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 Chilling Effects Clearinghouse > Fan Fiction > Notices > Caroline in the City Fan Fiction (NoticeID 1067, http://chillingeffects.org/N/1067) Printer-friendly version

Caroline in the City Fan Fiction

January 28, 2004

 

Sender Information:
CBS
Sent by: [Private]
CBS Law Department

Recipient Information:
[Private]
[Private]


Sent via: email
Re: CAROLINE IN THE CITY / Infringing materials

Dear [recipient]:

My name is [sender's name], and I am an attorney in the CBS Law Department. I am sending you this e-mail regarding your website www.sincereamore.com as a courtesy before taking any formal legal action. You website contains transcripts of episodes of CAROLINE IN THE CITY (the "Series"), as well as "fanfic" summaries of the episodes. While you may not have been aware of the applicable laws, I must inform you that your posting and distribution of the transcripts and fanfics infringes upon CBS's exclusive copyrights and trademarks in and to the Series.

CBS takes all infringement matters very seriously. Accordingly, our standard policy is to send a formal legal letter demanding that the infringing party immediately "cease and desist" from the illegal activity, and threatening all necessary legal action to compel compliance with applicable laws. However, in reviewing your website I see that you are a student, and artist and a big fan of the show. From what I can tell, it seems that you are operating the website for fun, and not for profit. This being the case, I thought I'd send you this informal e-mail first before taking any further action. CBS must insist that all transcripts and "fanfics" immediately be removed from your website (and any other websites where they may be stored or accessed). Please confirm immediately that you will comply with this instruction. I will also check your website within the next day or two to confirm that the infringing materials have been removed, in which case we will be happy to consider this matter closed.

We are actually quite happy to know that you are a fan of the show, and please understand that it doesn't bring us any pleasure to send legal letters to our fans. However, there are, unfortunately, occasions when one's enthusiasm for a particular show can unintentionally lead to problems. Luckily, this should be an easy problem to fix, and we look forward to closing this matter as soon as possible.

Sincerely,

[sender]
CBS Law Department

 
FAQ: Questions and Answers

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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.


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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.


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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.


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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/.


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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.


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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


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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:


  1. copy (reproduce) the work;

  2. distribute the work;

  3. perform or display the work; and/or

  4. 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.


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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.


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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.


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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.


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Question: What are some examples of copyright actions against FanFic authors?

Answer: [not yet answered]


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Question: What are some examples of trademark actions against FanFic authors?

Answer: [not yet answered]


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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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