Disney's War Against the Counterculture

Why a decades-old copyright case matters now more than ever.

Bob Levin from the December 2004 issue

(Page 3 of 4)

Since visual representations of cartoon characters must be regarded as copyrightable, the Pirates were taking not a small portion of a larger whole but "the entire subject of the copyright." Tatum called the Pirates' First Amendment argument "nonsense." If their logic were followed, all copyright laws would be "utterly nullified." While they had every right to deliver whatever message they desired, they had no right "to use Mickey Mouse as the vehicle."

Judge Wollenberg took the matter under submission. "If he wasn't a fan of Disney's at the start," Kennedy says, "he was by the end. We may've driven him there by being so obnoxious and the work so profane. Jonathan Swift, he did not think we were."

The most troublesome question for Wollenberg was whether Congress' protection of "all copyrightable component parts" within a copyrighted work extended to cartoon characters. Disney had marshaled an impressive posse of funny-paper support for its argument that it did. Characters from Mutt and Jeff to Spark Plug (Barney Google's horse) to Superman had had their copyrights protected in court decisions over the years. But an obscure 1954 decision by the U.S. Court of Appeals for the 9th Circuit (which includes California) cast doubt on the copyrightability of fictional characters divorced from stories. Warner Brothers Pictures v. Columbia Broadcasting System involved the rights to Sam Spade, which Dashiell Hammett had sold to CBS for a radio show. Since Warner Brothers had owned the rights to The Maltese Falcon, which featured Spade, it sued CBS, claiming ownership of the gumshoe.

The 9th Circuit held for the radio network. "The characters were vehicles for the story told," it said, "and the vehicles did not go with the sale of the story." Although the court did not explicitly rule all fictional characters uncopyrightable, the Pirates' argument that the decision pointed to that conclusion struck Wollenberg with "considerable force."

But he discovered "a narrow gap" in the decision's reasoning through which Disney could wiggle. The 9th Circuit had said a character could be copyrighted if it "really constitutes the story being told," and Wollenberg concluded that "the principal appeal [of Disney's books] to the primary audience of children for which they were intended lies with the characters and nothing else."

Thus, the characters were copyrightable even under Warner Brothers. The question now became whether the Pirates had taken too much for a fair use. The 1956 9th Circuit case Benny v. Loew's had declared that copying a "substantial part" of a prior work, even in parody, could be actionable. Wollenberg had already held characters to be the crux of Disney's work. And since O'Neill had admitted copying Mickey and his cohorts "exactly," a "substantial" taking was self-evident.

"Obliterating Copyright Protection"

Which left the First Amendment to protect the Pirates. Wollenberg brushed it aside. To apply it would "obliterate copyright protection" anytime anyone asserted their infringement conveyed an idea. Besides, Wollenberg let slip that he had "some difficulty in discovering the significant content of the ideas which the defendants are expressing." Wollenberg granted the preliminary injunction and ordered the Pirates to surrender all copies of the offending books and all material for making additional copies.

Gary Hallgren allowed judgment to be entered against him for $85,000. It was understood, without being memorialized in the official record, that as long as he abided by the other conditions, Disney would not attempt to collect. O'Neill says London and Richards were also supposed to settle. "It was my idea," he says, "and they weren't supposed to take the rap." Richards says he didn't settle because he still believed the Pigs to be part of a common heritage and he wanted to protect his rights to Zeke Wolf. He also felt a commitment to O'Neill. "I was a warrior," he says. "I had received great training, and in return I would stay in the battle. But it was a mistake."

Wollenberg had postponed the trial until August 11, 1975. On July 3 Disney lawyer Paul Laveroni made a motion for summary judgment, which Wollenberg granted. He permanently enjoined O'Neill, Richards, and London from infringing Disney's copyrights and trademarks, and ordered a hearing before a federal magistrate, Owen E. Woodruff Jr., to determine the amount of damages and attorneys' fees Disney should receive.

The U.S. Code gave courts two methods to assess damages for copyright infringements. The first, ordering the Pirates to turn over their profits to Disney and to reimburse Disney for its losses, would not work, Laveroni said, because the Pirates had made no profits and Disney could not measure its loss. The second method, applicable when either profit or loss is unknown, is to award damages of between $250 and $5,000 for each infringement. Accusing the Pirates of 38 infringements, Laveroni asked for $190,000, plus $27,292.50 for attorneys' fees to date, $1,500 for future work, and reimbursement of his firm's costs.

Kennedy's reply, on behalf of O'Neill and London--Michael Stepanian, Richards' lawyer, filed no opposing papers--asserted that the Pirates' unrebutted evidence showed their profits to be nil and that Disney had presented no evidence of any loss--neither a decline in sales nor a diminution of its public image. Disney, therefore, deserved only a nominal award. The argument didn't work. On March 5, 1976, O'Neill, London, and Richards were ordered to pay Disney the full amount Laveroni had requested. The Pirates appealed.

"Delivering the Shock of the Unexpected"

When Kennedy filed the Pirates' opening brief with the 9th Circuit, he asked the appeals court to overrule Benny's substantiality standard, on which Wollenberg had based his decision. Parodists had to be able to copy substantially, he argued, in order to deliver "the shock of the unexpected." He urged the court to adopt an approach advocated by UCLA law professor Melville Nimmer, author of the leading treatise Nimmer on Copyright, and assess whether the infringing work was apt to satisfy a potential customer's desire for the original. The Pirates' work was not going to replace Disney's.

And even if characters were a copyrightable part of a copyrighted work, Tom Steel, a new lawyer on O'Neill's team, argued, this did not mean they could not be copied. Every individual work bore only one copyright. This work should not then be "dissected into as many 'copyrightable component parts' as imaginative counsel can conjure up." If that were permitted, any couplet, sentence, phrase, or name could be the subject of an infringement claim.