Scrivener's Error: Warped Weft

Fan Fiction

originally posted January–May 2005

This essay has not been checked for link consistency.

  1. Introduction
  2. Ruling Out Fair Use
  3. Nonliteral Copying
    1. Ignorance Abounds
    2. Indirection
    3. Diluting the Essence
    4. You Libellous Dog, You!
    5. Undiluted Envy
  4. The End (Of the Beginning)


I. Introduction

Not so long ago, an eminent blawgger almost got himself in trouble by advocating some slash fiction involving destroying another author's character. Fortunately, he came to his senses after legal advice from more than one place. He quoted another law professor as saying:

The fan fiction would use enough of the Moorcock and Hamilton material—enough character attributes and allusions—to constitute "copying" for copyright purposes (even if the only things that they literally copy are the names).

The more I think about this problem, the more I think the right conclusion was reached for the wrong reason(s). Or at least neglecting what should be the dominant reason(s). I'm picking on the Perfesser just because he's so good-natured about the whole thing—and because his specific request would make a fabulous exam question (don't think I haven't kept a copy… and any student who is perspicacious enough to find this blawg entry probably deserves the slight advantage it would give him/her).

In any event, let's start with a couple of definitions. "Fan Fiction" is fiction written by fans (recalling that the word "fan" is an elision of "fanatic" is not out of place!) and set in the universe of their fanaticism. Some of these stories are mere "continuations" or "prequels" or whatever based very closely indeed upon the object of their desires, such as a story of Lord Greystoke's journey to Africa as a boy set just before the first Tarzan novel, or a story about Jabba the Hutt's successful attempt to cut himself out of the belly of that nasty beast on Tatooine and the vengeance he wreaks upon the entire Hutt family. Then there is the "Mary Sue" story and its (almost incestuously) close relatives, which give the writer an avatar with a central place in the story; all of those teenaged (and not so teenaged) girls who wrote themselves in as Captain Kirk's love interest know exactly what I'm talking about. We can't forget slash fiction, either; "traditionally," this involves explicit sexual relations, often of dubious biological possibility, between characters who are not otherwise "involved." One of the most notorious examples is a line of "Spock/McCoy" stories extending back into the 1960s; I suspect that there are three or four sociology dissertations lurking in just that line of stories! Of course, there are other varieties, too; but these are by far the most common.

Copyright concerns the right to control duplication of both exact original expression and derivative works based on previously existing exact original expression. It does not involve "ideas" per se. California law has a variety of "idea protection" particularly relevant to the entertainment industry, but it is based on common law principles better understood as analogous to unjust enrichment and breach of contract than to copyright. The leading case, and progenitor, is still Desny v. Wilder, although the case report is rather too sterile to really expose what is going on. If you're not already familiar with the way movies "work," I recommend reading Pierce O'Donnell's Fatal Subtraction. In any event, some things are so short or minimal that they cannot be copyrighted. Titles, for example, are explicitly excluded from copyright. Similarly, so would be character names; and invented place names; and other single characteristics.

The problem, at least in copyright law, is "allusions." A series of badly reasoned cases under the 1909 Act continues to dominate thinking. Many of them reached the "right" result despite the poor reasoning; but a lacuna in federal law may have contributed to the tortured reasoning that has made Tarzan, Sam Spade, and H.R. Puf'n'stuf dominant, in their inconsistent way, in "character copyrights." Although some of these violations clearly rise to the level of copyright infringement—for example, lifting an entire speech by a character—and leaving aside any other copyright defenses, we're instead left with a struggle under the fair use defense and the problems with parody. Hint: There is another legal theory, one that was essentially undeveloped during most of the tenure of the 1909 Act, that is a better fit for "improper allusions to a third party's work." But you'll have to wait for the next entry; unless, that is, you've been reading all along and can guess.

Tangent: Swingin' From a Vine Near Hollywood

Tarzan is losing his grip on the law of character use and infringement; that guy swinging around is now wearing blue-and-red tights, or at least he and his buddies from the same publisher. That's right—it's Marvel Entertainment.

A couple of years ago, we had Marvel Characters v. Simon, involving retroactive works for hire and control thereafter of characters created in those works, and Fox Entertainment v. Marvel Enterprises, involving a TV series bearing an uncomfortably close resemblance to Marvel's X-Men franchise. Now we have a "contract dispute" that implicates both of those matters: Lee v. Marvel Enterprises, No. 02–8945 (S.D.N.Y. Jan. 17, 2005) (Sweet, J.) (PDF, 113kb).

Stan Lee created a number of famous Marvel characters, most particularly Spider-Man. Judge Sweet describes the dispute this way:

The plaintiff Stan Lee ("Lee") has cross-moved for partial summary judgment declaring that he is entitled to 10% participation in profits derived by Marvel from television or movie productions, not limited by so-called "Hollywood Accounting," including film/television merchandising when the profits do not result from a fee for licensing.

Slip op. at 2. As noted throughout the opinion, Judge Sweet has difficulty believing that "profit" really means what Hollywood tradition says it does. In the end, he holds that the contract between Lee and Marvel means "profit" as real people would define the term, not as Hollywood might. On the other hand, he's really not too pleased by the disingenuousness of the lawyers (I bet the briefs make fascinating reading and are filled with either near-invective or supercilious condescension toward "learned counsel's error"):

Skilled counsel for both sides praise the clarity of the language of paragraph 4(f) to reach directly contrary results. What follows is an effort to clarify and determine the terms of the contractual language under the applicable principles of procedure and construction. This determination has the potential to affect substantially the financial fortunes of the parties.

Slip op. at 4–5. I'm sorry, guys, but your arguments that the language was "clear" border on the frivolous if it takes the judge thirty pages to declare otherwise.

In any event, what this represents more than anything else is unsuccessful lawyering at the time the agreement was drafted. The terms "profits" and "profit participation" have dictionary meanings that are distinct from the "technical" meanings that are used, inconsistently, in various parts of the entertainment industry. If the parties might have intended those technical meanings, they were obligated to include (or at least reference) them; otherwise, even a first-year law student knows that the judge will resort to Webster's. Of course, if lawyers would just get out of the habit of taking terms that have reasonably clear everyday meanings and redefining the hell out of them—in an all-too-often-successful attempt to deceive someone—this wouldn't be a problem, would it?

And that, in the end, is also one of the problems with fan fiction and the whole character/environment protection struggle. I do not see this primarily as a copyright issue. I see it primarily as a trademark issue. And, over the next few irregular entries, I'll back up and try to show why the line of cases that tries to apply copyright to allusions is inconsistent with advising creators on how to comport their conduct to the law. It's not that the theory is "wrong"; it's that it can only be applied post hoc, and therefore is logically incomplete.

Tangent: Caviar or Nine Lives?

The 22 January 2005 Guardian has a couple of pieces that touch on the author's role in marketing of books, and expose some of the industry's tricks for exploiting authors. A short item in "The Bookseller" notes that

Lavish dinners where retailers meet star authors are now an integral part of most book marketing campaigns. In theory the guests will be wooed and their positive impressions will filter through to support from shops; in practice such evenings can be hit and miss. Random House held the first big dinner of the year for Jane Fonda, whose autobiography My Life So Far is due in May. At the Mirabelle in London, Fonda was engaging company for the heads of Waterstone's, WH Smith, Amazon, Ottakar's, Borders and Tesco. She talked freely about her films, working with Vietnam veterans to shed the "Hanoi Jane" tag, and the lack of intimacy in her marriage to Ted Turner. Most promisingly, she pledged to work hard to sell the story of her "spiritual journey," with 10 days of signings and interviews on publication. The retailers fell in love, and pre-orders were quickly doubled.

Note that the only people buying on this basis were the bookstores, and they're only ordering returnable copies. Although this is certainly an important step—very, very few impulse buys, and probably less than a majority of not-planned-by-title buys by those looking for a book, are made without putting one's fingers on a physical copy of the book—it is not at all the same thing as actually selling the books.

As one reaches beyond the lavish publishers' parties that are restricted essentially to celebrities and those with previous bestsellers under their belts—that is, those least likely to need extensive publisher marketing support—one finds less happy circumstances. Robert McCrum notes that

[A] McEwan or an Ishiguro will devote almost as many months promoting his latest work as he spent writing it. This is the condition of the writer today, as itinerant as a medieval troubadour, with air miles. If, for example, you are fortunate enough to win a big prize — Booker, say, or Whitbread — you can easily spend as much as a year on the grey brick road of book promotion. This has absolutely nothing to do with good writing and almost certainly inhibits its free, mature expression.

Now, more than ever, the book-promotion machine is working against the interests of the writers it has been set up to promote. Now, as never before, the marketplace is devouring the hand, the arm and the head that feed it. Authors of all shapes and sizes have become either the dupes or accomplices of a publishing industry that is exploiting its writers as its unpaid representatives. A publishing house that sends an author to a 'book event' is selling books of course. It is also bolstering its place in a cut-throat market at virtually no cost. In the process, the odd, lonely business of putting one word in front of another in a small, white room gets neglected.

"Writing a Book Is One Thing…" (reparagraphed for clarity). Consider how other segments of the "entertainment industry" work. Sure, musicians tour in support of albums, recordings, etc.—and they usually get paid. Paid more than from the recordings for all but a select few. Actors who appear in support of a film are doing so on a contractual basis. Sport figures (coaches and athletes) get appearance money.

So, then, what makes publishing different? Is it that the artists really are starving, and therefore can't be trusted to behave properly in public? Is it something different? Is this author just reaching for cheap foreshadowing effects?

II. Ruling Out Fair Use

First, a minor correction: Recalling only the comment about blue balls, I incorrectly lumped the Perfesser's request in with slash fan fiction, rather than the semisubspecies snuff (involving death of that character, albeit often after sexual misadventures). My error—not that it makes any difference to the IP aspects!}

Before one goes into alternative theories to manage fan fiction, though, there's another beast that needs to be discounted: parody and fair use. Frankly, I think the Ninth Circuit has gotten this wrong. It is responsible for the two "anti-parody" decisions that remain the most cited justifications for finding parodic (or arguably parodic) works to be infringements of copyrights: the relatively recent Dr Seuss matter (No. 96–55619) and the notorious Air Pirates (581 F.2d 751 (1978)). Of these two, Air Pirates is probably no longer good law, even though it is frequently cited for restrictions on fan-fiction-style parodies. Air Pirates has a number of problems without getting into its questionable analysis of substance. First of all, it was decided under the 1909 Act, which treated fair use rather differently than does the 1978 Act. Second, the Supreme Court undercut a major part of the rationale actually stated in Air Pirates in Campbell (the case involving 2Live Crew, Roy Orbison, big hairy women, and one of the most insipid love songs in the oldies arsenal).

The real problem with the parody-as-fair-use doctrine is that it is, in practice, a post hoc rationalization for a particular derivative work. That seems to be the Ninth Circuit's difficulty in Dr Seuss: Although the opinion never comes right out and so states, the rhetoric of the opinion implies that the court just didn't believe the rationale offered for the particular work. Judge O'Scannlain described the situation like this:

These stanzas and the illustrations simply retell the Simpson tale. Although The Cat NOT in the Hat! does broadly mimic Dr. Seuss' characteristic style, it does not hold his style up to ridicule. The stanzas have "no critical bearing on the substance or style of" The Cat in the Hat, Katz and Wrinn merely use the Cat's stove-pipe hat, the narrator ("Dr. Juice), and the title (The Cat NOT in the Hat!) "to get attention" or maybe even "to avoid the drudgery in working up something fresh." While Simpson is depicted 13 times in the Cat's distinctively scrunched and somewhat shabby red and white stove-pipe hat, the substance and content of The Cat in the Hat is not conjured up by the focus on the Brown-Goldman murders or the O.J. Simpson trial. Because there is no effort to create a transformative work with "new expression, meaning, or message," the infringing work's commercial use further cuts against the fair use defense.

(citations and footnote omitted). What this actually reflects, more than anything else, is some poor statutory drafting and misunderstanding of Campbell. The statute is drafted poorly because it puts first the nonobjective factor ("purpose and character"), and actually partially repeats itself in the fourth factor (effect on market). This usually causes the market niche of a work to have dominating effect on fair use analysis, even though Campbell explicitly denies that analysis, see 510 U.S. at 584–85. More disturbingly, Judge O'Scannlain's rhetoric betrays that he just didn't find Katz and Wrinn's work funny, a subtextual problem specifically warned against in Campbell, see 510 U.S. at 582–83. Air Pirates holds up even less well under the Campbell analysis.

This is not to say that parodies are always (or, on the other hand, never) fair uses. Instead, though, a wise jurist will give much greater emphasis to the second and third factors, or at least analyze them first, due to the conflation of issues in the first and fourth factors. Too often, opinions on "parody" actually come down to perceptions of "how good" the parody was, regardless of judicial protests to the contrary. "Nature of the work" has come to mean "market category" more than it has "is this work standing alone in the universe, or is it related in some fashion to the source work for its own meaning?" Analyses of parodies that emphasize its commercial nature actually undermine the terms of § 107 by making one of its four factors almost a subset of another. Under the hoary old theory that statutes are to be interpreted to give independent effect to every provision, this is untenable.

Where does that get us with fan fiction, then? One can easily rationalize a lot of fan fiction as parody; one can stretch and rationalize even more as parody; but an awful lot of fan fiction is mere homage and pastiche. My point here is that the parody doctrine is not terribly helpful (and, frankly, should be revisited by the Supreme Court), particularly when the parody operates upon a work that does not itself stand alone. Keep in mind that most fan fiction is based upon serial works (serial, that is, in the literary sense, not the commercial sense). Even when the "second installment" has not yet been released—there was a substantial body of fan fiction created between Star Wars and The Empire Strikes Back—that doesn't change the initial object work's character as a serial work.

The Perfesser's note of another blogger's posting sort of requires another trip into the land of "Is it a parody or a floor covering?" that the Ninth Circuit (among others) has managed to screw up, no thanks to Justice Souter's law clerk or whoever drafted the particular language in 2Live Crew without much understanding of literary practices. In a sense, then, we're going out to the literary firing range for some target practice.

Unfortunately, this can be a hypertechnical exercise in hairsplitting. The term used by Sundries Shack was "mock," which I am afraid is both incorrect and imprecise. The critical thing to remember is that a parody doesn't have to be funny; "mock" implies a necessary humorous tinge. By the offered definition, Don Quixote would have been a proper "parody." As I read the case law, though, that's extremely dubious; the "creators" of Amadis of Gaul, Tirante the White, Palmerin of England might still have a cause of action against Cervantes, because his parody extends primarily to matters of style. The subject-matter in Don Quixote is far, far more serious than the fluffy (well, as fluffy as one gets when dealing with edged weapons) adventures of the medieval romanza as it descends from the chanson de geste. That makes Don Quixote far more parallel to The Cat NOT in the Hat, and would probably lead to much the same treatment by the Ninth Circuit. What this says about literary judgment in the legal profession is better left unsaid… but could probably be inferred after reading the opinions that appear under the names of all but a handful of judges.

To put it bluntly: Mockery isn't enough unless it extends beyond mere mockery of style or surface. Instead, to qualify as a protectable parody under the "target parody" doctrine, the mockery must extend to the underlying thematic material. The courts have not been nearly specific enough about this; but that conclusion is the only way to reconcile all of the opinions without throwing up one's hands and crying "For want of a circuit split, certiorari was lost." Just try figuring out why "Dr Juice"'s rather pointed look at the OJ trial is not fair use, but The Wind Done Gone (which has less literary merit!) is, without focusing on thematic materials. The less said about Lo's Diary the better!

You should have noticed by now that there's a word I've been carefully avoiding throughout this discussion; it is actually the most important word, in the literary sense, in the whole discussion; and, of course, legal doctrine says it's not fair game. Satire. In an incredibly ill-founded leap of logic that puts Bob Beamon's effort in Mexico City to shame, copyright law distinguishes parody from satire. Parody can be fair use; satire, however, is not. The trick then becomes distinguishing the two. That many literary scholars consider the two terms to be the opposite of how the courts have come to use them—that is, a parody essentially restricts itself to tone and surface characteristics, whereas a work so limited will fall outside of the "Dr Juice" definition—seems to have escaped much notice. Perhaps the saving grace is that a satiric work that falls close enough to a source to be infringing has at least a decent chance of also qualifying as a parody. However, satire should be fair use (if infringing at all), because the point of satire is a reexpression intended to comment (adversely) upon the original, which is the overarching purpose of the doctrine in the first place. Often, that original is thematic material, rather than particular works; Candide and The Crying of Lot 49 are good examples.

I realize that this seems rather far afield from fan fiction at the moment. Just trust me—it will all connect back up in the end.

III. Nonliteral Copying

Caveat: From here on, I'm going to be discussing general principles relating to several broad areas of law. I'm just sketching out some context here. I don't pretend that this is definitive, or that there are no exceptions or loopholes, or anything else that might be construed as binding. (This caveat is as much for the benefit of people who somehow manage to read this away from the blawg and miss the disclaimer in the upper-right corner.)

The real problem created by fan fiction is that, at its core, it is not copying of the work. At most, it involves detailed allusions to parts of the work. The copyright concept of "derivative works" is sometimes relevant here, but I question whether it applies (let alone should) in the context of telling new stories in somebody else's sandbox. (Aside: Many experienced writers refer to works that are based on someone else's material for more than just inspiration as "playing in somebody else's sandbox." I can't tell you the parameters of a sandbox—but I know one when I see it.) These are sometimes treated as more than just "fan efforts"; consider the controversy a few years back over Lo's Diary, and The Wind Done Gone. The real problem is that the Copyright Act does not establish standards for how much one can take, or who judges it, or when, or anything else. Instead, we're stuck with dubious judicial determinations, often overlapping the 1909 Act and the 1976 Act and based upon behemoths who can afford to litigate to death and their various interests—interests seldom consistent with those of smaller creators, or their fans.

Fan fiction functions through allusion. The allusions need to be detailed and "authentic"; giving Captain Kirk a propensity for Black Power salutes, a half-open shirt showing a gold medallion and lots of chest hair, and a fondness for early funk isn't going very far—and that's clear before considering good taste! Fan fiction can also create converse problems. There has been more than one instance in which a later-published work by an "authorized" creator was accused of infringing upon material from fan fiction. Some creators and authors dislike fan fiction for precisely that reason: They fear that their own work will be cabinned by what the fans do, including potentially closing off already-contemplated developments. (Remember, a great deal of fan fiction is inspired by ongoing serial works.)

More importantly, though, the allusions must be recognizable. Even when not understood as doing so by the authors, fan fiction must invoke a sense of being in that other person's sandbox, or at least containing a couple buckets of sand from that sandbox. Some fan fiction tries to make clear that it is not authorized by the creator; most is not so considerate. The real problem is not confusion by those who write fan fiction, though; most of them know perfectly well that anything appearing in their usual haunts—whether the hectographed fanzines of the sixties or the massive website repositories of today—is not "official," or the real (Dr) McCoy. The problem becomes most apparent when dealing with new fans who have had little or no prior exposure to the world of fan fiction, and don't know its cultural idiosyncracies (or even the idiosyncracies of their own little area).

So, then, is there an area of law that is tailored to allusions to specific sources? Can I write obvious rhetorical questions?

A. Ignorance Abounds

Perhaps the best current example of the problems with treating characters under copyright theories is the Marvel v. New City Software, which I mentioned some time back. Note that the linked story includes only discussion of copyright factors, indicating to me that none of the attorneys involved are paying attention. (Or, perhaps, just that EFF's obsession with copyright and fair use as the paradigms for all that is wrong with restrictions on the Internet is a bit excessive.)

The New City Software system establishes a gaming environment in which players get to build superhero characters. Some players, naturally enough, have built characters resembling certain Marvel characters, in one or more of name, appearance, powers, and weaknesses. Marvel is rather disturbed by this. Except for the interactivity, this is precisely the problem that much (not all, but much) fan fiction presents for its authorized creators.

This leaves a simple question: How close is too close so that it's unfair to the creator? (Did you really expect a definitive answer to that? I thought not.) Under a copyright theory, it's "too close" if one might choose New Soft's product as a replacement for Marvel's product. There's a lot of fancy rhetoric dancing around there, but when these things actually get to a factfinder that's what it seems to come down to. (There are also exceptions, such as Air Pirates—but, as I noted a while back, Air Pirates may no longer be good law.) The problem in this instance is that the two products are in different media: One is an online multiplayer roleplaying game, the other is centered on comic books (although also including films, etc.). That makes the "replacement" theory very difficult to evaluate, because the media characteristics are probably at least as important as anything else.

That's how copyright law works. It does require replacement; even if the infringing material is "free," choosing it as a replacement is a replacement. (Yes, I know it's a tautology, but in about 800 words or so you'll see why there's little choice in terminology.) That, however, is not the only thing that fan fiction does. As noted above, fan fiction can foreclose otherwise profitable continuations to the authorized creator; it can confuse potential consumers as to what is "canonical" material; and it can have a number of other harmful effects on the authorized creations, even without intending to harm anything. That should sound a lot like "unfair competition" causes of action under the common law; and indeed it is. "Unfair competition," though, doesn't go far enough—because most fan fiction isn't intended to enter the stream of commerce.

So that leads us back to trademark law, where I predicted we'd end up. Trademark law as we know it originated among silversmiths in London's East End, who put their own marks on their wares to show that they were a certain quality of goods. Counterfeiting of marks was actually a criminal offense; the 17th-century equivalent of cheap Singaporese knockoffs of "No Exit" apparel wasn't a matter for a lawsuit! Modern trademark theory posits three possible ways that false marks can harm the markholder. The obvious one parallels the copyright issue in New City Software: substitution. A mark is infringing if the "least sophisticated consumer" might be fooled into choosing the unauthorized goods or services over the authorized goods or services. That doesn't help us much; the other two trademark theories, though, do.

B. Indirection

Just why doesn't a direct infringement theory help much when applying trademark law to fan fiction? The Lanham Act puts the standard like this:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
   (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
   (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Lanham Act § 43(a)(1), codified at 15 U.S.C. § 1125(a)(1) (emphasis added). (We're going to neglect common-law trademark theories in this essay; they're in the article, but don't make enough of a difference to matter in a blawg.) As is usual in this sort of inquiry, the statute is far less clear than it could (or should) be. However, the three bolded phrases are important to figuring out what is going on here.

The primary "defense" raised by most advocates of fan fiction is the Lanham Act's "uses in commerce" requirement. These writers claim that their fan fiction is a "work of love" that is noncommercial in nature, and therefore cannot possibly infringe a mark. I'm afraid, though, that this is based on an unduly restricted (and self-serving) definition of "commerce." If there is advertising connected with the fan fiction, such as banner ads on a website; if there is a subscription fee or other payment of any kind for access, even if ultimately at a loss; if there is a membership fee; in short, if by any conception there is money changing hands, there is arguably commerce. This, in turn, means that if fan fiction is hosted on a website through a commercial ISP, it may be in commerce. Then, too, there's the oft-unstated (and sometimes unconscious) hope/possibility that one's fan fiction will be "noticed" by a commercial publisher, and thereby lead to a publishing contract. In a word, that's advertising. The "use in commerce" predicate is not so ironclad a defense as advocates would have it. (Returning to copyright for a moment, the tests for commercial activity and benefit in Fonovisa bear considerable thought in this context.)

More damaging to theories of direct infringement, though, are the two substantive methods of infringement prohibited by the statute. Fan fiction frequently has some kind of disclaimer stating that it is not authorized, which limits (does not, contrary to belief among many, eliminate) the likelihood of finding apparent confusion as to origin, sponsorship, or approval of the material. In reality, these disclaimers go only to the "likely" issue, and are matters of fact unique to each particular circumstance. That, friends, is not a good means of protecting oneself from lawsuits… since the relevant facts won't be determined until the lawsuit is filed! Misrepresentation of the nature, characteristics, qualities, or geographic origin is a much harder issue on direct infringement. First of all, as noted, a reasonable observer could or would treat fan fiction as an advertisement—even if the advertisement isn't for the subject of the fan fiction, but for its author. The defense, then, would be that the fan fiction does not misrepresent the underlying work(s). This is an even harder factual question than before.

Of course, this cuts both ways. As hard a factual question as direct infringement is for the defense, it's even harder for the plaintiff (the owner of the original property, which I'll refer to from here on as the "authorized creator"). All that means, though, is that this particular theory of infringement is not all that practical a response. There remain two other theories of trademark infringement, though, both of which are much more obviously germane to the issue and much more dangerous to the proprietor of fan fiction: dilution and disparagement. Next time we'll look at dilution, then after that at disparagement, followed by a summing-up of trademark infringement theories and fan fiction. That won't complete the series quite yet; we'll need to tie everything back together.

Tangent: Native American Arts

An interesting case out of the Seventh Circuit today on Indian jewelry makes part of my point concerning the trademark issues related to fan fiction in a slightly different way than I might, but then Judge Posner wasn't thinking about fan fiction.

The plaintiffs do not put all their eggs in a basket with no bottom; they also challenge the soundness of Judge Der-Yeghiayan's ruling that the "unqualified use" regulation infringes freedom of speech and is also unconstitutionally vague and overbroad. He indeed was wrong. If he were right, trademark law would be unconstitutional. In effect the regulation makes "Indian" the trademark denoting products made by Indians, just as "Roquefort" denotes a cheese manufactured from sheep's milk cured in limestone caves in the Roquefort region of France. A non-Indian maker of jewelry designed to look like jewelry made by Indians is free to advertise the similarity but if he uses the word "Indian" he must qualify the usage so that consumers aren't confused and think they're buying not only the kind of jewelry that Indians make, but jewelry that Indians in fact made. There is no constitutional infirmity.

Native American Arts v. Waldron Corp., No. 04–3182 (7th Cir. Mar. 2, 2005), slip op. at 3 (citations omitted).

Judge Posner is pretty dismissive of two of the major "objections" raised by proponents of unrestricted fan fiction (and, for that matter, of unrestricted reuse of certain aspects of copyrighted material). First, he disposes of the First Amendment issue with a sentence. Second, he draws an explicit analogy between a non-trademark issue of proper identification of materials and trademark law. The Indian Arts Act does not include the word "trademark" anywhere in it. As Judge Posner implicitly finds, that doesn't matter to the analysis; what matters is function, not form.

Tangent: Dastar

Part of the problem with analyzing marks in copyrighted material is that courts go out of their way—well out of their way, often at the expense of logic—to avoid ever mixing trademark law and copyright law. Probably the best recent example is Dastar v. 20th Century Fox Film, No. 02–248 (U.S. 2003) (slip op.) (PDF, 226kb). Perhaps, though, it's better to say that it's the implications that suffer.

As Justice Scalia (for a unanimous Court) describes the matter,

In 1948, three and a half years after the German surrender at Reims, General Dwight D. Eisenhower completed Crusade in Europe, his written account of the allied campaign in Europe during World War II. Doubleday published the book, registered it with the Copyright Office in 1948, and granted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn, arranged for Time, Inc., to produce a television series, also called Crusade in Europe, based on the book, and Time assigned its copyright in the series to Fox. The television series, consisting of 26 episodes, was first broadcast in 1949. It combined a soundtrack based on a narration of the book with film footage from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified "Newsreel Pool Cameramen." In 1975, Doubleday renewed the copyright on the book as the "proprietor of copyright in a work made for hire." Fox, however, did not renew the copyright on the Crusade television series, which expired in 1977, leaving the television series in the public domain.

*  *  *

In 1995, Dastar decided to expand its product line from music compact discs to videos. Anticipating renewed interest in World War II on the 50th anniversary of the war's end, Dastar released a video set entitled World War II Campaigns in Europe. To make Campaigns, Dastar purchased eight beta cam tapes of the original version of the Crusade television series, which is in the public domain, copied them, and then edited the series. Dastar's Campaigns series is slightly more than half as long as the original Crusade television series. Dastar substituted a new opening sequence, credit page, and final closing for those of the Crusade television series; inserted new chapter-title sequences and narrated chapter introductions; moved the "recap" in the Crusade television series to the beginning and retitled it as a "preview"; and removed references to and images of the book. Dastar created new packaging for its Campaigns series and (as already noted) a new title.

Dastar manufactured and sold the Campaigns video set as its own product. The advertising states: "Produced and Distributed by: Entertainment Distributing" (which is owned by Dastar), and makes no reference to the Crusade television series. Similarly, the screen credits state "DASTAR CORP presents" and "an ENTERTAINMENT DISTRIBUTING Production," and list as executive producer, producer, and associate producer, employees of Dastar. The Campaigns videos themselves also make no reference to the Crusade television series, New Line's Crusade videotapes, or the book. Dastar sells its Campaigns videos to Sam's Club, Costco, Best Buy, and other retailers and mail-order companies for $25 per set, substantially less than New Line's video set.1

The Court concluded that Fox had no right to file a Lanham Act § 43(a) (designation of origin) complaint alleging that Campaigns is attributed improperly.2 The Court found that, for a work in the public domain, this would be inconsistent with the restrictions on the horribly cramped conception of moral rights found in the Copyright Act3 and with the purpose of the Lanham Act. Of course, the real problem is with potential ownership of any mark from Crusade. Assuming for the moment that such a mark is in issue, Fox is at most a licensee of the mark, which belongs to either General Eisenhower or Bertelsmann.4

The real problem, though, is that Justice Scalia, with an all-too-typical rhetorical flourish, "decided" an issue that was not before the Court.

In sum, reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. To hold otherwise would be akin to finding that 43(a) created a species of perpetual patent and copyright, which Congress may not do.5

What's missing from this? Acknowledgement that the facts before the court concern material that is in the public domain for copyright purposes. Previously in the opinion, Justice Scalia had been careful to so limit his statements; here, he was not. And this passage, no doubt, will be cited as the holding by people who would rather not read the whole opinion.6

Tangent: Naxos

It's not just federal courts that are capable of making crazy statements on copyright policy and procedures. The New York Court of Appeals appears equally content to do so… if that's not sort of an oxymoron. In Capitol Records, Inc. v. Naxos of America, Inc., the New York Court of Appeals "answered" a certified question from the US Court of Appeals for the Second Circuit concerning protection for pre-1972 sound recordings. Leaving aside the somewhat faulty recitation of the history of copyright in sound recordings—the analysis of the effects of White-Smith, for example, is more than a bit too broad—the leaps in logic are absolutely astounding:

The Waring, Metropolitan Opera and Capitol Records decisions may appear to conflict with the accepted principle that a public sale of a literary work is a "general publication" terminating a common-law copyright, and any copyright protection thereafter must be derived from statute. But the historical distinction in the treatment of literary and musical works by Congress accounts for the lack of federal statutory copyright protection for sound recordings. In the absence of protective legislation, Congress intended that the owner of rights to a sound recording should rely on the "broad and flexible" power of the common law to protect those property rights after public dissemination of the work.

Naxos, slip op. at 20. Not once is there a citation to anything indicating a positive intent of Congress to do anything; instead, the Court of Appeals infers such intent from Congress's apparent acquiescence to the "recordings can't be published" conclusion that many drew from White-Smith. Of course, by that logic Congress should not have been able to explicitly add motion pictures to copyrightable subject matter in 1912 (the Townsend Amendment)!

What troubles me more about Naxos is that it grasps one lacuna as evidence of positive intent, but refuses to grasp a directly relevant lacuna at all. The absence of a definition of "publication" in the 1909 Copyright Act—even in the 1971 amendments that explicitly allowed copyrighting of phonorecordings—indicates that whether a work has been published is a fact-specific inquiry. (Note, too, that the 1976 Act defines "publication" only for phonorecordings.) Further, the 1976 Act, by its own terms and by the statutory language in the transitional provisions, acts to wipe out state common-law copyright, notwithstanding that rather interesting analysis of the legislative history in Naxos (slip op. at 20–22). Of course, this runs right into Goldstein, La Cienega, and the amendments to § 303. The Second Circuit seems content to stop its analysis at that point.

Then, though, one hits another lacuna: Dastar. The Supreme Court noted recently that

Assuming for the sake of argument that Dastar's representation of itself as the "Producer" of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under [§] 43(a) for that representation would create a species of mutant copyright law that limits the public's "federal right to 'copy and to use,'" expired copyrights.

Dastar v. Twentieth Century Fox Film Corp., No. 02–428, slip op. at 10 (citation omitted) (relying on Bonita Boats's disallowance of a Florida common-law copyright in boat-hull designs).

The real problem here, I think, is that the New York Court of Appeals is straining to reach what it considers the right and fair result. I have some sympathy for it, for an opinion the other way would appear to throw every sound recording made prior to 1972 into the public domain. The unconsidered case, though, is this one (and it's far from trivial): Recordings actually made outside the US, which therefore should have been subject only to the statutory rights that existed wherever they were actually recorded. Regardless of what the contract says, if the "common-law copyright" in the recording wasn't recognized where the recording was made, a contract can't transfer such a right to a US record label. Thus, Sergeant Pepper's Lonely Hearts Club Band should fall outside of the reasoning in Naxos—meaning that, in the end, Naxos does not contribute to uniformity in the recording industry, whatever its intent or method. If this brings to mind nasty questions about the 1909 Copyright Act's manufacturing clause and its relationship to WIPO and other international trade treaties, you get a gold star for looking at the implications. That and $5 will get you a fancified cup of coffee.

I'm sorry, but the only solution is going to be a legislative one; Naxos doesn't, won't, and can't do what the New York Court of Appeals means it to do. What Congress needs to do is decide that sound recordings shall be treated like any other copyrighted work, but that registration may be presumed for "actually published" works issued before 1972 (since it was impossible to do so). That's not going to happen, though, if only because collectors of "Americana recordings" and such will raise the danger that they will deteriorate before those recordings can be preserved. Et cetera.

Tangent: NCSoft

On Wednesday, Judge R. Gary Klausner of the U.S. District Court for the Central District of California in Los Angeles issued a ruling (PDF image, 350k) in Marvel v. NCSoft—the "city of superheroes" case, which I previously discussed in —dismissing some of Marvel's claims. The decision demonstrates some interesting procedural aspects of fan fiction in a way that one can't ordinarily cover in law school, let alone reality.

First on the agenda was a motion to strike some of the exhibits. This motion was quite properly granted, because the exhibits demonstrated the theoretical limits of what one could do with NCSoft's system, not actual infringements. Marvel, as part of its complaint (well, third amended complaint), had included copies of several of its own attempts to use the NCSoft system to "duplicate" its characters. In other words, any "infringement" was done by the licensor (or at least its agent), and therefore is not an infringement. Even Marvel partly conceded this point. What it really does is point out some of the artificiality of pleading rules, not "bad faith" or anything like that. Under some circumstances, what Marvel's counsel did would be proper; just not these.

Of more interest, the judge split on dismissal of actual claims. First, he refused to dismiss copyright claims, because the pleading rules for direct copyright infringement (unlike for trademark) do not require examples of each potential infringement. "[C]omplaints which allege present copyright ownership by the plaintiff, proper registration, and infringement by defendant have been held sufficient" (slip op. at 3). He also upheld as sufficient claims for contributory copyright infringement (id., slip op. at 3) and for vicarious copyright infringement (id., slip op. at 4, citing Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004) (PDF of slip op.)).

Of more interest to this discussion, some of the trademark infringement claims did not fare so well. First, the mark for Captain America is pretty poorly registered: It does not include the image, and the Court refused to extend a theory of direct infringement from the word mark "Captain America" to "Statesman" through a theory of "some broader 'goodwill' belonging to the trademark holder" (slip op. at 4). Contributory infringement didn't fare much better, because the actual infringers (the users) are (in the court's opinion) not using the marks in commerce. Id., slip op. at 5. Vicarious infringement failed as a theory on the registered mark for the same reason. Id.

That's it for the registered trademarks. Common-law trademarks, however, fared much better, at least for direct infringement. From the opinion, it appears that the only reason for dismissal offered was an alleged failure to identify the mark(s) at issue; Judge Klausner quite properly trashed this hypertechnical, and nonsensical, objection. Id., slip op. at 5. Contributory and vicarious infringement claims for common-law trademarks fell afoul of the same problem as did the registered mark, though: the end-users aren't using the marks in commerce. Id., slip op. at 5–6. The related claim under California law for interference with economic advantage, though, was sufficient to survive dismissal. Id., slip op. at 6.

OK, that's part I of the law review article format. I've described the opinion. What does it all mean? Really, four things:

  1. That when one registers a mark, one needs to register the full scope of the mark and not rely upon evolving "goodwill" to protect the registration.
  2. That failure of registration nonetheless does not indicate that all trademark causes of action have also failed, because common-law trademarks may well be good enough.
  3. That the whacky copyright law applicable to characters in the Ninth Circuit is still the law of that circuit (that's why the copyright claims were not dismissed).
  4. Most importantly, that vicarious and contributory infringement claims will not lie against a forum that merely enables noncommercial copying of marks. This is a rather shaky conclusion, though; it is not logically consistent with upholding the interference with economic advantage count, which by its nature indicates that there was a commercial aspect of the infringements. Frankly, I think Judge Klausner was probably jumping the gun here; this is properly an issue to be resolved on summary judgment, not on a motion to dismiss.

Tangent: Peter Pan

Sorry about all the tangents, but every time I get ready to chop the section on dilution down for a non-law-review audience, along comes a fascinating current case or story that sheds more light on the whole fan fiction issue. Today, I'll be looking at the UK's blatant violation of the Berne Convention, and one of the more egregious copyright grabs in the world. That's right. We're off to Neverland. And, for those of us who believe in intellectual honesty, it's far scarier than that ranch in California… and also involves exploitation of children.

For those who don't know, J.M. Barrie's play Peter Pan is in perpetual copyright in the UK, by act of Parliament, with all royalties (etc.) to go to the Great Ormond Street Children's Hospital. Leaving aside for the moment whether this is a cynical exercise in a government washing its hands of obligations to fund healthcare under its own laws, and leaving aside for yet longer whether this merely represents Disney getting its just desserts (since Disney's awful, awful cartoon hasn't been shown in the UK, because Disney refuses to pay royalties on what it views as public-domain materials), one must note that opposing this particular grab is more difficult just because it involves something that should benefit sick children. That's a classic strategy of taxation realpolitik: Tie that tax provision to something that it's hard to oppose on public-relations grounds.

In any event, the Great Ormond Street Children's Hospital has now announced who it will "authorize" to create an officially sanctioned "sequel" to Peter Pan: prizewinning children's author Geraldine McCaughrean. The article continues with the "funds help the sick children" strategy, noting that

Barrie, whose play was first performed in 1904, left his royalties to the hospital in perpetuity on his death in 1937. The hospital's move is a plan to find a substitute for income from the US copyright, which expires in 2023 and generates nearly all the film revenue. Recent income has been used to buy CT and MRI scanners and subsidise the hospital's psycho-social support for parents.

Note, too, the inaccurate statement of when the US copyright expires(d)—it had expired before January 1, 1976, so it didn't get the benefit of the US change to a life-plus-years scheme.

What's saddest about this is that I can hardly blame Ms. McCaughrean for taking advantage of the situation. Usually, authors are the ones getting screwed by the system; at least this time, the writer of the (equivalent of the) next Star Wars or Star Trek novel looks like getting paid adequately. Of course, this has some interesting implications for fan fiction, too, which I'll try to fold into the overall wrap-up at the end. For now, suffice it to say that activists bitching about excessive copyright terms need only remember that "in perpetuity" is a lot longer than "life plus 70"—particularly as even a first-year law student could tear apart that will, except for Parliament's intervention.

In the end, this proposed "official sequel" really resembles fan fiction more than it resembles anything else. The Barrie play (and succeeding novel, which doesn't remain in US copyright either) have considerable value as a mark. Doesn't that, though, run into problems under the reasoning in Dastar? Well, not exactly; remember that Dastar involves at best a compilation copyright, as most of the material was never in copyright (shot by US government employees) and most of the remainder probably fell into the public domain for failure of copyright formalities. There's a good, and perhaps even compelling, argument that Dastar doesn't reach as far as a single, original work. Or, at least, as far as one whose copyright expired naturally, as has the Peter Pan copyright in the US. Further, there is no indication that it will merely complete work envisioned by Barrie himself, as one might argue excuses the release of all those tangential Tolkein works over the last quarter of a century. (That The Lord of the Rings is itself an example of the copyright-formalities follies just adds a bit of delicious irony to the morning coffee.)

Frankly, that trial out in LA is beginning to look less convoluted than this mess. At least both seem to involve someone who refuses to accept responsibility and grow up.

Tangent: Just Another Dick

Tracy, that is. In one of those developments that can only happen in real life, because nobody would believe them in a work of fiction, Warren Beatty is suing Tribune Co. over the "rights" to Dick Tracy. This is an intelligent move for a variety of reasons.

Most germane to this overextended discussion that has ended up close to (but not exactly) where I expected it to when I started, by filing a declaratory judgment action under a contract theory Beatty doesn't have to choose which theory Dick Tracy should be protected under. The story in the Sun-Times sort of hints that only trademark will do:

Beatty gave the rights to the Walt Disney Co. and in 1990 starred in and produced ''Dick Tracy'' for Disney. The film — which featured Tracy's catchphrase "I'm on my way" — was received poorly by critics but made more than $100 million at the box office.

That certainly sounds more like a trademarkish theory than a copyrightish theory, doesn't it? "I'm on my way" is not a copyrightable expression. It merely states a fact, and there are few other ways to state it in the context of a police officer notifying someone of his impending arrival over the radio. A "catchphrase," too, is more valuable for its association and allusion than for its substance; it is used to help recognize the source.

The litigation strategy is also important for another reason: It's not in the Ninth Circuit. The Seventh Circuit—particularly when Judge Posner has been on the bench—has been much more open to nontraditional theories concerning fictional characters than has the Ninth Circuit.7 Careful litigation strategy can preserve jurisdiction in the Northern District of Illinois to keep things out of the LA courts. It's kind of ironic that going to the alleged owner's home court is to its detriment; but that's the way it appears.

C. Diluting the Essence

So, if fan fiction is not a particularly strong instance of direct infringement (except when done intentionally), why does the theory of trademark matter to it? Because direct infringement isn't the only theory under which trademark law operates. Instead, we have the closely linked, but still somewhat distinct, theories of "dilution" and "disparagement."8

Trademark dilution occurs when misuse of a mark by an unauthorized party results in the loss of the mark's distinctiveness. As one state statute puts it:

Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark…shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.9

The "counterfeit designer label" wars of the 1980s, involving shoddy knockoff designs with labels that didn't quite literally infringe upon the authorized mark (as shoddy as that stuff often is!), provides an excellent object lesson. The real problem is that this flood perceptibly reduced public perceptions of the value of certain of those marks. That, however, was arguably in competition. The point is that the elimination of the "competition" requirement for dilution theories vastly weakens the frequent excuse of fan-fiction authors that "I'm not selling my stuff, so I'm not in the stream of commerce and I'm not competing!"

From one perspective, this presents some rather significant (and ironic) tension with direct-infringement theories about fiction, and perhaps with other intangibles. Direct infringement theories work best the more closely the unauthorized mark invokes the authorized one; that is, the center of direct infringement is the well-executed counterfeit, either of the mark itself or of the underlying goods. Dilution, however, can do the opposite; the worse-executed the counterfeit, the closer that misuse is to "dilut[ing] the distinctive quality of a mark." This is particularly relevant to fan fiction because so much of it is so bad. (It's frequently so bad that Cthulu et al. would run away screaming.)

More to the point for fiction, thematic inconsistency can create dilution, even when done well. Consider, for example, a set of sexually explicit Harry Potter "Mary Sue" stories. These would reflect poorly upon Joanne Rowling's creations, which (at least thus far, and I have no reason to believe will change) reject that kind of material. Similarly, I suppose that a set of Star Wars stories in which the heroes/heroines actually stop to think about the potential consequences of their actions—at the extreme, imagine The Tragedy of Anakin, Prince of Denmark—would also dilute the Star Wars mark. Note that in this instance, the dilution is thematic, not qualitative. That still weakens the distinctiveness of the mark. After all, some people actually like Star Wars for what it is… and would be terribly disappointed if they had to do anything other than wait for the next exercise in medieval weaponry and poor marksmanship.

Tangent: The Lion King

One of the big debates in the philosophy of art—and not a big debate in publishing, although it probably will be before long—concerns "ownership" of materials that don't have a clear, single creator… and sometimes even those that do.

On the one hand, we've got the question of owning cultural artifacts. The most obvious example of this problem is museum collections. The British Library just lost out on one such battle, being required to return a rare book to its apparent point of origin: Benevento, Italy. This raises a number of problems all by itself. Unusually for a museum piece, there is a true and distinct point of origin that it intimately connected to the object. Much of the time, an "artifact" will invoke a larger culture more generally with little true geographic origin, or at least little reference to a specific point. Consider, for example, return of Egyptian artifacts to Egypt. Most, if not all, of such artifacts would end up on display in Cairo—which, geographically and historically, isn't all that close to their "origin points" farther up the Nile. This question gets really complicated when we draw in nonphysical artifacts, such as what happens when a song about hunting for lion meat ends up in a children's semi-musical in which the "hero" is a lion. I don't claim to have an answer to this issue; I'm only disturbed that the questions aren't being asked enough. But then, the last question centers on Los Angeles and its culture; as the Kingston Trio remarks at the beginning of a live recording of the song in question, "Well, Los Angeles really is quite an intellectual town—and we were lucky enough to run into him down there." (Since I grew up in Seattle, bashing LA is almost as often in season as is bashing the French.)

D. You Libellous Dog, You!

As difficult as it is to describe "trademark dilution" without resorting to circularity and ipso facto, "trademark disparagement" is worse. Although the case law is far from clear on this,10 the real difference between "dilution" and "disparagement" is one of intent. There are at least two dimensions of this intent.

  • The first, and most obvious, is simple anger at the property itself. The Perfesser's (well-taken, I might add) frustration with Anita Blake that set off this bloated blawg series—one that is, by this time, about as attractive as Jabba the Hutt sans slime—is an excellent example. Had the Perfesser executed such a piece of fan fiction, the best analysis would have been as disparagement, not mere dilution. The intent was to destroy the property, or at least damage it and force changes in its underlying nature.
  • Since we're dealing with the arts, though, we have to remember that the irrational rules. Sometimes that anger is directed not at a particular property; the property is just in the way of a "writers' feud." They're even more vicious than academic feuds, if only because the stakes are even lower. Unfortunately, most of the best examples of this kind of thing are so obscure, or are simply not "web-ified," that you're just going to have to take my word for it or follow the hypothetical. Let's say that Arthur Author becomes insanely jealous of Sally Storyteller's success. The basis for the anger doesn't really matter. What does is Arthur's poison-pen (these days, poison-keyboard) "fan fiction" pieces that ridicule not just Sally's bestselling "Young Hunks in Love" series, but Sally's own integrity and methods.

The difficulty is that courts don't like to inject themselves into what usually looks (to the disinterested jurist) like a catfight. Disparagement analysis would be far more internally consistent if it would just admit that its factual foundation is something far more akin to libel11 and to interference with prospective contractual advantage than it is to the consumer-protection foundations of trademark law. That, however, is not going to happen any time soon—if only because the attorney and insurance-company egos involved are no more subordinate to reason than are those of their respective clients and insureds.

The critical distinction in disparagement, though, is that regardless of the motivation, it is usually analyzed (properly or not) as a subset of dilution. This is usually through not the "innocence" of a product line that is outside the scope of the "authorized" product line, but through either

  • Necessary association of the mark with markedly inferior goods or services. In fiction, this frequently goes to matters of style and production values, as in the unauthorized Harry Potter books published in China over the last several years. Leaving aside the content matters, the writing was found objectively inferior to Rowling's (or what a competent translator would have done with Rowling's own words), and the books were shoddily printed and essentially unproofread.
  • Then, too, there's the "indelicate activity" matter, the definition of which is itself somewhat indelicate. Hypothetically, consider Anita Blake's demise after she finally breaks down to deal with the sexual tension and ends up with excessive quantities of bodily fluids of various indelicate natures, bringing perhaps a rather disgusting reference to choking the chicken as the punchline.

The obvious problem here is the "markedly inferior" issue. Consider one of the biggest sources of fan fiction currently darkening the Internet: Star Wars. Bluntly, much of it vastly exceeds the quality of the writing and imagination demonstration in the two most-recent movie installments (The Phantom Script and Attack of the Clowns), and the less said about the unlamented Christmas "Special" of the 1970s the better! If nothing else, this demonstrates why the "authorized sources" don't like using trademark law, as opposed to copyright law. Copyright is strict liability: Prove that copying took place and you're done. You don't need to show that the copying had some adverse affect on your "authorized" goods. That, however, is a litigation practicality that should not be allowed to undermine the theoretical treatment of the behavior in question. However, like Galileo, I must continue to protest that it moves.

Tangent: Procedure

By now, what few readers remain may feel more like the Emperor proclaiming "too many notes". (Hopefully, that won't get too many sarcastic remarks that I have no right to compare myself to Mozart… in any fashion…) Unfortunately, what that really points out is just how messy this tiny aspect of law really is. The tangent here is on another of my favorite topics: The influence of procedure and nonsubstantive issues on the development of the law.

Historically, copyright matters have largely been a matter of "a losing infringer has to pay the copyright holder's costs and attorney's fees, except at the margins of the law; and a losing copyright holder may have to pay the winning infringer's attorney's fees, unless he/she had a damned good basis for claiming infringement." Judge Cooper's unpublished decision on fees in Ellison puts it this way:

The court declines AOL's request for attorneys' fees. As noted by AOL itself, the action was a case of first impression under the Digital Millennium Copyright Act, 17 U.S.C. § 512. Based on the dearth of legal authority and the complexity of legal issues presented, Plaintiff could have reasonably believed that the claims he was advancing against AOL were meritorious. Far from being objectively unreasonable, Plaintiff's arguments were both reasonable and well presented, although ultimately unavailing. Defendant's contention that Plaintiff should have been well aware that section 512(a) clearly precluded AOL from liability is disingenuous; the Court itself spent easily over one hundred hours researching the law and analyzing the evidence in the instant case and reached its final decision after months of careful consideration. Moreover, the Court does not agree with AOL that Plaintiff's litigation conduct was "unreasonable" and evidence of an irrational or improper "vendetta" against AOL. Finally, an award of attorneys' fees to AOL would not advance the purposes of copyright law. To the contrary, it would likely have a chilling effect on copyright holders, who would be less likely to seek legal protection for their copyrights in the future, even in situations in which their infringement claims were potentially meritorious.

Ellison v. Robertson et al., No. 00-4321 FMC (RCx), Dock. No. 222 (15 May 2002) at 2–3 (footnote omitted). (Keep in mind that this precedes our victory on appeal; all Judge Cooper had before her was her grant of summary judgment to AOL.)

As complex as this is, the situation is much worse in trademark law. Under the Lanham Act, attorney's fees may be awarded in "exceptional cases," 15 U.S.C. § 1117(a), and statutory damages are available only for "counterfeit marks." To say the least, despite the strident claims of every litigant that his or her case is "exceptional," awarding attorney's fees in trademark actions is far less common than in copyright actions. Then, too, the tension noted in previous entries between likelihood of confusion and the quality of the "copying" of a mark makes some of the most egregious misuses rather a more difficult case to prove.

So, however strong the theoretical underpinning for treating fan fiction (and, more generally, playing in other creators' sandboxes) as closer to a trademark matter than to a copyright matter absent literal copying (or, in some extreme instances, literal copying followed by alterations perceived as sufficient to evade a charge of literal copying), in practice we're stuck with continuing to see the case law developed under copyright theories. By itself, this explains why courts—particularly the Second Circuit—have so badly mangled the theoretical basis of copyright actions: In practice, unless a copyright cause is available, a creator whose sandbox has been invaded may have no avenue for legal relief. Perhaps this points out another problem with trademark law, in that trademark is a hybrid theory. Rather than being purely (or close to purely) a matter of intellectual property law, it originated as consumer-protection law and has since moved toward intellectual property—largely for procedural reasons, as governments stopped enforcing trademarks and left enforcement to those whose marks were at issue.

What this really means, in the end, is that despite my particular preferences, and the vastly clearer theory of derivative-work liability that one can obtain by ignoring copyright doctrine, this entire essay may have been little more than a theoretical exercise. Unless, of course, it somehow becomes (in)famous enough to catalyze some serious reform efforts, which is not very likely!

Tangent: Titles, Not Characters

One of the other objections to applying trademark law to disputes concerning creative works is the even-more-nebulous-than-usual calculation of damages. The Copyright Act provides a clear statutory-damages framework that relieves a court of the most difficult actual-damages calculations (presuming, of course, that the plaintiff was eligible for statutory damages through timely registration). The Lanham Act, however, does not, or at least does not to the same extent. A recent decision concerning the Apollo Theater exemplifies this problem.

There are at least five, non-mutually exclusive methods for measuring monetary recovery in a trademark infringement action.…

Multiple measures of monetary recovery exist in part because a defendant need not turn a profit from infringing a trademark in order for the plaintiff to suffer damages from the infringement. For example, "a defendant may have failed to earn profits because of the poor quality of its product or its own inefficiency." Likewise, a plaintiff need not demonstrate that it would have earned a profit on its trademarked goods or services but for the infringing activity of the defendant; even if a money-losing enterprise cannot demonstrate "lost profits," it still may be damaged by trademark infringement. "While damages directly measure the plaintiff's loss, defendant's profits measure the defendant's gain.… [T]his is not to be confused with plaintiff's lost profits, which have been traditionally compensable as an element of plaintiff's damages." Indeed, it is possible that trademark infringement could damage a plaintiff where neither the defendant nor the plaintiff earns a profit, particularly where "confusion may cause purchasers to refrain from buying either product."

Apollo Theater v Western Int'l Synd., No. 05–02866 (05 May 2005), slip op. at 24–26 (citations and footnotes omitted, emphasis in original). Fold in the speculative nature of damages in an industry not well known for the accuracy of its accounting, nor for the predictability and sale of licensing fees, and Judge Cote had a real headache.

Then, too, there's the question of artistic expression as somehow trumping trademark interests. Judge Cote has little patience for this theory in these circumstances, and rightfully so.

The Rogers test does not apply, however, "to misleading titles that are confusingly similar to other titles. The public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles." Determining whether a title is misleading may require an inquiry that extends beyond the title itself. "It is a fair question whether a title that might otherwise be permissible under Rogers violates the Lanham Act when displayed in a manner that conjures up a visual image prominently associated with the work bearing the mark that was copied."

Western has not shown that it is entitled to summary judgment on a First Amendment defense. Even if Western were able to show that its use of the titles Showtime and Showtime in Harlem carried artistic relevance, there are questions of fact as to whether those titles constituted "misleading titles that are confusingly similar to" the Trademark, It's Showtime at the Apollo. Moreover, the use of the titles Showtime and Showtime in Harlem as part of a television program employing numerous visual images and other slogans strongly associated with the Trademark also creates a triable issue of fact as to whether the words were displayed "in a manner that conjures up a visual image prominently associated with" the Trademark. Id.

Id., slip op. at 37–38 (citations omitted, typography corrected). Although neither Rogers nor its progeny extend the reasoning from "titles" to "characters" or "fictional settings" in anything approaching a coherent fashion, that reasoning should nonetheless hold.

Judge Cote's opinion is an unusually clear explanation of one way to resolve these kinds of disputes. That means, of course, that it will be appealed, obfuscated, misrepresented, and buried under the corpses of dead trees for generations to come. I don't have a lot of sympathy for either party in the matter; functionally, a title drawn from a preexisting business entity is, or at least should be, considered substantially weaker than actual artistic expression integral to the nature of the work. The problem is that this kind of reasoning does not lend itself to bright-line tests, but only to instance-by-instance judgments of propriety—and that's not something that our court system (or our media industry) likes.

E. Undiluted Envy

Although the procedural distinctions between copyright and trademark by themselves are more than sufficient to explain rightsholders' reluctance to attack third parties' use of their characters and settings,12 trademark law itself provides another reason: proof of actual confusion and loss. Legislation pending in Congress now would overturn the unfortunate (but probably required) result in Victoria's Secret.13 Should this legislation pass in a largely undiluted form,14 the procedural barrier will remain—but the internal barriers to applying dilution theory will not.

The legislation would soften the result in Victoria's Secret by explicitly making the statute refer to likelihood of identification with the authorized source, instead of "lessening of capacity." On the one hand, this is a good change for consistency's sake, as it brings the Trademark Dilution Act back into parallel with both the Fair Debt Collection Practices Act, 15 U.S.C. § 1692 et seq., and the Federal Trade Commission Act, 15 U.S.C. § 41 et seq.. Since trademark is, at its core, an outgrowth of consumer protection law and theory, it makes sense that its tests should parallel those elsewhere. On the other hand, many observers object that the amendment threatens free speech. Although this is rather a reductio ad absurdum argument—of the nature that gives the "slippery slope" its deserved bad name—it concerns such an important fundamental right (and, ironically, one central to the IP Clause) that it can't be dismissed in substance, even if it can in rhetoric.

Additionally, because H.R. 683 allows famous mark holders to seek injunctions based on a likelihood of dilution (as compared to the higher standard in Moseley which requires a showing that dilution by blurring is actually occurring) and validates tarnishment claims, it is likely that the new bill will chill more creative speech despite the parody and criticism exception than the current statute chills without it.15

In analyzing fan fiction and playing in others' sandboxes, this change would mean simply this: That defense that "I wasn't seeking a profit" would have even less force than noted previously. It would also tend to devalue statistical evidence live disputes: All that would be necessary would be demonstrating that the "unsophisticated consumer" couldbe fooled into believing that the subject work was an "authorized" production, not that a significant number of "unsophisticated consumers" would do so.16 This makes a trademark-based attack much more palatable to less-wealthy plaintiffs; in practice, the statistical studies necessary to prove that something is in fact "misleading" often cost more than the remainder of the pretrial attorney's fees. Pile on the reluctance of courts to award attorney's fees to prevailing plaintiffs in trademark matters, and we can see yet another reason that few such cases have been fought concerning literary characters and settings.

IV. The End (of the Beginning)

We started by considering the "traditional" copyright-oriented theories about fan fiction, which focus on some ill-reasoned principles under the 1909 Copyright Act. We disposed of the parody/satire issue as probably irrelevant. We saw that, at least in a theoretical sense, "copying" is not the best way to analyze fan fiction, which depends far less upon copying than it does upon allusion.17 We took a short detour through common-law theories of unfair competition to reach trademark law.

Trademark law itself has some interesting barriers to analyzing fan fiction, but many of those barriers proved illusory (instead of allusory). The "no commercial use" defense depends upon too-narrow a view of commerce. Instead, most of the controversy revolves around "likelihood of confusion," including both actual likelihood and the various theories of relief. In the end, the best theoretical framework falls somewhere between trademark dilution and trademark disparagement (or tarnishment, to use the more-traditional language).18

The biggest barrier to this reconceptualization is not inherent in trademark law, but in the procedure surrounding trademark law. Basically, the rules of civil procedure place such huge procedural advantages on asserting a copyright theory—the strict-liability standard and the remedies are merely the most obvious procedural advantages to copyright litigants—that only the most marginal cases can (or will) proceed on a trademark theory. That means we're going to remain mired in the problems created by bad precedent that has become ossified, even though we have moved at least from the Cretaceous Period to the early Quaternary Period. Nonetheless, doctrine remains fossilized. And on poor theoretical foundations, precisely because it doesn't consider the "living descendants," in the legal or artistic sense.

So, where does that leave the poor fan fiction author? Probably confused. If, that is, he/she cares about the legal issues in the first place. Although from a systemic perspective the owners of the original properties should ignore copyright theories and use trademark theories to protect their respective turfs, it's not in their individual best interests to do so. And, therefore, they won't. I'm afraid that we're therefore stuck with copyright-like theories for the foreseeable future. Perhaps what we really need is another Portugeuse minor nobleman to come along and eviscerate everyone with a masterwork—if only because a twenty-first-century Don Quixote would at least force everyone to look at the whole context. In short, the only way we're going to get this resolved is if somebody produces some really good fan fiction—probably "better" than the original—and has the resources to try to defend it.

  1. Dastar, slip op. at 1–3 (record references deleted; typography corrected; emphasis in original).
  2. Note that it's Fox's own damned fault it couldn't have filed a copyright action—its own negligence resulted in lapse into the public domain for failure to renew, presuming both that Fox's editorial work on what appears to have been public-domain material qualified for copyright in the first place and that similarity of its work to Fox's would be sufficient to support a copyright cause of action.
  3. 17 U.S.C. § 106, 106A.
  4. Dastar, slip op. at 4 n.2 (discussing whether Eisenhower's text may have been a work for hire).
  5. Dastar, slip op. at 13–14 (internal citations omitted; emphasis in original).
  6. The book's copyright, though, was another matter. Dastar, slip op. at 4 n.2 ("The copyright issue is still the subject of litigation, but is not before us. We express no opinion as to whether petitioner's product would infringe a valid copyright in General Eisenhower's book."). Neither, on the other hand, are other theories under the Lanham Act precluded. Id., slip op. at 14 (noting possibility of a § 43(b) challenge is not foreclosed).
  7. See, e.g., Gaiman v. McFarlane, No. 03–1331 (7th Cir. Feb. 24, 2004) (slip op.), discussing the "ownership" of characters from the Spawn comics with much more clarity and understanding of collective authorship than do the leading Ninth Circuit and Second Circuit cases. Judge Posner has also shown a great deal less patience with bullshit formalism at oral argument than one can expect in the Ninth, and certainly in the Second. For example, he granted the appellant an extra ten minutes of time at the oral argument in this matter, then proceeded to beat the appellant's lawyer about the head and shoulders with first-year civil procedure for that entire extension. (IMNSHO, the appellant's lawyer deserved it.) Sometimes it takes a sense of outrage to resolve disputes of this nature, and I haven't seen that sense of outrage in IP cases from the coasts in recent years.
  8. Of course, there are several variations within "direct infringement," too, but we don't need to distinguish between "passing off" and "reverse passing off"; if the theory doesn't have much value for fan fiction in the first place, trying to do so would create just another law review article that nobody will read.
  9. Cal. Bus. Prof. Code § 14330. Most states have virtually identical language in their respective statutes, including in no particular order New York, Illinois, Tennessee, and Florida. Washington (state) restricts its protection to "famous" marks and requires a "material reduction of the distinctive quality of a famous mark."
  10. This is as much a matter of the related civil procedure as of substance. Most of the relevant opinions were issued on either motions to dismiss—in which case the judge(s) can't consider any evidence at all, but only the allegations in the pleading, and they must presume those allegations true—or motions for summary judgment. If anything, the motions for summary judgment are even less helpful, because they require judges to pretend that they're making no credibility determinations, and disallow reliance on a mere sworn denial of truthfulness. Since intent is, in these kinds of things, always going to be inferred by a jury based on conflicting oral testimony—except if you're as stupid as Sean Fanning and tell the VCs that your fabulous Napster-like system is purposely set up to provide a liability shield for users whom you know will use it to pirate copyrighted works—summary judgment is a particularly ill-suited mechanism to reach an accurate result. Nonetheless, it's the law.
  11. The more-traditional term used in hardcore trademark discussions is "tarnishment," not "disparagement." See, e.g., Hyatt Corp. v. Hyatt Legal Servs., 736 F.2d 1153, 1157 n.2 (7th Cir. 1984) (holding that damage to "reputation" did not justify relief, as the defendant had conducted itself "in a circumspect manner"); Wedgwood Homes, Inc. v. Lund, 659 P.2d 377, 381–82 ("a[n] action for potential detraction from or tarnishment of the reputation associated with plaintiff's mark may be recognized… as 'likelihood of injury to business reputation'"). The twofold problem with this term is that it masks the actual factual distinction with dilution in general while simultaneously denying the relationship to defamation. In other words, it's just not personal enough. Ironically, though, it's perhaps closer to the origin of trademark law itself among silversmiths than we might otherwise recognize.
  12. "Settings" are almost entirely of concern within speculative fiction. The paradigmatic example is the Star Trek universe, which is jealously guarded by Paramount. Parhaps this is because the setting in speculative fiction functions almost as another character; perhaps it is simply that nobody has tried to make much fan fiction in Scott Turow's Kindle County setting.
  13. Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003). Aside: I'm referring to this as Victoria's Secret because that name is a lot more meaningful than is the plaintiff's. In any event, this case held that the Federal Trademark Dilution Act, codified at 15 U.S.C. § 1127 as meaning

    the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of—
    (1) competition between the owner of the famous mark and other parties, or
    (2) likelihood of confusion, mistake, or deception.

    The Court held that this requires proof of actual "lessening," not just of the possibility.

  14. Pun intended.
  15. "The Trademark Dilution Revision Act of 2005 (H.R. 683)" at PublicKnowledge. This is actually a rather restrained variant of the rhetoric commonly thrown about. Note, too, that this would drag us back into the ill-defined—and even misdefined—parody/satire quagmire that I denigrated previously.
  16. Leaving aside the philosophical question of whether statistical studies actually "prove" anything, these studies are unsatisfactory for another reason in this context. although the law concerns itself with the "unsophisticated consumer," the actual realistically definable consumer of a literary work is an individual who already consumes literary works, and more particularly at least marginally related literary works. For example, it is extraordinarily unlikely that a hardcore fan of Scott Turow's sophisticated law-flavored literary fiction is going to encounter all that much Harry Potter fan fiction. (Unless, that is, you're writing this particular blawg, and it's your job to do so.) On the other hand, this may provide some justification by itself for not bringing the TMDA's language into parallel with the rest of federal consumer protection law. Maybe.
  17. For an excellent basic discussion of one variety of fan fiction that particularly illuminates the distinction between "copying" and "allusion," see Teresa Nielsen-Hayden, "Namarie Sue" (04 Dec 2003).
  18. Although, as noted previously, "tarnishment" is the more-traditional term, "disparagement" is more accurate because we're not dealing with the connoted physical product, but strictly with a reputational element of an inchoate property. This is far from the only misleading or over-limiting term in intellectual property (itself, perhaps, an example) and entertainment law.

    [A]n accepted pattern of using words is often prior to certain lines of thinking and forms of behavior…. It is not so much in these special uses of language as in its constant way of arranging data and its most ordinary everyday analysis of phenomena that we need to recognize the influence it has on other activities, cultural and personal.

    Benjamin Lee Whorf, The Relation of Habitual Thought and Behavior to Language, reprinted in Language Thought and Reality 134, 134–35 (1956). Cf. Bleisten v. Donaldson Litho. Co., 188 U.S. 239, 249–52 (1903) (photographs are entitled to copyright protection, although they are not writings).

Law and reality in publishing (seldom the same thing!) from the author's side of the slush pile, with occasional forays into military affairs, censorship and the First Amendment, legal theory, and anything else that strikes me as interesting.

Ritual disclaimer: This blog contains legal commentary, but it is only general commentary. It does not constitute legal advice for your situation. It does not create an attorney-client relationship or any other expectation of confidentiality, nor is it an offer of representation.

All material © 2003–11 except where otherwise indicated. All rights reserved. N.B. This blawg does not use the Creative Commons License, although I'm usually pretty good-natured about permissions for attributed reuse.


Warped Weft

Essays in Warped Weft are consolidated from Scrivener's Error with only formatting corrections (and the occasional typographical correction).