FAQ: Questions and Answers

[back to notice text] Question: What is FanFic? Answer: Fan Fiction (FanFic) is a genre of amateur creative expression that features characters from movies, TV shows, and popular culture in new situations or adventures. The vast majority of these stories and poems are written by fans with no commercial interest who disseminate their work over the Internet, email lists, or newsgroups. The word "Fan," however, might not be the most appropriate term since not all FanFic is created by people who are truly "fans" of the original work as the term is traditionally used. Regardless of whether FanFic authors are really fans, owners of original works often do not look favorably upon these works. In response, the owners of the rights often try to stop the creation of FanFic through cease and desist letters and the threat of lawsuit. [back to notice text] Question: What are the major elements of FanFic? Answer: In general, FanFic involves a combination of established characters, established "worlds" (i.e., the setting or universe relating to the established characters) and established histories (the events described in the work involving the characters in their worlds) from current works. What FanFic authors add could include new characters, new worlds and new histories. Another form of adding originality is by detailing (or extending) certain characters, parts of worlds and histories that received little attention by the original author. The major possible violations are therefore copying, performance or display of existing characters and plots, creation of derivative works without the copyright holder's consent and prohibited use of trademarks belonging to the original work. [back to notice text] Question: How do companies usually react to FanFic? Answer: Different companies have different methods in dealing with FanFic. Some, like Paramount Pictures, see that FanFic could actually help boost their sales and so encourage the writing of FanFic. Other companies are presumably waiting for more business information and legal clarity before making a decision. For example Universal, which owns the rights to Xena: the Warrior Princess, have yet to go after the numerous copyright violations involving what fans dub the "Xenaverse." The Universal approach is in sharp contrast to Fox Television and Viacom, both of whom resort to harsh cease-and-desist letters against unauthorized Web site creations by fans of such shows as "The X-Files," "Millennium" and "Star Trek." In order for a corporation to win a cease-and-desist order against a FanFic author, it would have to prove that it was suffering financial damage, something that is hard to prove since much of FanFic actually helps boost sales. This has helped motivate companies to go after ISPs. Being caught in the middle of the battle, ISPs will often put pressure on the FanFIc authors in order to avoid liability, a decision which often leaves FanFic authors without any choice but to remove the supposedly offending material. [back to notice text] Question: Where can I find the text of the U.S. Copyright Act? Answer: The federal Copyright Act may be found at http://www.loc.gov/copyright/title17/. [back to notice text] Question: Is FanFic an illegal act of copying? Answer: If a Fan Fiction author uses copyrighted elements in someone else's work in his/her story, then the fan fiction may be a derivative work. There are many elements of a work that an author can borrow. The law, however, does not clearly define whether fictitious characters, worlds, histories and names are copyright protected. [back to notice text] Question: What rights are associated with a movie or TV show? Answer: An audiovisual work can be covered by several overlapping "intellectual property" rights. These might include: Copyrights in the images, story, musical compositions, and sound recordings Trademark in the name of a series or producer Rights of publicity for the actors [back to notice text] Question: What are the basics of copyright law that could affect FanFic? Answer: Copyright is a limited monopoly provided by the laws of the United States (title 17, US Code; see the "Copyright" section) to the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following: copy (reproduce) the work; distribute the work; perform or display the work; and/or prepare new (derivative) works based upon the work. A sequel to a movie, Rocky IX for example, is a derivative work. When is a work copyright protected? A work must meet a number of requirements in order to receive copyright protection. First, all works are required to be "original" and "fixed in a tangible form." The originality requirement is low and it is normally met as long as the work is not a copy of another work. This means that if I come up with some character that resembles Superman without ever having seen or heard of Superman, then my creation is treated as original. Copyright protection for an original work is instantaneously or automatically secured when the work is first fixed in a tangible form. For instance, if I perform a Klingon death wail in a local park, my performance is not copyrighted since it is not fixed in a tangible form. Someone else may come along and do the same thing the next day. However, if I film the performance, then the film is copyrighted. Remember that ideas, facts and concepts are not copyrightable (since they are either not original or not fixed). A work might also be in the public domain if it was published before 1909 and the copyright has lapsed. So characters like Captain Nemo or Dr. Jekyll are in the public domain and are not copyrightable. Contrary to popular belief, one does not have to register her copyrighted work for it to receive copyright protection. In the United States, registration is only required for bringing a copyright suit. A work must also fit under one of several categories such as literary, musical and dramatic works in order to receive protection. These categories are extremely broad so practically all works can fit under some category. For example, computer programs and may be registered as "literary works" and maps and architectural plans may be registered as "pictorial, graphic, and sculptural works." What rights do copyright owners have? As mentioned above, copyright owners have the exclusive rights to reproduce, distribute, perform or display their works and also to prepare derivative works. These rights, however, only extend to the protected expression (protected expression refers to expression that is original and fixed, as mentioned above). So a well-developed original character, like Scarlett O'Hara, is copyright protected, but a common story line, boy meets girl, is not. For derivative works, protection only extends to new material. For example, imagine that a screenwriter creates a new adventure involving the Zeus, the Greek mythological god. The copyright of this movie might extend to the new plot and any new characters introduced (including new features of Zeus) but Zeus, as ancient mythology, is in the public domain and the screenwriter or her assignee cannot prevent another author from also using Zeus. Who owns the copyright? If the work is protected, then it becomes important to know who owns the copyright. A copyright can be owned by one author (the original author) or by several authors when the work is a joint work. If the work is a joint work, then all authors are co-owners and are treated like tenants in common, each having an independent right to use or grant a "non-exclusive" license. A corporation can also own works produced by its employees as "works for hire," or have creators assign copyrights to it. Thus, fan fiction authors could be dealing with individual authors such as Anne Rice or large corporations such as Fox or Viacom. Now that many fan fiction authors publish on the Internet, copyright holders (regardless of whether they are individual authors or corporations) can easily use search engines to discover their characters being used in unauthorized or unapproved ways. Many owners have tried to stop that use, and as a result, fan fiction authors have received letters telling them to take their stories off-line (See cease and desist letters). Is there an infringement? Even if there is a valid copyright, there is still the question of whether that copyright was infringed.? In order to prove infringement, the owner must show that the fan fiction author copied all or part of the original work (either through direct or indirect evidence), and that the copied elements are protected. In determining infringement, a court will separate unprotectible ideas from protectible expression. Not all elements of a copyrighted work are protectable.? For example, stock characters (the sidekick or the gay best friend) or plots (boy meets girl, aliens attack the Earth) are not protected.? Remember, ideas aren?t protected, but the way they are expressed is.? The more elements from some other work that your work incorporates, the more susceptible it is to a claim of infringement.? Of course, your story may depend on the fact that its about Captain Kirk or Agent Scully for its interest and importance. Besides copying, a fan fiction author might also violate a copyright holder's performance/display right. In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, the copyright holder has the right to perform the work publicly. To "perform" (or "display") a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible. Again, this is often interpreted broadly. What happens if I'm found to have infringed? If you are found to have infringed, then you might be subject to monetary damages, injunction and even possible criminal penalties. Is there an exception or defense? Even if there is infringement, then the author still may have an exception or defense available to her. For example, if an artist violates the performance/display right, an exception for classroom, religious or nonprofit performances may save her from liability. The most important defense for fan fiction authors, however, is "fair use." Under this doctrine, it is permissible to use limited portions of a work including quotes, for purposes such as commentary, criticism, news reporting, and scholarly reports. It is also possible for authors to create parodies (and perhaps satires as well) from protected works under fair use. For fair use to apply, the use must be for criticism, comment, new reporting, teaching, scholarship or research. Courts consider other factors as well, including purpose of use, nature of the copyrighted work, amount and substantiality of use, and whether there was economic harm to the original author. Whether the new work affects the market for the original work is usually the most important factor. [back to notice text] Question: What are the basics of trademark law that could affect FanFic? Answer: Any word, name, symbol or device which is used (or intended to be used), to identify specific goods and to distinguish those goods from items sold by others and which indicates the source of the goods is eligible for trademark protection. A fan fiction author who writes a new action novel involving Star Wars characters with "Star Wars" in the title could be liable for trademark violation since "Star Wars" is a mark owned and registered by LucasFilm Ltd. Is the mark protected? A mark must be "distinctive" in order to receive legal protection. Many marks are "fanciful". These marks, like "Xena" or "Hobbit" are inherently distinctive. Other descriptive marks like "Greyhound" may indicate a generic thing, the breed of dog, or a specific company, Greyhound Bus Lines. To receive protection, the trademark holder must show that an otherwise generic word, Greyhound or Apple, has acquired a secondary meaning in the eyes of the relevant purchasing public. Who owns the mark? A party claiming ownership of the mark must be the first user of the mark in trade, and then continue to use it thereafter. To use the mark in trade is to use it in way (often "affixing the mark to the good or service) that allows consumers to rely on it to identify and distinguish the good or service. Further, a mark must also be "used in interstate commerce" in order for it to receive federal protection (as opposed to common law or state protection). This requirement is usually easy to meet - shipping goods across (or even within) state lines will often satisfy. For example, Mickey Mouse as a trademark satisfies this requirement since it has been used across the country. What rights do trademark holders have? A trademark owner has the right to use exclusively, or to license the name or likeness of his character to avoid customer confusion and to prevent others from profiting off of the owner's intellectual property. For example, you can't market "Star Wars ray guns", because LucasFilm owns the right to that name, and customers may be confused into thinking that your ray gun is sponsored or produced by LucasFilm. This right is usually geographically limited to first user's area of use plus an amorphous area of expansion. A second user can often use the same mark in a different area with "good faith" (i.e., if the second user didn't know of the first use). Good faith and notice is very hard to prove. The rules change somewhat when a mark receives federal protection. With federal registration, there is "constructive notice of use," meaning a second user is presumed to know of the first user. But if it is the second user who registers the mark and receives federal protection, then the first user is allowed to use the mark in its limited area only. When is there a trademark infringement? The primary question in a case of alleged trademark infringement is whether there is a likelihood of confusion (not actual confusion) for customers. Some factors considered when answering this question include: similarity of appearance between the marks; similarity of sound; similarity of meaning; similarity of purchasers; similarity of marketing channels; sophistication of purchasers; evidence of actual confusion; manner of presenting the mark; strength of the mark; and similarity of products. There is another type of infringement, too, called trademark dilution. Under this doctrine, the owner of a famous mark is entitled to stop you from commercial use of a mark or trade name, if that use begins after the famous mark has become famous and harms its distinctive quality. Walt Disney has used this concept to stop pornographers from using Snow White or Sleeping Beauty in their films. Fan fiction authors who distribute their work commercially may be accused of trademark dilution in addition to other intellectual property violations. Is there a defense against infringement? Like copyrights, there are some defenses available to counter a trademark infringement. For example, a trademark action will not stop an author's deliberate parody of the mark. Also, a mark is no longer valid if it becomes generic or is abandoned. There is also a limited fair use defense under trademarks. What happens if I'm found to have infringed? If no defense is allowed, then injunctions and monetary damages are available against the infringer. Also, if "willful violation" is found, then treble damages might also be awarded. [back to notice text] Question: What does a request to "cease and desist" mean? Answer: A request to cease and desist is basically asking the party to immediately stop the infriging behavior and then permanently refrain from it. [back to notice text] Question: Does a cease and desist letter recipient have a duty to remove materials alleged to infringe copyright? Answer: The cease and desist letter gives its recipient ("you") notice that someone is claiming something you've done or something on your site infringes a copyright. If the materials that are the subject of the notice are in fact infringing, then you do have a duty to remove them, although there may be statutory provisions (DMCA Safe Harbor) that protect you from a lawsuit if the materials were posted by someone else. You may have to give the poster notice of the complaint. If you do not believe that the materials are infringing, or if you believe that you are making fair use of the materials, you may choose to take the risk of not removing the materials, but a lawsuit might follow in which the complainer tries to prove they they are right and you are wrong. If the accuser obtains a court order, then you must take down the materials. [back to notice text] Question: What are some examples of copyright actions against FanFic authors? Answer: ? Rocky IV: In Anderson v. Stallone, 11 U.S.P.Q. 2d 1161 (C.D. Cal. 1989), Anderson wrote a "treatment" called "Rocky IV" which he hoped would be turned into a sequel for Rocky III. In his work, previous characters such as Rocky Balboa, Adrian, Apollo Creed, Clubber Lang and Paulie were used and incorporated into a new story. The court held that this was a copyright violation in Stallone's characters since they were sufficiently delineated. In fact, it was held that "the Rocky characters are one of the most highly delineated group of characters in modern American cinema." Thus, the court had no problem ruling as a matter of law that the Rocky characters "are delineated so extensively that they are protected from bodily appropriation when taken as a group and transposed into a sequel by another author." ? TSR: [Editors Note: Thank you to one of our readers, who writes that the discussion of TSR below is outdated. "When WOTC took over, things got drastically better, even more so with the addition of the open gaming license and d20. WOTC now encourages people to create and share things relating to their games, subject to certain very reasonable rules. They've even gone so far as to create official unoffical logos." With this caveat, we've left the entry below because it illustrates copyright issues in this area.] TSR is the publisher of Advanced Dungeons & Dragons ("AD&D"), a RPG generally played by creating "characters" to participate in a "story", written by the "game master." These games use a set of rules to arbitrate what the characters may reasonably do and are set in a fictional universe either created by the game master or provided by TSR. Thus, they publish "basic rules" which contain some measure of fiction (such as magic spells) and "game mechanics" (such as "1 game scale inch = 10 feet"). They also publish "game worlds", which contain maps, major characters, and other fictional elements, but do not contain any actual stories for the players to participate in. They also publish various "rules additions", supplements, blank forms to record information, and various other items. In addition, they also publish pre-written "stories" called "modules" that describe people, places, things, and events a group of "characters" might encounter while pursuing their goals. During game play, participants create blank forms, characters, magical items and new spells. The game master creates new worlds, monsters and important third party characters for the players to interact with. And they also create scenarios and records of the player's exploits. Generally gamers share these player-created materials which are often made freely available. TSR has insisted that all these materials violate their copyrights. They have licensed a single ftp site to carry "approved" material, but required that the others remain closed and to include a disclaimer. Although TSR has not made any attempts to shut down various mailing lists that carry this material, nor have they prevented anyone for posting the material from the ftp sites to the Usenet newsgroup, it still remains to be answered whether their claims are valid. It does seem that parts of their claims are stronger than others, but in most descriptions, the "game mechanics" could easily be converted back into "real world" measurements. And much of the fictional material was published with the express intent of the purchaser creating these supplemental materials. It could be argued that the characters they publish are "stock" characters with little delineation. In fact, the entire point of a RPG is for gamers to delineate these characters. Further, blank forms would also likely be unprotected. The Copyright Office has promulgated a regulation prohibiting copyright in "[b]lank forms, such as time cards, graph paper, account books, diaries, blank checks, scorecards, address books, report forms, order forms, and the like, which are designed for recording information and do not in themselves convey information." 37. C.F.R. ?202.1(c). ? Tolkien's Middle-earth and languages: J.R.R. Tolkien, the author of The Hobbit and The Lord of the Rings trilogy, created the paradigm of a fantasy world with such an elaborate history that is it is hard to imagine that this Middle-earth could be left unprotected by copyright. A quintessential example of FanFic, two young Russian women in the early 1990s wrote the Black Book of Arda, which retells the events of the Silmarillion from the perspective of the evil characters Melkor and Sauron. Unlike Trekkers and Star Wars enthusiasts, however, this type of FanFic is rare for Tolkien fans. Yet, another form of Tolkien FanFic does provide an extremely interesting copyright question whose answer is unknown. In creating Middle-earth, Tolkien invented languages like Quenya and Sindarin with such detail that fans can actual learn them and write texts using them. This has spawned a whole breed of FanFic where authors write verses in these languages and inscribe them in Tolkien's calligraphy and publish them in literary magazines. Authors have even published manuscripts with dense analyses of Tolkien's texts and languages. This has caused Tolkien Estate Limited, the management of Tolkien's literary properties, to request such authors to cease and desist from publishing such texts. The essential question is: Can one copyright an invented language or just particular texts in that language? For many FanFic authors, it can be argued that a fair use exception should be allowed for such exceptionally obscure texts in an unknown journal for no profit. It is nonetheless important for FanFic authors to know the extent to which their actions could have legal ramifications. ? Distorted Barbies: Mark Napier, an innovative Web artist and culture critic, is the author of the site, The Distorted Barbie. "The site weaves text and visuals - including altered iterations of the famous face - into a pointed inquiry into the role of Barbie as an icon in modern life." As such, it is undoubtedly an example of a violation of Mattel's derivative right. Their reaction was to target Napier's ISP. Interport was sent a cease-and-desist letter, and subsequently, Napier received a similar letter which demanded that Napier remove the offending material. For more information, see Wired's "Cease and Desist Barbie" article in the "Related News" section. Arguably, Napier's use of Barbie is a fair use. He is using Barbie for criticism of society and the distortion of Barbie into "fat," "ugly" and "mentally challenged" Barbies can be considered to be a parody. As a parody, Mattel could not argue that there was market harm in the market of distorted Barbies (since they would never make distorted Barbies). This use is apparently noncommercial and the use was minimal in the sense that it was used only to conjure up the image of Barbie necessary for a parody. [back to notice text] Question: What are some examples of trademark actions against FanFic authors? Answer: ? Gandalf the Wizard Clown: This is another example involving the various rights related to Tolkien and his works. This case involves "Gandalf," the name of a wizard in Tolkien's The Lord of the Rings, and Michael Kaplan, a children's entertainer who performs at birthday parties in the New York area. The dispute arises from Kaplan's stage name: Gandalf the Wizard Clown. Although technically Kaplan might not be a FanFic author, this example is still important because there might be scenarios where fans do take on the persona of certain characters and "reenact" or "perform" different parts of a book, movie or play. In these cases, there might very well be a trademark violation. Unlike Kaplan, however, fans usually would not attempt to trademark a stage name or attempt to directly profit from any FanFic activities. Even before filming of The Lord of the Rings movie began, Kaplan's use of the name had reaped him much publicity. This is partly why large companies are willing to go after single individuals. With unimaginable opportunities in merchandising (like Star Wars), companies are more keen on protecting their interests. Kaplan insists the name Gandalf stems from ancient Scandinavian literature and was therefore not invented by Tolkien. But as a trademark issue, whether a word is in the public domain or not is not such an important distinction; the important issue is whether a mark is distinctive or generic in relation to a good or service. If the former, then it can be a valid trademark despite being in the public domain (see "Is the mark protected"). As the attorneys for Tolkien Enterprises explain, the derivation of the name is irrelevant; only the public perception of the name counts. After several years, the issue has finally be resolved through a mutual agreement. The resolution of the dispute between Kaplan and Tolkien Enterprises allows Kaplan to continue working as Gandalf. "Under the settlement, Kaplan will offer his Gandalf the Wizard Clown performance services and related products under license from Tolkien Enterprises," the statement read. "Other terms of the settlement are confidential." ? Harry Potter: Nancy Stouffer claimed she was the author of several works based on a set of characters called "Muggles," and brought an action against Scholastic Inc. and J. K. Rowling, the creator of the Harry Potter series, for trademark violations. Subsequently, the suit was dismissed and Stouffer fined after the District Court judge found that she had ``perpetrated a fraud on the court'' by altering documents after release of the first Harry Potter books. See Scholastic, Harry Potter Author Win `Muggles' Suit (Update2) for more details. Nonetheless, the legal rulings in the case illustrate one relationship between trademark law and fan fiction. One function of trademark law is to prevent a party from "falsely misrepresenting" the source of certain goods and services because this type of act would lead to consumer confusion and harm for the public and the real trademark owner. Section 43(a)(1) of the Lanham Act prohibits such false designations in two forms: "passing off," in which A promotes A's products under B's name, and "reverse passing off," in which A promotes B's products under A's name. In this example, "Stouffer's false designation of origin claim falls into the latter category, because [she] alleges that Rowling engaged in passing off Stouffer's marks, character names, and the illustrated likeness of 'L[H]arry Potter' as her own." In the context of literary works, reverse passing off claims generally consist of the "misappropriation of credit properly belonging to the original creator of the work." The court in Scholastic Inc., v. Stouffer, 124 F. Supp. 2d 836; 2000 U.S. Dist., stated that a successful reverse passing off claim must "establish (i) that the work at issue originated with the claimant; (ii) that origin of the work was falsely designated by the defendant; (iii) that the false designation of origin was likely to cause consumer confusion; and (iv) that the claimant was harmed by the defendant's false designation of origin." The court also notes that such a claim may be asserted whether or not a registered trademark is involved since Section 43(a) is violated by the use of any "symbol" as a "false designation of origin." [back to notice text] Question: Do plot synopses and reproductions of photographs infringe on copyrights? Answer: A plot synopsis may or may not infringe on a copyright, depending on whether the court finds that the use of original material is fair use. Photographs are protected by the copyright holder's rights to both reproduce and display his work, and this right may be violated by posting those photographs on the Internet.

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