Infringing use of non-verbatim TV series dialog?

[orsmo]

I'm in North Carolina, in the US.

Would a commercially sold t-shirt design with text based on, but not a verbatim quote of, a short line from a currently running TV show be considered infringement of the copyright? The text names none of the primary characters of the series, but does contain an clearly identifiable phrase with the fictitious and clearly identifiable name of a minor character from the episode. No images from the series are used at all in the design.

 

[quincy]

It probably would not be an infringement on copyrighted material (copyright law does not protect short phrases) but it could possibly be an infringement on trademarked material.

It is impossible to say more than that, as the information you have provided is too vague.

 

[orsmo]

It is impossible to say more than that, as the information you have provided is too vague.

Well, I can be very specific then.

In the season 6 of the new Doctor Who television series from BBC, in the episode Closing Time, first broadcast on BBC One on September 24, 2011, there is the following dialog regarding a baby named Alfie, son of the character Craig:


The Doctor: So what did you call him? Will I blush?
Craig: No, we didn't call him "The Doctor."
The Doctor: No, I didn't think you would.
Craig: He's called Alfie.
Craig: What are you doing here anyway?
The Doctor: Yes, he likes that, Alfie. Though personally he prefers to be called Stormaggedon, Dark Lord of All.
Craig: Sorry, what?
The Doctor: [indicating the baby] That's what he calls himself.
Craig: How d'you know that?
The Doctor: I speak baby.
Craig: Of course you do.


I've designed a t-shirt (sized for infants) which has a graphic of a typical, "HELLO, my name is," name tag which the purchaser can customize with their child's name, followed by the phrase, "But I prefer to be called Stormageddon, Dark Lord of All."

Obviously this is very similar to, but not quite the same as the line of dialog.

As an additional point of note, USPTO's TESS does not list either Stormageddon, or Stormaggedon as a trademarked name, but of course this may mean nothing since the BBC likely would have registered any trademarks in the UK. I have also checked the UK Intellectual Property Office's trademark inquiry database and failed to find a match for either spelling.

 

[quincy]

There appears to be a Stormageddon/Dark Lord infant clothing line already.

And there are several Doctor Who-related products.

In the U.S., by the way, trademarks do not have to be registered to be rights-protected. A trademark gains its rights through the use of it in commerce and not through registration. Therefore, even if your searches of federal or state trademark registries do not turn up a name, that does not mean the name is not being used.

Because the particular phrase you wish to use is already in use and popular, I recommend you sit down with an attorney in your area for a complete review. I would not go ahead with your plan to market your tee-shirts until you have consulted with the attorney.

Good luck.

 

[orsmo]

There appears to be a Stormageddon/Dark Lord infant clothing line already.

Well, yes and no. There are already several fan produced items with the name, but there is not presently an official BBC produced product with it on it. As of yet, BBC Worldwide, the commercial entity responsible for monetizing BBC intellectual property does not appear to have taken action against any of them

And there are several Doctor Who-related products.

Absolutely. Anywhere images of the TARDIS, the Doctor Who logo, or images of the cast are used, I'm quite clear on, because they are all either registered trademarks, copyrighted, or similarly protected. And BBC Worldwide does a swift business licensing such things for use on products. What isn't clear is what the limits are on what they can reasonably claim either copyright or trademark on for this particular name/line of dialog.

In the U.S., by the way, trademarks do not have to be registered to be rights-protected. A trademark gains its rights through the use of it in commerce and not through registration. Therefore, even if your searches of federal or state trademark registries do not turn up a name, that does not mean the name is not being used.

Yes, but the level of protection for a registered trademark is substantially greater than for an unregistered one. This is in part why I included the information. They have for instance registered the Doctor Who logo, so use of that without paying licensing fees is right out. I'd similarly expect that use of the names of substantial and recurring characters with lines of dialog are likely to be well protected as well. This however is a partial line of dialog about the preferred mode of address of an infant appearing only in that episode and with no lines of dialog. Sure the line has become a popular internet meme, but does popular quoting of the line of dialog somehow strengthen its protection?

Because the particular phrase you wish to use is already in use and popular, I recommend you sit down with an attorney in your area for a complete review. I would not go ahead with your plan to market your tee-shirts until you have consulted with the attorney.

Perfectly reasonable advise as far as it goes. I'm merely trying to determine if there's a need to do so under the circumstances. To that end, I'm trying to understand the pertinent issues: Registered vs. un-registered for instance, verbatim vs clearly derivative but not identical, primary character vs. minor non-dialog bearing character only refered to in the dialog of other characters, relative popularity of the line, generic phrase which is also used in the series ("Bow ties are cool!") vs novel phrase used in the series once ("prefer to be called Stormageddon, Dark Lord of All"). What has bearing and what doesn't?

Near as I can tell at the moment, if I were to go forward with use of it unlicensed, BBC Worldwide could perhaps attempt to stop me from using it going forward on grounds of trademark infringement but not copyright infringement, but might be stymied by previous failure to protect other similar uses (those other clothing items you found) and the fact that the name from the line wasn't registered. It isn't clear if they could seek damages to recoup license fees for instance.

I'd avoid all this by simply contacting them to license use of the name if it were clear that they could reasonably prosecute a claim of infringement, but I'm so far not convinced. Even if they couldn't expect to win though, I expect they could make it prohibitively expensive to defend given we're talking about selling a relatively small number of t-shirts here.

 

[quincy]

It is clear that you have done a lot of research already, orsmo, and that is great. It is important to check out the legalities involved in a business venture first so that you are not surprised with a legal action filed against you or your business later.

. . . There are already several fan produced items with the name, but there is not presently an official BBC produced product with it on it. As of yet, BBC Worldwide, the commercial entity responsible for monetizing BBC intellectual property does not appear to have taken action against any of them. . .

Even if no legal action appears to have been taken yet against the marketers of the fan items (and I would not be so sure that that is the case ), there is no guarantee that legal action will not be taken against them in the future. I noticed that your tee shirt is already being displayed online - or at least one that is identical to what you have described here. You have decided to gamble?

. . .Anywhere images of the TARDIS, the Doctor Who logo, or images of the cast are used, I'm quite clear on, because they are all either registered trademarks, copyrighted, or similarly protected. And BBC Worldwide does a swift business licensing such things for use on products. What isn't clear is what the limits are on what they can reasonably claim either copyright or trademark on for this particular name/line of dialog.

The holder of the copyrights in the written material can claim rights on any part of their copyrighted material and trademarked material. The rights protection offered material can extend to particular names and lines of dialog. The dialog from Napoleon Dynamite, for example, spawned a lucrative business for the rights holders with the marketing of items that included key phrases from the film.

. . . but the level of protection for a registered trademark is substantially greater than for an unregistered one. . .

While that seems on its face to be a logical statement, it is not necessarily true. Registration provides a public notice of a trademark. Far more goes into the level of protection offered a trademark than registration of the mark.

. . . Sure the line has become a popular internet meme, but does popular quoting of the line of dialog somehow strengthen its protection?

Possibly. That is what happened with a lot of the dialog from The Simpson's and the popularity of certain phrases was capitalized on by the rights holders.

. . .Registered vs. un-registered for instance, verbatim vs clearly derivative but not identical, primary character vs. minor non-dialog bearing character only refered to in the dialog of other characters, relative popularity of the line, generic phrase which is also used in the series ("Bow ties are cool!") vs novel phrase used in the series once ("prefer to be called Stormageddon, Dark Lord of All"). What has bearing and what doesn't?

What has bearing is whatever the rights holder thinks has bearing. If a rights holder objects to another's use of some of his material, that is the material that becomes a problem for the user. That is what can lead to a cease and desist, a settlement demand, or an infringement suit.

Even if they couldn't expect to win though, I expect they could make it prohibitively expensive to defend given we're talking about selling a relatively small number of t-shirts here.

Bingo. You probably do not have as much money as they do.

Once again, I am going to suggest you sit down with an attorney in your area to review the legal risks of going ahead with the marketing of your tee shirts. I am also going to recommend, once again, that you do not market your tee shirts until you have had an opportunity to speak with the attorney. But the choice is yours.

Good luck.