August 29, 2003  ·  Lessig

The Stanford CIS has been working on a case for a long time to establish the public domain status of Peter Pan. (The Internet has apparently already recognized it. Check out the Google search on Peter Pan). We represent a Canadian author, Emily Somma, who has written a sequel to the public domain portions of the Peter Pan story, called “After the Rain.” Somma was threatened by the rights holders of the Peter Pan-related work still under copyright. The essence of their claim is that so long as anything Peter Pan related is under copyright/trademark protection, everything is. (The rights holder is a children’s hospital in England, which has meant (1) that service of our complaint has been severely delayed by the UK government, and (2) that we get lots of nasty letters from people who think a charity should have the right to do whatever it wants so long as it benefits children. I’m all for charities, and especially for charities benefitting children, but threatening an author who is simply building upon the public domain is not the stuff a charity should be doing.)

ANYWAY, while practicing my Danish (not really: I am totally language illiterate) I came across another wonderful example of this increasing practice.

According to this story, there’s a Danish character called “Gummi-Tarzan” (I think this is an image) that has been forced to drop “Tarzan” from its name by the ever-pleasant Disney Corporation. This because Disney believes it owns “Tarzan.” This because Disney has trademark protection in a bunch of Disney work that builds upon Edgar Rice Burrough’s “Tarzan,” even though Burrough’s Tarzan originates from 1914, and is therefore within the public domain. Nonetheless, from now on, Gummi-Tarzan must be referred to as Gummi-T.

The public domain was supposed to be a lawyer-free zone. So much for how things were supposed to be. (Thanks to Joergen Ramskov and Thomas Wesley Hinton for porting the story into a form that the I could understand.)

  • http://www.pawlo.com/ Mikael Pawlo

    Actually the story says that the restrictions only apply to new forms of works containing Gummi-Tarzan, such as musicals. The (very popular and actually quite funny) children books may still be referred to as Gummi-Tarzan. I am hestitant to whether the legal opinion expressed in the Danish article and Larry’s piece is accurate or not. Normally, in the Nordic Countries and probably the entire EU, (and probably also under the Landham Act, no?) you may use trademarks in non-commercial exploations, that is for example in an editorial or a book.

    The problem is when you start using the trademarks commercially in a passing-off fashion or when you start diluting the trademark or when you use the trademark in a way that make consumers or businesses confusing the original proprietor’s products with your products.

    I don’t know if this apply to the Tarzan trademark or the case at hand, but I think we need to remember that a trademark is used to identify and distinguish the origin of a good or service and thus protects the consumer against confusion and other tricks in the marketplace.

    Best regards,

    Mikael Pawlo

  • lessig

    Mikael, were you confused about the relationship between Gummi-Tarzan and Disney’s?

  • http://www.screaming-penguin.com cooper

    You know, this whole line of posts starts to stink like the SCO suit. That is, their assertion that anything IBM ported to UNIX became a derivative work, even though the original work wasn’t even directly related.

    At what point does the derivative work copyright break, and are we going to see this tact applied to software copyrights as well, where the public domain is null as long as three lines of code from some archane product are still in use?

  • http://www.pawlo.com/ Mikael Pawlo

    Larry,
    Re: confusion – I don’t know, was I? You are building the case for Disney by such comments .-)

    You wrote: “Nonetheless, from now on, Gummi-Tarzan must be referred to as Gummi-T.”

    That is not correct. Gummi-Tarzan may still be called Gummi-Tarzan in the children’s books. However, for the MTV Produktion (which I think is a different company than the music channel) produced musical, the Burrogh’s estate (well, Disney!) claim rights to the use of the word mark Tarzan. Do we know why MTV Produktion agreed to refrain from using the trademark? Did it just settle to avoid any possible legal action or did Disney actually have a case?

    Personally, I find it hard to believe that there is any likelyhood of confusion, dilution or any other ground that could be used against Gummi-Tarzan. After all, no Danish citizen would confuse Gummi-Tarzan with the guy that lives with monkeys in the djungle and plays backgammon (or something…) with Jane. Further, the use is probably not passing off according to Danish law. However, I have learned to refrain from stating any legal opinions without all the details. Then also, I am not trained in Danish law .-)

    All the best,

    Mikael
    P.S. For all Scandinavians reading this – I am just tonight proofreading a great article on the use of trademarks in editorial and creative situations for the next issue of the Nordic Intellectual Property Review. Be sure to get your own copy .-) D.S.

  • http://www.pawlo.com/ Mikael Pawlo

    By the way, this a super-lame and totally void argument, dear Professor:
    “The public domain was supposed to be a lawyer-free zone.”

    I am sure the Professor is being ironic. Au contraire, the public domain should be a lawyer-filled zone. Send in the lawyers to defend the rights and freedom from capture!

    The comment made by the Professor made me recall this comment (followed by an entire chapter why liberty of thought and discussion is important) – made by – well, you really should know – otherwise use Google .-)

    ‘The time, it is to be hoped, is gone by when any defense would be necessary of the “liberty of the press” as one of the securities against corrupt or tyrannical government. No argument, we may suppose, can now be needed, against permitting a legislature or an executive, not identified in interest with the people, to prescribe opinions to them, and determine what doctrines or what arguments they shall be allowed to hear.’

    Have a nice weekend, all!

    Mikael Pawlo

  • Fuzzy

    Speaking of trademarks, I am a bit confused over the recent story (and story) about Tibco Software suing Apple Computer over the trademark for ‘Rendezvous’.

    I thought that just as with Patents, which must be examined and approved by the USPTO, that Trademarks had to be approved by the USPTO to avoid any overlap.

    In this case, Tibco claims to have had the trademark ‘for many years’ but Apple also claims it has received a trademark for ‘Rendezvous’.

    In this case, I don’t understand how 2 organizations, both having registered trademarks can have a trademark dispute. The USPTO approved them both, so if there is a problem, don’t they need to take it up with the USPTO?

  • lessig

    m,
    I totally don’t see why the qualification you raise should matter? The theory is that if you exploit a public domain work and are successful at that explotation, you get to stop others from exploiting the same public domain work?

  • http://www.slumdance.com/blogs/brian_flemming/ Brian Flemming

    Can I just add, slightly on topic, how irritated it makes me that Dr. King’s estate is keeping the “I Have A Dream” speech tightly held, so as to extract huge payments from whomever wants to use it?

    A speech about freedom locked up in a cage.

  • http://pobox.com/~joehall joe

    So, what kinds of situations actually remove things from the public domain?

    Legislation like the Uruguay Round Agreements Act (which un-public domained a slew of stuff) and the Mickey Mouse Extension Act (which delayed the public domaining of a slew of stuff) aside, could I trademark “Mark Twain” or “Red Riding Hood” or the like (please refrain from specific comments on these examples, you get my gist) in relation to a service or good and then claim that anyone wanting to use said phrase in commerce would be diluting me?

  • http://www.jzip.org/ adamsj

    A True Story of How a Popular Folk Symbol Became a Property

    Back in the late eighties, I worked in a college bookstore. Up until that time, the University of Arkansas had not aggressively enforced its Razorback franchise. While I was working there, however, the university (I gather this was an NCAA-wide effort) started going after non-sanctioned shirts.

    I’m not a sports fan at all, but I did enjoy seeing the shirts, some of them quite witty, others just nicely designed. Often vendors would create and bring in small lots, and the customers that got those shirts had something not everyone else had. One guy airbrushed custom one-off shirts.

    That’s all gone now, and the shirts one sees are very plain and common–lowest-denominator culture. Nothing edgy or rowdy anymore, just polite, respectable shirts. Incredibly boring stuff, but it’s all that’s on the market, so it sells and brings revenue in to the university.

    The effort wasn’t limited to clothing.

    Many businesses which had the word Razorback in their name or used a hog symbol got cease-and-desist letters. Razorback Reds, a local brand of condom (their slogan: “Make Your Sow Squeal In Delight”), were put out of business–they weren’t given the option of paying a licensing fee, but were simply shut down. A country band from Fort Smith, Razorback, was forced to change its name, just as they were getting record company attention, and there went a chance at the big time. (Thank goodness it didn’t happen to the Jayhawks! Or have I just given someone an idea?)

    I believe a lot of the value in the Razorback brand was created by the people who were frozen out by the university. While the cash value of the Razorback has probably been damn near optimized, I suspect its value for human enjoyment has been reduced as it’s been commodified.

    Incidentally, I understand now the University is disputing with the guy who invented the Hog Hat and has now put out its own, kinda ugly, version.

    The results? From the link above:

    Only 3,000 of the Hogheads have been sold to Arkansas outlets since distribution started in October and store owners sigh at the sales.

    More than 500,000 Uncle Heavy’s have been purchased over the years.

    I thought I got my Uncle Heavy’s Hog Hat the hard way–as a contestant on Michael Feldman’s Whad’Ya Know, where I learned a lawyer from Lowell, Arkansas (my quiz partner) was funnier than me, much funnier–but future generations may have it rough, rough, rough.

  • http://www.pawlo.com/ Mikael Pawlo

    Larry:
    “I totally don�t see why the qualification you raise should matter? The theory is that if you exploit a public domain work and are successful at that explotation, you get to stop others from exploiting the same public domain work?”

    Yes, indeed. That’s why you pay a dollar to drink brown water with sugar, should it be branded Coca-Cola.

    The interplay between trademark law and copyright is indeed very complex, but I believe that trademarks are good for the consumer. The Tarzan trademark was filed many years ago. One may argue that you should not be able to trademark titles of works or characters that are no longer under copyright protection but that would also give strange effects. It sounds to me like you are opposed to trademarks generally. If this is the case, I can buy your argument against trademarks (that is – if you are selling!), but otherwise I do not get it. Sure enough, trademarks have grim implications for the public domain, but you are not prohibited from using trademarks entirely (as I suggested in previous submissions).

    If the system is changed to better handle the interplay between trademarks and the public domain, it needs to be entirely redesigned, otherwise the positive aspects of trademarks (i.e. consumer information) will be lost.

    Regards,

    Mikael

  • http://www.lifeformz.com Brian Stokes

    Please correct me if I’m wrong, but isn’t trademark (at least in the United States) specific to a particular product or industry? I remember reading in a 1980′s law book that it’s legally okay to create a brand of jeans called “Kodak” so long as you’re not ever planning to go into the camera industry. By this logic, Apple Computer lost a dispute with Apple Records because they had started advertising the Mac as a music computer (back in the late 80′s).

    So, as long as the Danish company is making a character named Gummi-Tarzan in a space not competing with Disney (probably impossible now, eh?), would it not be legal?

    Seems like trademark law’s intent is being abused fairly regularly — to stifle parody, as a business model, or to prevent small competitors / attack big ones, to censor discourse that might contribute to dilution, etc. Would someone explain to me why the dilution portion of the law was ever a good idea? It seems to put corporations on the offensive in spaces other than commerce.

    Take an example: Xerox is now a common English verb, yet they can still sell Xerox copiers. Is the issue of dilution that Canon could say they make copiers that “xerox”… hence customer confusion? But that’s how language works.

    Who are we protecting here? Clearly not the customer…

  • ryan

    I don’t know what the technically correct legal answer is, but it seems very wrong for Disney to be able to stop someone using the Tarzan name if Tarzan is in fact public domain. I shouldn’t matter that they’ve created a derivative work. If you take their work and use it sure, it’s protected, but not the essence of the original or the name that is already public domain.

    It’s just wrong.

  • Eric Predoehl

    It’s interesting that the Disney corporation is standing up for the Tarzan trademark, as the last I heard, the name was still owned by Edgar Rice Burroughs, Inc. Mr Burroughs was considered one of the more astute writers in the pop culture world in the early part of the 20th Century. He registered his trademark back when most writers weren’t even thinking about such things, and it allowed him a chance to become rather wealthy through merchandising, licensing, and motion picture deals. Even as the books themselves enter the public domain, the Tarzan character has always been actively regulated, just like any other name brand product.

    The Burroughs corporation has gone after other companies that “infringed” on their creation. In the past 10 years, they even stopped a porn film called “King of the Jungle” that used a Tarzan-type chracter. I never saw the film, so I don’t know if the jungle stud was actually called “Tarzan,” but it’s just another example of how the Burroughs corporation doesn’t like unauthorized uses of it’s most popular asset, even if it’s only a seemingly harmless porno parody.

    As the Burroughs corporation found big success with the Disney animated film, I can only guess they decided to let the Disney legal powerhouse handle trademark enforcement as well. What the hey- Disney probably has a lot of lawyers on their payroll, so they might as well use those resources…?

  • ryan

    That poses the question: What use is the public domain if creations that have entered it can be tainted by trademarks?

  • http://adamgoldstein.com Adam Goldstein

    Perhaps the most sinister thing about the recent copyright extension is that it made the public domain seem even less relevant for the next few decades, making it easer for IP holders with sinister intent to abuse it. Disney is very much a sinister IP player, as we all know; to bring some of these characters in this entry closer together, Disney tried to sue the children’s hospital over the play and lost (note to Disney: before you go into a foreign country and sue a children’s hospital for infringment, you’d better be pretty goddamn sure you know what you’re doing).

    By the by, the “The Wind Done Gone” case, mentioned in the linked Q&A about the current case, was wrongly decided, but that’s neither here nor there and is a fine legal point (the author’s statements indicate that her intent was satire, not parody).

    It seems like the best reason for Stanford to take this case is that it SHOULD BE (read: will be unless the court is as absolutely clueless about IP issues as the Supreme Court currently is) easiest slam-dunk of a copyright case I can think of. Peter Pan is in the public domain, and this is a U.S. court that doesn’t recognize even the perpetual copyright on the play. The only reason I can think of for the court not to respond is that it’s so obvious it doesn’t even qualify as a controversy. An easier way to deal with this might have been to write “Go Screw Yourself” on the C&D letter and mail it back. Of course, that’s no way to behave when dealing with a children’s hospital. Then again, sending a C&D letter is no way for a children’s hospital to behave. Eh, screw ‘em.

    Since nobody else responded (openly) to the questions asked:

    Brian: the interplay between trademarks in varying industries is more complicated than that. When a mark is “famous” (hard to define, but easy to see: McDonalds, Nike, Coca-Cola, Disney, etc.), it’s given protection against dilution, which extends its reach to other uses. Even when it isn’t famous, if it’s in an area likely to cause confusion (e.g., if I wanted to start an abrasive cleanser company named 409, even though 409 isn’t a trademark used on abrasive cleanser), it’ll cause legal problems.

    Fuzzy: While trademark registrations aren’t exactly rubber-stamped, examiners tend to err on the side of granting them, from what I’ve noticed. Denying an application usually leads to a reversal on appeal anyway. Besides, do a trademark search sometime and you’ll find that every combination of word and idea has been used a few hundred times by now–the trick is knowing which uses have created legal rights to stop other uses of the name, and of those rights which still exist in the geographic area.

  • http://www.unknown.nu/kim/journal/ Kim Scarborough

    Adam:

    Gee, are you a Negativland fan?

  • http://adamgoldstein.com Adam Goldstein

    Never heard of ‘em.

  • http://www.pawlo.com/ Mikael Pawlo

    Larry et al,
    I had hoped for some elaboration on the interplay between trademark law and copyright!

    This (the interplay as such) is perhaps the hardest part of the intellectual property law, but it must not be disregarded.

    M

  • Karl

    Nit-picky, but…at 55, “Plaintiff is informed and believes and thereon alleges that Revolution Studios is a _business of unknown form_ having its principal place of business in Santa Monica, California.”

    Are the research assistants asleep at the keyboard? There’s a rather specific write up as to the nature of the business under ‘About Us’ at revolutionstudios.com.

    -kd

  • Ken Horwitz

    Here’s another vote for some serious commentary from Larry about the interplay between copyright and trademark law. For example, there are individual Bugs Bunny cartoons and Superman comic books that have fallen out of copyright; the characters of Bugs and Superman are protected trademarks. Do the trademarks trump the lapsed copyrights? Does it matter if the lapsed copyrights are the *first* appearance of a character? (For example, if the copyright on “Steamboat Willie” were to lapse, would the trademark on Mickey Mouse still trump the lapsed copyright?)

  • http://adamgoldstein.com Adam Goldstein

    Trademark and copyright aren’t particularly in conflict. Use of Mickey Mouse in trade is different from use of Mickey Mouse as a character. The original version of Superman is very much in the public domain, and you can use Superman in your stories, but publishing a Superman comic book might be unwise. The mere fact that it correctly describes the character doesn’t diminish D.C.’s rights to use the character’s name in trade. Bottom line being that a trademark does not expire so long as it’s used in trade. When you have overlaps, such as, say, the original Superman logo being used on a t-shirt (copyright-wise in the public domain, trademark-wise still protected as D.C. still sells similar shirts), trademark law still blocks such a use.

    Interesting thing about the original Superman (the one currently in the public domain), though . . . he couldn’t fly. Hence the “able to leap tall buildings in a single bound” statement. When you think about it, that doesn’t make any sense to say about someone who flies, does it?

  • http://www.digitalartauction.com/ Crosbie Fitch

    How about creating a new charitable corporation/entity (call it ‘The Public Trust’) to represent a less passive ‘public domain’? This would be an entity to which people could transfer the copyright/trademarks of their works to on the understanding that it would jealously guard them. However, it would grant a kind of ‘Open Source’ license that would permit free use of those works so long as derivatives were also subject (became similarly entrusted to the ‘Public Trust’).

    This way, companies like Disney couldn’t pick up stuff belonging to the Public Trust and then assimilate them.

    I guess the ‘public domain’ can be compared to a BSD type license (or an even weaker one), whereas the Public Trust would be a GPL type of license.

    Ultimately, law should make the public domain behave precisely like the Public Trust, i.e. once works enter the public domain they can’t be removed or restricted.

    Any time a work belonging to the Public Trust was infringed, interested parties could act on its behalf, although, you never know, it might have received sufficient donations to afford the legal services itself.

  • Ken Horowitz

    Adam — what makes you say the original Superman is “very much in the public domain”? Is it the fact that some comic books and the Fleisher cartoons have lapsed copyrights? Note that Superman didn’t make his first appearance until 1938, a decade after Mickey Mouse first came on the scene. Isn’t Mickey still protected?

    Does this mean that I could write and sell my own stories featuring Superman and Mickey Mouse in book form? (Assume here we’re talking about text only, so as to avoid the issues of the trademarks of graphics.) Is there any reason to believe that I would NOT be sued by DC Comics and Disney? Aren’t these exactly the issues in the “After the Rain” situation?

    I’m unclear on the distinction between use of a character “in trade” and “as a character”.

  • http://adamgoldstein.com Adam Goldstein

    Not exactly true–Superman made his first apperance in Action Comics #1 in 1938, but daily strips started in 1933. Not that it makes a huge difference, as it was published in 1939. For works with such a publication date, there was a 28-year copyright term with a 67-year renewal term. Access to the renewal term, however, depending on registration at the time. Not all of the strips/drawings were correctly registered, or registered at all; not all of those that were correctly registered were renewed. Some of the original cartoons are in the public domain for the same reason.

    Is there any reason to believe you would not be sued by Disney? No, no reason to believe that at all. In fact, you probably would be sued by D.C. and Disney. People sue all the time when they’re in the wrong, particularly copyright holders. As long as you’ve got a reasonably copyright-literate judge (hopefully not one in the 9th Circuit), you’d win as far as using the original Superman goes. (But remember, the original Superman is significantly different than the modern one . . .) And it is exactly like the “After the Rain” situation, because in both cases the copyright holders would be full of baloney.

    Trademarks are trade marks–marks intended to designate origin in trade. When D.C. comics puts the Superman logo on a comic book cover, they want you to see Superman and think, “This book came from D.C. comics and I want to buy comics from them, because they write quality comic books.” This is in stark contrast from the purpose of a copyright, which is to be compensated for the reproduction/distribution/creation of derivatives (at least as far as print copyrights go) of a work. If you put a drawing of, or a story about, the original Superman on the INSIDE of a book, and don’t refer to him on the outside, it’s hard to argue that you used Superman “in trade.” Nobody would know Superman is there until buying the book (or reading it at a library, in which case it wouldn’t be in trade anyway).

  • http://adamgoldstein.com Adam Goldstein

    Not exactly true–Superman made his first apperance in Action Comics #1 in 1938, but daily strips started in 1933. Not that it makes a huge difference, as it was published in 1939. For works with such a publication date, there was a 28-year copyright term with a 67-year renewal term. Access to the renewal term, however, depending on registration at the time. Not all of the strips/drawings were correctly registered, or registered at all; not all of those that were correctly registered were renewed. Some of the original cartoons are in the public domain for the same reason.

    Is there any reason to believe you would not be sued by Disney? No, no reason to believe that at all. In fact, you probably would be sued by D.C. and Disney. People sue all the time when they’re in the wrong, particularly copyright holders. As long as you’ve got a reasonably copyright-literate judge (hopefully not one in the 9th Circuit), you’d win as far as using the original Superman goes. (But remember, the original Superman is significantly different than the modern one . . .) And it is exactly like the “After the Rain” situation, because in both cases the copyright holders would be full of baloney.

    Trademarks are trade marks–marks intended to designate origin in trade. When D.C. comics puts the Superman logo on a comic book cover, they want you to see Superman and think, “This book came from D.C. comics and I want to buy comics from them, because they write quality comic books.” This is in stark contrast from the purpose of a copyright, which is to be compensated for the reproduction/distribution/creation of derivatives (at least as far as print copyrights go) of a work. If you put a drawing of, or a story about, the original Superman on the INSIDE of a book, and don’t refer to him on the outside, it’s hard to argue that you used Superman “in trade.” Nobody would know Superman is there until buying the book (or reading it at a library, in which case it wouldn’t be in trade anyway).

  • Robert Claypool

    I believe we would be a lot better off if the only thing that trademarks deterred were other marks used to identify origin of good, and should only be granted when it doesn’t describe the good.

  • Parsons 210

    Two very specific comments that I’d love to get an expert opinion on to see if I understand this correctly

    1- Vis PETER PAN- the UK act talks about a compulsory license. Does this mean the hospital MUST give it if requested and paid for? IE, if the author of After the Rain wanted one (and I am not suggesting she needs one) would she HAVE to be given one? and as a subsidiary of this, Sony Pictures is releasing a $100 million dollar Peter Pan this Christmas. Now under your argument, nothing stops me from doing a $2 million dollar horror film version with the characters all over the world because of PD- but if I WANTED to pay for a license to do the horror film, would the hospital HAVE to grant it?
    2- vis Tarzan- leaving aside Disney for a second as a possible misread because it is Burroughs that has the Tarzan trademark- with them granting a TV license to WB network and the film rights to Warners even as we speak… but since the first 7 or so books are inarguably PD in the world (are they not? the first Tarzan was published in 1913 and Burroughs died in 1950) the question is if I wanted to say do a huge film in which I use the characters of Jane, Tarzan and Boy exactly as they are portrayed in book one, but call them Lord and Lady Greystoke (assuming no mark exists for that and I doubt there is) can Burroughs Estate stop me legally?

  • AA

    I just read your comments about Superman…here is a question for you… I want to send out an e-invitation for an event. The focus of the event is “The Hero Lies in You” am I able to use the traditional superman logo on the invitation? Or does that violate trademark law? I think the invitation will go out to 500 people. Just curious where I stand legally.

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