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Legal Eagle

Copyright

Q: Cease and Desist despite acknowledgement

I wrote a sequel to a well-known work, having first corresponded with the author of the original (now dead). My play confirms the debt in its title and contains an acknowledgement. However, the author's New York-based estate has claimed infringement of copyright and issued a 'cease and desist' threat. What can I do?

A: There are two basic principles of copyright law which may be helpful to you in the circumstances you describe and at least the first of these, if not both, is common to both English and American law. The first is that there is no copyright in an idea or concept, as distinct from the manner in which that idea or concept is expressed. The second is that copying will only be actionable if it relates to a "substantial" part of the original work, as to which the test of substantiality is not one of quantity but rather of importance in the context of the work as a whole.

In the USA the first of these principles is extended and given statutory validity by a section of the United States Copyright Act 1976, which provides that "in no case does copyright protection... extend to any idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work".

Thus, there is no copyright in the idea of a secret service agent, whose boss and quartermaster are both known by a single letter of the alphabet, who is licensed to kill and who is in the habit of engaging in sexually charged repartee with his boss' PA but if you were to call these characters 'James Bond', 'M', 'Q' and 'Moneypenny', you would doubtless be regarded as infringing the copyright of the Ian Fleming Estate. Rightly so, although the borderline is not always easy to determine and may be largely dependent on the subjective view of whatever tribunal is called on to adjudicate the matter.

A mere acknowledgment of indebtedness to the author of the original work will be no excuse but if all you have copied is an idea or concept, then an acknowledgement that your new work is 'inspired by' the original can do no harm and may possibly be helpful to show you are not seeking to fly under false colours but believe yourself to be within the borderline of what is permissible. Technically, however, under English law, an acknowledgement is only necessary and effective as a prerequisite of a defence of fair dealing for the purpose of criticism or review or reporting current events.

Applying the above principles to your case, I would first want to read both works in order to determine precisely what it is that you have copied and whether it can easily be changed sufficiently to avoid, or at least significantly reduce the risk of a finding of infringement of copyright, whilst not impairing the integrity of your work. Also bear in mind that the description of your work as a 'sequel' implies that there has been no copying of action or dialogue.

I would also want to check with a New York lawyer to what extent, if at all, the law of New York may differ from English law in relation to the problem, since you may be sued in the USA, with whom the UK has reciprocal arrangements for enforcement of judgments. In any event, by International Copyright Convention, each state will afford to foreigners the same legal protection as it would to its own citizens.

Intriguingly, you say you corresponded about the matter with the original author when he was alive but you do not say to what effect. I would therefore want to study that correspondence in order to see if it might be possible to support a claim that the late author gave you an express or implied licence to use his material in your sequel.

In the light of the above, you appear to be faced with the following options, some of which may be used together simultaneously, namely: (1) cease and desist as demanded; (2) maintain that you have an express or implied licence by the late author (if the facts support it); (3) fight the opposition in reliance on the copyright principles, which I have described; (4) change your work to bring it within the bounds of what is permissible and (5) try "without prejudice" to negotiate terms for a licence to copy the offending material, with due acknowledgement to the original.

First published September 29th 2005