By Shaun Miller – Partner, Marshalls & Dent Lawyers.
“The Catcher in the Rye” was written by American author J.D. Salinger in 1951.
The book has since become a huge critical and commercial success and is now considered to be a classic work of mid-20th century literature. The book’s main character, through whom the story is told, is one Holden Caulfield – a 16 year old newly minted private boarding school drop out who embarks on 4 days wandering around New York – a journey of self-discovery, reflections and interactions with an array of characters and New York landmarks including the Natural History Museum and Central Park.
The book is written with a fresh literary “look and feel” – with unique turns of phrase, descriptions and dialogue.
Fast forward to the present day…an American author living in Sweden named Fredrick Colting (writing under the name John David California) wrote a sequel of sorts to Salinger’s famous and celebrated novel, “Catcher in the Rye”. The sequel, called “60 Years Later: Coming Through the Rye” portrays a 76 year old Holden Caulfield (referred to as “Mr C”) – the famed protagonist of the original work – wandering the streets of New York after having escaped from a retirement home.
Salinger, who died earlier this year, had been living in recluse and was reportedly outraged that the book “60 Years Later: Coming through the Rye” brazenly stole, without Salinger’s permission, Salinger’s exact same character Holden Caulfield (along with a host of other characters from that original book) and placed them in the same location (New York) and used similar turns of phrase, descriptions and dialogue as in the original “Catcher in the Rye”.
Indeed, Salinger was so concerned that his rights had been trampled on that he brought a law suit against Fredrick Colting and his publisher alleging claims for Copyright Infringement and common law Unfair Competition. To review the trial decision Salinger v. Colting, 641 F. Supp. 2d 250 (S.D.N.Y. 2009) click here. For the appeal, Salinger v. Colting, 607 F.3d 68 (2d Cir. N.Y. 2010) click here.
Issues from the Case
The case raises a host of issues including:
- Whether or not characters in books, films or even music lyrics attract the protection of copyright law;
- If such characters do attract copyright protection, in what circumstances will the “fair use” exceptions to infringement of copyright – such as parody or criticism and review – apply;
- When is a work simply derivative of an original work (and therefore more likely to breach copyright) and when is a work transformative of that original work (and therefore less likely to be in breach);
- How does all this fit into the ideas/expression dichotomy that is the cornerstone of copyright law.
- How does the overriding imperative of Freedom of Expression – especially in the context of the US Constitution – affect these issues;
- Can an author or publisher use the misleading and deceptive conduct sections of Part V of the Trade Practices Act (and the mirror fair trading legislation in the States and Territories) or invoke the common law action of passing off to stop an unauthorised sequel.
- Can an author rely on his or her moral rights in their original work to prevent an unauthorised copy;
J.D. SALINGER v FREDRIK COLTING ET AL
But first, let’s turn to Salinger’s law suit against Fredrik Colting and his publisher regarding the contested unauthorised sequel “60 Years Later: Coming Through the Rye”.
What were the Basic Arguments of Each Side?
Both sides acknowledged and agreed that (a) Salinger holds a valid copyright in the book “The Catcher in the Rye” and (b) that Colting had access to that book.
So the first issue that the Judge Deborah A. Batts sought to determine was whether or not there is a substantial similarity between the two books.
Salinger’s lawyer submitted that there were two prongs to the substantial similarity question because Salinger was pleading two separate claims for copyright infringement. One is of the character Holden Caulfield. The second is of the book “The Catcher in the Rye”.
Substantial Similarity Claim 1: Copyright in the Character – Holden Caufield
As to the first claim, Salinger’s lawyer said it was beyond doubt that the character Mr C in “60 Years Later” is Holden Caulfield from “Catcher in the Rye”. The question was whether the iconic character Holden Caulfield was protectable under copyright law. It was submitted by Salinger’s lawyer that Holden Caulfield was a sufficiently delineated character to be protected under US copyright law. This was despite there being only a literary description of Holden Caulfield, as opposed to a graphic representation. This was also despite the character Holden Caulfield only appearing in one work.
Substantial Similarity Claim 2: Copyright Infringement of Other Elements of the Original Work
Regarding the second claim of substantial similarity between the two books themselves, Salinger’s lawyer argued that there was not merely substantial similarity by virtue of the taking of the character, but there were numerous other elements the “60 Years Later” copied including other characters, an attempt to imitate the narrative and the tone, the style and the settings (including Central Park, the cemetery and the Museum of Natural History). It was argued that the court should go beyond looking at the fragmented literal similarities and look at the total concept and feel of the two works.
Counterarguments – No Substantial Copying
Fredrik Colting’s lawyer argued that the character of Holden Caulfield as published initially is not sufficiently developed and delineated to attract copyright protection. In any event, Colting’s lawyer contended that even if Holden Caulfield attracted copyright protection (which he disputed) he did not believe there was the taking of sufficient amounts of Holden Caulfield to constitute copyright infringement.
As to the question of breach of copyright in “Catcher in the Rye” itself, Colting’s lawyer submitted that no expression was taken from that book and used in “60 Years Later” i.e. there was no direct copying of the text and that “60 Years Later” has 80 characters in it, only really three of which are from “Catcher in the Rye”. There are 25 characters in “Catcher in the Rye” that do not appear in “60 Years Later”. So there was no substantial similarity between the two books themselves.
Counterarguments – Fair Use
The next issue to be looked at was whether, if “60 Years Later” did substantially copy the character Holden Caulfield and the book “Catcher in the Rye, whether that use was “fair use”.
Colting’s lawyer asserted that “60 Years Later” was written as critical commentary on the relationship between J.D. Salinger and the character he created, namely Holden Caulfield. “60 Years Later” was an unauthorised fictional examination of the relationship between J.D Salinger and his most famous character – and that the cover of the book (both back and front) will make that clear.. It’s not a sequel.
Colting’s lawyer contended that “60 Years Later” is commentary on the original work because the original work has become an iconic representation of a disaffected youth who has certain characteristics, “60 Years Later” is an analysis of the creation, the creator of that work (i.e. Salinger) and what happens to that character many, many years later when we see the character having lived his whole life. You start to have more understanding about what the character was and what the original book was and it changes your reading of the original work. In short “60Years Later” is literary criticism in a fictional form.
Counterarguments – Dangers of Granting Injunctions in Copyright Cases
Colting’s council then raised the issue of the danger of granting an injunction in a copyright case – i.e. a prior restraint against the publication of a book before a full hearing, before a full exploration of all the issues - noting that the United States Supreme Court has expressed its concern about injunctions in copyright cases and that where there is a colourable fair use defence, that a remedy of an injunction is an extraordinary remedy. A prior restraint, it was argued, would raise very serious First Amendment issues.
In response to this, Salinger’s lawyer argued that “60 Years Later” was a sequel – pure and simple – and that the only question for the court to determine was whether that sequel was transformative or substantially similar to the original book. It was contended that “transformative” means: to take an original work and to somehow imbue it with new meaning, message or purpose, to provide something more for the public.
It was submitted that the only way that Colting had transformed the Holden Caulfield character was to make him 76 years old instead of 16 and the only way that Colting had transformed “Catcher in the Rye” was by adding some characters.
Furthermore, it was submitted that “60 Years Later” did not constitute literary criticism or parody.
In essence, Salinger’s lawyer asserted that this was a case about Salinger’s right not to have a sequel published, and not to authorise a derivative work. i.e. it was a case about Salinger’s right to keep “Catcher in the Rye” and Holden Caulfield frozen in time for the full term of copyright.
Trial Decision of Judge Deborah Batts in the United States District Court
Judge Deborah Batts granted Salinger the preliminary injunction essentially for the reasons that Salinger had argued for one.
In determining that there was a “substantial similarity” between the two books as well as between the character Holden Caulfield from “Catcher in the Rye” and the character Mr C from “60 Years Later” such that it was an unauthorised infringement of Salinger’s copyright, the court cited The Wind Done Gone case (Suntrust Bank v Houghton Mifflin Company 268 F. 3d 1257, 1266 (11th Circuit, 2001) where it was found that “substantial similarity” exists where “an average lay observer would recognise the alleged copy as having been appropriated fro the copyrighted work”. The court also cited the case of Castle Rock Entertainment v Carol Publishing Group 150 f. 3d 132, 137 (2nd Circuit, 1998) where it was found that under the “ordinary observer” test, two works are substantially similar where the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal of the two works as the same.
The District Court then addressed Colting and his publisher’s claim that their novel “60 Years Later” and its protagonist Mr C constitute fair use of Salinger’s copyrighted work.
The court noted that at the constitutional level, while the “Copyright Clause and the First Amendment [are] intuitively in conflict, [they] were drafted to work together to prevent censorship” such that “the balance between the First Amendment and copyright is preserved, in part, by the idea/expression dichotomy and the doctrine of fair use”.
In the United States, the doctrine of fair use was codified in section 107 of the 1976 Copyright Act, which called for a four-factor test:
- the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
The court weighed up these four factors in the aggregate and concluded that because Salinger had established a prima facie case of copyright infringement, irreparable harm from that infringement is presumed – so the court preliminarily enjoined Colting and his publisher from manufacturing, promoting, selling, or otherwise disseminating any copy of “60 Years Later” in or to the United States.
Appeal of Decision
Lawyers for Fredrik Colting and his distributor filed an appeal on 23 July 2009 with the Second Circuit Court of Appeals arguing that the injunction barring publication of Colting’s “60 Years Later: Coming Through the Rye” is an “impermissible prior restraint and an unwarranted extension” of copyright protection.
Where the case is up to
A three-judge panel of the US 2nd Circuit Court of Appeals heard arguments in early September 2009 against the injunction.
On 30 April 2010, the appeals court sent the case back to the lower court to determine whether Salinger’s trust will suffer irreparable harm from the publication of Colting’s book. But in its ruling, the appeals court made clear that it expected Salinger’s trust to prevail.
“Most of the matters relevant to Salinger’s likelihood of success on the merits are either undisputed or readily established in his favor,” the court ruled.
This all raises the question as to whether there is any basis under Australian copyright law or other laws, to allow an author of an original work of fiction to restrain such a book being re-written, for example, in a different time or place but with the same character or characters, or simply restrain a character being recycled in another work.
Where and how does the law balance the rights of the author to maintain control over their fictional characters and the rights of other writer’s to create new works using those characters and therefore contribute to the overall literary culture for the public to enjoy? Or if existing characters are cordoned off, will the so-called fan author be forced to devise their own characters, thereby enlarging the literary catalogue?
This also raises the question of the need to give authors the economic incentive to create their fictional works in the first place by according those authors copyright in their works – not only enabling the author to prevent the direct verbatim copying of the text of their works, but also the right to write a sequel or prequel, and the right to adapt the work into another medium such as a film.
The issue of character appropriation also highlights the ideas/expression dichotomy. While there is no copyright in broad-brush generic characters such as star-crossed lovers or evil villains, at what point (if any) – moving along the continuum – do characters become so well defined and originally crafted that they should attract copyright protection.
It is fair to say that under Australian copyright law, “characters” do not receive separate discrete copyright protection. A literary, non-graphic character can only be a literary work in itself, or a component of a literary work.
Nevertheless, it may be argued that if a new author takes a pre-existing character’s name, described appearance, personal traits and borrows (or steals) from the original character development, reviewing the character’s history and even refers to earlier important plot incidents which shaped the character – it may be argued that if all of those things appear in a sequel, then the author of that sequel has taken a “substantial part” of the original work by appropriating the character pursuant to section section 14 (1) (a) of the Australian Copyright Act.
As we know, when assessing whether a “substantial part” of an original work has been appropriated, courts in Australia will look at the quality or “value” of what has been taken much more so than the quantity of what has been taken.
The test that is often cited is Justice Peterson’s in University of London Press Ltd v University Tutorial “rough practical test” – namely, what is worth copying is prima facie worth protecting”.
But a character can never really be copied in the same way that copying text verbatim can be. A character can only be re-crafted by the appropriator, who must choose their own collection of words to regenerate the character.
A test which Australian courts would seem likely to adopt was outlined in Zeccola v Universal City Studios where Justice Gray said (at first instance) that the question of substantial similarity “ultimately comes down to the subjective impression of the judge who makes the comparison” between the original work and the appropriated work.
But the possible danger of that test is that judges then become literary and artistic critics, which is probably not what judges are employed to do!
Australian Copyright Law – Defences to Infringement
If it can be established that a literary work has been substantially reproduced (or communicated to the public) by the appropriation of a character, the next issue that arises is whether any defences are available to the infringer.
Under the Australian Copyright Act, possible defences would be fair dealing for the purpose of “criticism or review” and also possibly fair dealing for the purpose of “parody or satire”
Other Breaches of the Law
It also needs to be pointed out that unauthorised sequels may fall foul of other areas of the law.
These include “misleading and deceptive conduct” under section 52 of the Trade Practices Act 1974 (Cth) and its State-based equivalent Fair Trading Acts. Also, under section 53 (d) of the Trade Practices Act, a corporation (which would be the publisher) shall not represent that it has a sponsorship, approval or affiliation it does not have.
There is also the common law action of passing off.
It could also be argued that the unauthorised sequel breaches the moral rights of the original author.
Perhaps I’ll leave the last word to Holden Caulfield himself. While Holden Caulfield was trying to think of a profession that he would enjoy, he concluded that although “lawyers are alright” he would not want to be one because “even if you did go around saving guys’ lives…how would you know you weren’t being a phoney? The trouble is, you wouldn’t”.
That’s a wise observation indeed from a mere fictional character!!!
Shaun Miller is a Partner at Marshalls & Dent Lawyers. This article is based on a seminar paper that the author presented at a seminar on unauthorized sequels at the Intellectual Property Research Institute of Australia (IPRIA) at the University of Melbourne on 8 October 2009