Wednesday, April 16, 2008

The Dalek Chronicles

U.S. audiences may not be familiar with the "Dr Who" series, which first appeared from 1963 to 1989, and was relaunched in 2005. Dr. Who travels in his space and time-ship (called the Tardis) which looks like a blue Police box from the outside. Dr. Who goes on explorations with friends, solves problems and does justice. The Daleks, introduced in the second Dr. Who series (and designed for the BBC by Raymond Cusick), are said by wikipedia to have captured the spirit of British cultural identity with their catch phrases; one such catch phrase, lost on U.S. audiences, is "Hiding behind the sofa whenever the Daleks appear." Wikipedia also gives some further background (and sound samples too):

A Dalek (pronunciation "DAH-leck", IPA: /ˈdɑːlək/) is a member of a fictional extraterrestrial race of mutants from the British science fiction television series Doctor Who. Daleks are grotesque mutated organisms from the planet Skaro, integrated within a tank-like mechanical casing. The resulting creatures are a powerful race bent on universal conquest and domination, utterly without pity, compassion or remorse (as all of their emotions were removed except hate).They are also, collectively, the greatest alien adversaries of the Time Lord known as the Doctor. Their most famous catchphrase is "EX-TER-MI-NATE!", with each syllable individually screeched in a frantic electronic voice.

As Mr. Justice Norris observes, the Daleks "were some of the most engaging and enduring creations of the fertile mind of the later Terry Nation, though the conceit he used was that he simply learned of their existence through his discovery of 'The Dalek Chronicles", which he translated. More was learned of their origins and mode of existence as they featured in further episodes of 'Dr. Who', and there grew up around them a separate narrative and lore which developed not only through television, but also through novelisations, comic strips, audio plays and the publication of books and "annuals."

Mr. Nation died in 1997. During his life, he entered into various agreements in 1964 and 1965 relating to various Dalek books and characters with Souvenir, a company owned by Paul Fishman, whose father had been an acquaintance of Mr. Nation's. After Mr. Nation's death, Mr. Fishman conceived of various Dalek projects. Mr. Fishman has another company called JHP, which supposedly suceeded to Souvenir's rights and it is the plaintiff in the case. In 2002, the BBC published a book called "The Dalek Survival Guide," available here on amazon.com UK for 7 pounds, which is probably US$99 at this point. Mr. Fishman alleged that this book infringed rights formerly owned by Souvenir and now allegedly owned by JHP.

Mr. Justice Norris' opinion involved a very close reading of the various agreements to see what was conveyed, and it is worth noting here a difference between UK and US law. Under UK law, exclusive licensees must join the original copyright owner (CDPA section 102(1)), something not true under U.S. law, but which explains why the Estate was a named party (but only in name). JHP had originally alleged infringement of text and graphic images, but at trial limited to claim to text, but this still left the question of what text was assigned to Souvenir. Mr. Justice Norris limited the agreement to the particular text subject to the agreement, holding: "I regard it as inherently improbable that Terry Nation should have thought of transferring the absolute property in the copyright of his proposed work at a time when he was actively involved in the creative development of the Daleks for further television scripts .... ." (para 13). In other words, plaintiff was "not the owner of the copyright in the text of 'The Dalek Book' but under the 1964 agreement was and is the holder of an exclusive license to publish it in book form." This is a distinction that, I believe means the copyright in plaintiff did not reach so far as the preparation of different works.

The rest of the opinion would also be baffling to U.S. lawyer: the honorable (or honourable) judge asks: "Now that JHP (as exclusive licensee of the right to publish [specified books] has commenced proceedings against [the] BBC[] in respect of infringements of that right, can [he] BBC[] avail itself as a matter of law of any defence which would have been available had the infringement proceedings been brought by the estate of Terry Nation (as owner of the copyright)?" (para 21) I confess to not understanding why this was discussed since no such suit had been brought, but the court held the BBC would have prevailed (para 26). And we are only halfway through the opinion, which then went off into considering an alternative claim of copying, "in case I am wrong on my primary ground."

In all, for U.S. readers, a difficult opinion, but the bottom line is that Dr. Who and the BBC are free to pursue justice in the entertainment forum, no doubt as Mr. Nation intended.

3 comments:

jeffdodd said...

A post on IPKat provides some background information on the relevant UK law. It explains some of the portions in the opinion that you mention as being baffling to US lawyers. Here is a link. http://ipkitten.blogspot.com/2008/04/estate-of-nation-vulnerable-to-terror.html
If nothing else, this case reminds us that the concept of "exclusivity" is elusive, especially if one is dealing with multiple jurisdictions.

Anonymous said...

In English law, a licence, even an exclusive licence, is treated just as a permission to use; but since 1957 exclusive licencees have the right to sue for infringement. As the licensee's rights derive from the copyright owner, it follows that the former can do no better against an infringer than the copyright owner would have; which means that an infringer can take whatever defence (or defense) he would have had against the owner. The owner is joined to protect him from double jeopardy if the copyright owner later decides himself to sue (and potentially recover another set of damages). Note that under UK law the licensee cannot sue the owner for infringement (only for breach of contract) since UK law considers that no owner can be sued for infringing his own right.
If you think that was complicated, read a 2007 decision from Canada, whose EL law has bits drawn from both the UK and the US. Not surprisingly, the court divided 3 ways on the question whether an exclusive licensee (a Kraft subsidiary) can prevent parallel imports of genuine Toblerone chocolate from Europe. A plurality held no, but for very different reasons. A full discussion of ELs in UK, US and Canada appears in Rothstein J's opinion: http://scc.lexum.umontreal.ca/en/2007/2007scc37/2007scc37.html
Enjoy.

William Patry said...

Thanks, Anon, in the U.S., we would also regard a non-exclusive license as an agreement not to sue