Can He Just Do That? Comic Book Author’s Statement Attempts to Release “Fables” Into the Public Domain
Last year, legendary comic book author Bill Willingham published a press release on his Substack that stated: “As of now, 15 September 2023, the comic book property called Fables, including all related Fables spin-offs and characters, is now in the public domain.”[1] Willingham’s publisher is a little indie outlet called DC Comics.[2] The two parties have worked together on the comic book series since the first Fable books were released back in 2002.[3] DC immediately hit back with a statement of its own, contesting Willingham’s actions and stating its intention to defend what the company sees as its stake in the intellectual property at issue. [4]
In response, Willingham published a blog post that clarified his intentions behind the original statement. He seemingly recognized the existence of some rights controlled by DC, saying “I still can’t publish Fables comics through anyone but [DC Comics]. I still can’t authorize a Fables movie through anyone but them. Nor can I license Fables toys nor lunchboxes, nor anything else. And they still have to pay me for the books they publish.”[5] However, Willingham unambiguously asserted in a later statement that he owns “100% of Fables” and that now “every man, woman, and child in the world, along with anyone who’s ever born until the end of time, also owns 100% of Fables.”[6]
No copy of the agreement between Willingham and DC Comics has surfaced yet, and Willingham seems unwilling to litigate those issues anyway.[7] So stipulating the existence of some kind of publishing and licensing contract between the two parties, what does Willingham’s statement do, from a legal perspective?
The first question to ask is whether a valid transfer of copyright can even be executed by this kind of public statement. Federal law dictates two requirements for an effective transfer of copyright: (1) that the transfer be in writing, and (2) that the writing be signed by the rights holder, or the holder’s duly authorized agent.[8] The statutory language does not impose any specific requirements on the writing in terms of form or language; it need only reflect the will of the rights holder to execute a transfer.[9]
In most cases, the law considers ambiguity. But here, it would be difficult to argue that Willingham expressed anything other than an intent to transfer his copyright into the public domain, with his post stating that “the comic book property called Fables, including all related Fables spin-offs and characters, is now in the public domain.”[10] It should go without saying that the transfer is expressed “in writing” through his statement.
This leaves only the question then of whether Willingham “signed” the transfer. While it might seem unusual to consider a blog post a binding contract of sorts, in 2000 the United States passed the Electronic Signatures in Global and National Commerce Act (“E-Sign Act”).[11] Amongst other things, the E-Sign Act backstopped the general validity of “electronic records and signatures for transactions in or affecting interstate or foreign commerce.”[12] The E-Sign Act defines an electronic signature as “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.”[13]
Willingham seems to manifest his intent to adopt the statement clearly, despite not using a “sign” in the traditional sense. His name appears four times in the statement itself.[14] He publishes the post under his own name.[15] He explicitly identifies the statement as “By Bill Willingham” at the top of the document.[16] He invites further inquiry by providing his email address at the bottom.[17] Finally, from a practical perspective, any litigation challenging the validity of these indicia as statements of intent would likely come from Willingham himself. This seems unlikely given the context of the multiple public statements of his intent on his blog, as well as postings to other social media.[18]
So, if this statement facially manifests a legal transfer of copyright into the public domain of “Fables,” what could that transfer mean? Again, without being privy to the contract terms between DC and Willingham, we are left with exploring the public record. Unfortunately, the record provides some answers, but also some additional questions. A search of the copyright records reveals that both Willingham and DC Comics are listed as authors, and copyright claimants on nearly every entry in the Fables series.[19] Willingham for the text of the books, and DC Comics as the author of the art (produced by DC’s work for hire artists).[20]
A quick aside on the difference between an “author” and a “claimant.” “Author” is a designation that exists within the Constitution, and under that august document the term has unique importance: only an author can claim initial copyright protection for a work.[21] The Supreme Court has further expanded the identity of the author to comprise “he to whom anything owes its origin,”[22] and has directed that the term be interpreted with the “reach necessary to reflect the broad scope of constitutional principles.”[23] In short, the author is the person who creates the work and to whom initial copyright vests.
“Claimant” is a statutory term deployed mainly in the context of the Copyright Office’s registration procedures, but it has important legal significance. According to the Code of Federal Regulations, a claimant is either the author of a work, or an individual or organization that has “obtained ownership of all rights under the copyright initially belonging to the author.”[24] This means that anyone listed as a claimant could have control of the copyright in a work.
Based on the above, it should start to become apparent that the designation of claimant on these copyright registrations does not provide specific insight into ownership, especially when both claimants are also authors; as authors are generally always listed as claimants, whether they presently control the rights to the work or not.[25] As a result, two possible ownership scenarios exist: either Willingham controls an undivided share of the rights to the Fable works as a co-author with DC, or Willingham is an author/claimant with no present ownership of the copyright, and DC controls the rights in full.
It’s worth noting that on registrations beginning with Fables Issue #75, DC’s claimant status is listed with notation that it is a claimant by virtue of a transfer.[26] This designation is used to indicate that the claimant is a non-author owner of all rights of the copyright.[27] These notations would seem to indicate that at least as of the publication of those issues, DC is the sole copyright holder. Of course, as a matter of law, Willingham can only direct those rights that he has control over, in the same way you can’t sell your neighbor’s car without their permission.[28]
If Willingham and DC Comics are co-owners as well as co-authors of Fables, for at least some large percentage of the published works based on the property, this would present a very interesting proposition with regards to the effects of Willingham’s statements. Generally, individual joint authors are permitted to use or license the copyright in their work independent of the desires of other authors.[29] However, they are required to account for any profits derived from their exploitation of the copyright and cannot seek to exclude licensees of other authors from exploiting their granted licenses.[30]
Considering that pushing a work into the public domain has a (most likely) negative effect on profits and that a public domain work bars no one from accessing it, it seems possible, in theory, for Willingham to put his work into the public domain. However, such an action could not be done directly through a transfer or assignment of the work to the public domain, because the joint author would not individually possess the entire set of rights to be transferred, only an undivided share of those rights.[31]
Of course, if Willingham really does own “100% of Fables” as he claims in his statement, then he has every right to transfer it into the public domain. But even if he doesn’t, is there another way, a legally valid way a court could interpret and execute on Willingham’s clearly expressed intent, even if the statements are legally imprecise?
This would be a fairly unsatisfying post if the answer was “no,” so, happily, the answer is a resounding “maybe!” Again, operating under the assumption that Willingham’s ownership with DC is as traditional joint authors, at least for those works whose records do not designate a transfer of copyright, Willingham could be seen by his statement to be granting a non-exclusive license in perpetuity in “Fables” to, as he puts it, “every man, woman, and child in the world, along with anyone who’s ever born until the end of time.”[32] Such a license would effectively place the work into the public domain, as everyone in the world would be licensees with an unrestricted right to use and create around it. This arrangement also could not, by its very nature, exclude anyone whom DC Comics had previously licensed to use the work, thereby avoiding running afoul of the requirements for joint author/owners.
Regardless of the outcome for Willingham, it’s worth noting that these types of grant attempts are very rare. While a comprehensive search of American jurisprudence on the topic of preemptive grants of previously copyrighted works into the public domain is outside the scope of this piece, the author notes that in his research he found only one other case dealing with a rights holder’s desire to preemptively transfer their rights to the public at large.[33] That case was decided more on the mechanisms of copyright notice and publication as controlled by the 1909 Copyright Act, but the Second Circuit took substantial space in its decision to acknowledge that in testimony at the trial court, the artist had explicitly “communicated her authorization to publish [the song], without placing any restrictions on that authorization.”[34] Doris Plenn, the artist, had communicated that desire to no less an audience than legendary folk singer Pete Seeger, whose subsequent recording and release of her song became the subject of the litigation.
In that case, Sanga Music, the opinion concluded by finding that “[w]here the publication was authorized in a manner that manifested intent to put the work into the public domain, there is no unfairness in having the publication accomplish what the author authorized.”[35] While Willingham may not be attempting to publish his works directly into the public domain as the artist in Sanga Music was, there is a path for a court of law to grant his public statements a similar effect.
[1] Bill Willingham, Willingham Sends Fables Into the Public Domain, These Foolish Games (September 14, 2023), https://billwillingham.substack.com/p/willingham-sends-fables-into-the.
[2] Press Release, DC, Fables Returns! (June 10, 2021), https://www.dc.com/blog/2021/06/10/fables-returns.
[3] Everything You Need to Know About Fables, DC Comics (May 17, 2023), https://www.dc.com/blog/2022/05/17/everything-you-need-to-know-about-fables.
[4] Graeme McMillan, Fables: DC says that it will "take such action as DC deems necessary" to protect ownership of the fantasy series, Popverse (September 15, 2023), https://www.thepopverse.com/fables-dc-comics-statement-public-domain-ownership.
[5] Willingham, supra note 1.
[6] Bill Willingham, More About Fables in the Public Domain (September 14, 2023), https://billwillingham.substack.com/p/more-about-fables-in-the-public-domain.
[7] Id. (“I can’t afford to sue DC, to force them to live up to the letter and the spirit of our long-time agreements; since even winning such a suit would take ridiculous amounts of money out of my pocket and years out of my life.”)
[8] 17 USC § 204(a)
[9] Effects Assocs. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990); accord 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 10.03[A][2] at 10-37.
[10] Willingham, supra note 1.
[11] FDIC Consumer Compliance Examination Manual, FDIC (January 2014), https://www.fdic.gov/resources/supervision-and-examinations/consumer-compliance-examination-manual/documents/10/x-3-1.pdf; 15 U.S.C. § 7001.
[12] Id.
[13] 15 U.S.C. § 7006.
[14] Willingham supra note 1.
[15] Id.
[16] Id.
[17] Id.
[18] See e.g., Bill Willingham (@BillWillingham), Twitter (Sept. 14, 2023 2:04 PM), https://twitter.com/BillWillingham/status/1702428205721039161.
[19] See e.g., FABLES. [Published: 2008-02-27. Issue: no. 70, April 2008], Registration No. TX0007094627; FABLES., Registration No. TX0007175394; FABLES #105, July 2011, Registration No. TX0007381770.
[20] Id.
[21] U.S. Const. art. I, § 8; see 1 Nimmer on Copyright § 1.06.
[22] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884).
[23] Goldstein v. California, 412 U.S. 546, 561 (1973).
[24] 37 CFR § 202.3(a)(3) (emphasis added).
[25] Standard Application Help: Claimants, Copyright.gov (last visited Oct. 17, 2023), https://www.copyright.gov/eco/help-claimant.html.
[26] See e.g., [Published: 2008-09-03. Issue: no. 75, September 2008], Registration No. TX0007039400; FABLES. [Published: 2008-09-24. Issue: no. 76, November 2008] Registration No. TX0006875151.
[27] Copyright.gov, supra note 25 (explaining that claimants that are not authors should indicate on the registration that they have acquired the copyrights by transfer or inheritance).
[28] See e.g., State Contracting & Eng'g Corp. v. Florida, 258 F.3d 1329 (Fed. Cir. 2001) (Private subcontractors employed by Florida potentially liable for patent infringement because while Florida had the right to use the patented device, it did not have the right to sublicense that use to its subcontractors.).
[29] Ashton-Tate Corp. v. Ross, 916 F.2d 516, 522 (9th Cir. 1990).
[30] Id.
[31] Pye v. Mitchell, 574 F.2d 476, 480 (9th Cir. 1978).
[32] Willingham, supra note 6.
[33] Sanga Music, Inc. v. EMI Blackwood Music, Inc., 55 F.3d 756 (2d Cir. 1995) (Rights holder purchased artist’s catalog and attempted to bring an infringement action against defendant who had released a record containing a song the artist had expressly stated they intended to be placed in the public domain.).
[34] Id. at 759.
[35] Id. at 761.