Claim by Tolkien estate vs. fictional work including J.R.R. Tolkien as a character: The work of Sauron?

By Professor Jay Dougherty

Recently there have been reports that the Tolkien estate has fired off cease and desist correspondence to Steve Hillard, the Texas-residing author of a self-published book called Mirkwood. Mirkwood is apparently a fictional work, perhaps Tolkienesque, in which J.R.R. Tolkien is a character. It appears that the gist of the assertions (which are reportedly asking that the book be enjoined and destroyed) is that it is an unauthorized commercial exploitation of Tolkien's name and likeness; in other words, a violation of his rights of publicity. This claim seems extremely weak, and it's surprising that it would even be asserted.

First, the decisional law and many statutes have pretty clearly established that one doesn't have a property right in his or her life story. The same can be said as to fictional works including a "real" person as a character, at least if they are not held out as being true (and even the small line of cases drawing that line are questionable). Some plaintiffs have argued that a work that has nothing to do with the person whose persona is used becomes a "commercial exploitation" of that persona. But books, films, songs, works of art, etc. are not the same as T-shirts and coffee cups. They are works of expression--speech protected under the Constitution. (A football videogame is currently being challenged, in part on an assertion that it is just a product, not "speech." See my colleague Jennifer Rothman's recent post about oral argument in that case.) Courts in different jurisdictions have used various approaches to address tension between the relatively new right to control commercial uses of persona that are not false endorsements. Most of those approaches should favor almost any expressive use that is not an advertisement pure and simple, although one of them---the most antagonistic to freedom of expression---looks at the elusive "primary intent" of the expressive defendant. The "Mirkwood" book doesn't appear to be being held out as true, and appears to be highly expressive and "transformative" (one of the tests applied in this context). The Tolkien estate should lose on that basis.

But their claim is weak for at least two other reasons. First, many states' laws, especially covering a right of publicity after the death of the person portrayed, expressly exclude from liability speech works such as books or films. In fact, if the estate were to assert the application of Texas law to this dispute, that law has such an exclusion: "A person may use a deceased individual's name, voice, signature, or likeness in: (1) a play, book, film..." Texas Property Code Section 26.012. But the dispute may not even have to reach that clear defense. The majority rule as to whether the right of publicity survives death is to look to the law of the state of domicile at the time of death of the celebrity. Mr. Tolkien lived in England when he passed away in 1973 (long before the descendible right of publicity was officially recognized in most states). England does not recognize a right of publicity, let alone a descendible one that survives death. See, e.g., Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir., 2002) (Princess Diana domiciled in England at time of death--no right of publicity claim under California deceased celebrity statute) (note that decision also affirmed a $2 million+ award of attorneys' fees to the defendant). Hence, a Texas court, if this dispute were to get that far, should toss this claim out at an early stage on a similar basis, too.

We all love Tolkien and his imaginative books. I loved the books and the films, and can't wait for the new The Hobbit films, in production now. I happily pay for them, and will continue to do so. He was a genius, and his heirs deserve to benefit from that. But he is also iconic and forever intertwined with certain types of fantasy literature. That he is now a character is such a work should be celebrated--not threatened with Sauronian attacks and destruction!