing about public domain status) can cost you significant time and money, so consider what you are doing carefully. Even if you are right, you may need to litigate those who are claiming copyright and other rights to prove your case that a work is in the public domain. But someone has to step forward for the public domain – one work at a time.
What can be done now by the public to make the situation easier for all through non-legislative means?
· Use public domain materials! The more people use public domain materials – and state that they are using these materials, the greater the use of these materials will be.
· Public domain works belong to the public. However, incorrect, inaccurate, or incomplete copyright notices limit the "marketplace of ideas" by limiting or preventing use of these materials by the public. Question copyright statements – as I have done here.
What can be done now by publishers to make the situation easier for all through non-legislative means?
· Publishers should include more accurate and country-specific copyright statements. Mazzone suggests “A notice should simply and clearly specify which materials—for instance, an introductory essay, editorial comments, footnotes—are copyrighted, along with the relevant page numbers, and which parts of the work are public domain materials that can be freely reproduced by others.”
· Publishers likely know about whether the majority of their materials are or are not in the public domain, so if someone asks permission to use public domain materials, inform the requestor of this fact, rather than denying the request.
What can be done now in the future to make the situation easier for all through changing the copyright law?
· As Mazzone suggests, adding damages to copyright law to penalize "copyfrauders" could prevent false claims of copyright. Other useful possible additions are a more clear definition of fair use, and creating a registry for potential public domain materials. Also, Peter Hirtle suggested some language to add to the draft orphan works legislation that would penalize people who claim copyright when none exists; however, it didn't make it into the proposal.
· If there is another copyright extension, a requirement for complete and accurate copyright statements should be created. If the balance continues to swing so directly for the benefit of the copyright owner, the public should be able to know what belongs to us collectively.
It is unfortunate that we continue to be fearful of using what is ours – even I’m warning everyone to be very careful! As Mazzone states,
“copyfraud’s ultimate result is to weaken legitimate intellectual property rights. … If large publishing houses with their teams of lawyers cannot distinguish between what is protected and what is free for public use, it is unreasonable to expect teen-agers with their laptops to play by the rules.”
(Note: I have no pecuniary interest in the copyrights and trademarks discussed; I am just a curious librarian. I love Peter Rabbit and his friends, have bought many of the Warne trademark brand licensed products for myself and others and will continue to do so. I will continue to avoid bowdlerized/non-authentic versions because I appreciate Beatrix Potter's original vision, and I have found that the reading experience is just not the same without with the original illustrations. I appreciate the efforts Warne has made in restoring the original illustrations. But I am going to read copyright notices more -- and more carefully!
I appreciate the willingness of all who corresponded with me. And thanks to Mary, Susan & Peter.)