Daleks burst into our terrestrial lives in 1963, in the famous TV series, Doctor Who. More than 40 years on, Daleks remain cult figures. There are websites devoted to all things Dalek – you can buy, borrow or build Daleks and participate in Dalek forums. A few weeks ago the Pontefract Museum created a 6 foot high liquorice Dalek as part of the town’s liquorice festival. If you’re particularly keen, there is a Dalek exhibition in November in Warwickshire, offering the chance to meet those infamous creatures. And if that doesn’t frighten you, there is a website in the UK warning humans to get out before the Daleks are released from copyright restraints and able to take over the world!
Joking aside, all things extra-terrestrial have been big news of late, in the world of intellectual property law. The courts have had to delve deep into the mysterious world of the Daleks and also that of the Star Trek storm troopers, in two separate copyright battles between two very different life forms.
Rangerscopes to the ready…
The BBC recently exterminated the copyright claim brought against it over its 2002 publication, ‘The Dalek Survival Guide’. As many readers will know, Terry Nation created the Daleks in 1963, when they appeared in Doctor Who for the very first time. Terry
Nation did not stop with the TV series. He wrote a series of books in which he created an entire folklore for the Daleks, with planets (Skaro), people (the Thais) and sci-fi equipment which may now seem clumsy but which captured the imagination of thousands: the Perceptor, the Rangerscope, the Vibrascope and so on.
In 2002 the BBC published The Dalek Survival Guide. The authors of the BBC book acknowledged that they had made reference to various books written by Terry Nation, including the Dalek Pocket Book. The BBC also had the benefit of contracts, referred to as ‘gentlemen’s agreements’, between it and the producers of the Terry Nation books, JHP Limited, and its predecessor company (the Producer), about the BBC’s right to exploit the Daleks. The BBC argued that it was entitled to use the Dalek material and that to do so was not in beach of the Producer’s copyright.
However, the Producer saw things very differently. The Producer brought a claim for copyright infringement against the BBC. Like the Dalek city created by Terry Nation and which was powered by static electricity, copyright lawyers could feel the friction in the air! The case came before Mr Justice Norris in the English High Court and an intricate fight over the nuances of copyright law ensued.
Copy right → copyright
Time now for the boring bit: an explanation of the legal right which is copyright. Copyright is actually a very straightforward concept. Think about it this way: ‘copy’ ‘right’; because the right to copy is what copyright is all about. Copyright is a property right. It comes about in relation to an original literary work. It involves the skill and labour of a person (the author) who creates the work without copying the works of others. The author owns the right to copy the literary work. The author can pass the right to copy on to other people, either by way of an assignment of the copyright or by way of a licence.
An assignment of copyright is a transfer of the rights to copy. A licence is a permission to copy. A licence can be exclusive – so that only the licence holder can exercise the rights of a copyright holder – or there can be several licences granted in relation to a copyright work. If you copy copyright material without an assignment or licence, then unless you fall within the statutory exceptions (in Guernsey set out in the Copyright (Bailiwick of Guernsey) Ordinance, 2005), you are probably breaching the rights of the copyright owner. The copyright owner has various options which he could exercise against you to stop you from using the copyright material. These include infringement for copyright and a claim for damages, including payment of any profits you have received from using any copyright material.
Back now to the more interesting topic of the Daleks. The Producer had sued the BBC for infringement of copyright, arguing that the BBC had no right or permission to use the Dalek material. The BBC triumphed, exterminating the Producer’s arguments with ease.
Permission to exterminate
The judge held that the evidence showed that the BBC had published in the belief that it had the permission of Terry Nation’s estate (in effect, the BBC had a licence). Further, even if he hadn’t held that the BBC had permission to use the copyright material, the judge said that he would also have upheld the BBC’s defence based on one of the statutory exceptions, namely that the copying was not a substantial reproduction of the original work. This involved the judge in a detailed examination of the material in the BBC guide, as compared to the Dalek books published by the Producer. The judge decided that what had been used was not a substantial part of those books either in terms of quantity or quality.
So for all these reasons, the judge held that there hadn’t been copying by the BBC, but even if there had been, the copying was not of a substantial part.
Storm trooping the High Court
Enough of the exterminators! Time for the second cosmic battle of the day, which involves those rather fetching storm troopers seen on so many Star Wars shows of the 70s. Passers-by at the High Court in England could have been forgiven for wondering what on earth (or whichever Star Wars planet takes your fancy) was going on in April this year, as a row of life-size storm trooper models were brought into the High Court.
A British prop designer had been sued by George Lucas’ Lucasfilm Limited over the rights to the moulded white storm trooper uniforms from the Star Wars films. Lucasfilm was trying to consolidate his control over the Star Wars universe by suing Andrew Ainsworth over the sale by Mr Ainsworth of replica costumes to fans. Lucasfilm had won a copyright battle in the US in which it obtained a million dollar judgment against Mr Ainsworth, which it then sought to have enforced in the UK.
In an interesting judgment Mr Justice Mann allowed both sides to win a little. He concluded that Mr Ainsworth had breached Lucasfilm’s US copyright and trade mark rights but refused to enforce the US judgment against Mr Ainsworth in the UK for jurisdictional reasons. He also found that the UK copyright had expired. For his part, Mr Ainsworth’s counterclaim for US$24 million based on a share of the merchandising revenue from the Star Wars films also failed.
The scene in the courtroom must have been bizarre, as a full height helmeted warrior of the evil Galactic empire took centre stage amongst the black robed and be-wigged lawyers. Perhaps the further hearings will be more mundane, as we wait to see what will happen at the damages hearing later this year.
Protecting your copyright in a virtual world
These two cases centre around iconic characters of the 20th century and remind us that copyright isn’t some airy fairy notion but a real, substantive right which companies will spend millions protecting and enforcing. We could throw many more popular names into the discussion, all of whom have had similar issues – remember the battle over A Whiter Shade of Pale? On a broader field, we are seeing the law of breach of confidence expanding so that children of celebrities can take action in respect of photographs published of them.
Intellectual property (IP) can be extremely valuable and it is essential that business ensure that their IP is properly protected. For example, have you got a copyright notice on your website? Going beyond copyright, when did you last check on the trade marks registry to see if anyone has registered a similar or confusing trade mark to yours? When did you last do a search of domain names (website addresses) to see whether anyone has used a derivative of your business name/product. When did you last check the Yellow Pages to see if someone has set up in business under a name which is very similar to yours? In the IP world it is essential to act promptly in respect of any issues discovered. An application to the courts for emergency orders is unlikely to be successful if you have not come to the courts very soon after the issue has come to your attention.
Daleks and storm troopers – whatever next? Whatever it may be, may the force be with you…
This article originally appeared in the October/November issue of Business Active.