Comics Startup 101 - The Infringement of Others' Intellectual Property - Part II, Trademark

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator

Part 8: The Infringement of Others' Intellectual Property - Part II, Trademark

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, the sixth post discussing ways to protect your intellectual property here, and the seventh post discussing infringement of the right of publicity here. Today, we'll discuss the infringement of another's trademark rights.

           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

The Infringement of Others’ Intellectual Property – Part II, Trademark

In my last post, I discussed the Winter brothers case, where DC Comics was sued for violating the musicians’ right of publicity. DC Comics was also sued for trademark infringement because of the origin story of their character Flex Mentallo. Charles Atlas, Ltd. ran well-known advertisements in comic books, including DC comic books, advertising their bodybuilding courses.[1] One of the well-known ads was a one-page comic strip story that shows a character named Mac being bullied.[2] Mac then takes the Atlas course, finds the bully and punches him, and “receives newfound respect, particularly from his female companion” and becomes the “hero of the beach.”[3]

In a 1992 issue of Doom Patrol, Flex Mentallo and his secret origin are introduced.[4] Mentallo’s origin story “explicitly mirrors the storyline of plaintiff's comic ad.”[5] The court noted that the story replicates key artwork and dialogue from the ad, and Mentallo wears swim trunks similar to those worn by Charles Atlas in his photographs that appear alongside the ad.[6] However, the comic continues by showing Flex Mentallo beating up the woman he was with and telling her “I don’t need a tramp like you anymore!”[7] When the Charles Atlas company discovered the character a number of years later, it eventually sued DC.[8] At the time of the lawsuit, the comic book issue in question, Doom Patrol #42, had not been republished or redistributed since its initial publication.[9] However, the Flex Mentallo character did appear in some subsequent issues of Doom Patrol and a miniseries.[10] After it received a cease-and-desist letter from Charles Atlas’ attorney, DC cancelled plans to distribute “a 1998 trade paperback that would have included the Flex Mentallo character[,]”[11] while also stating that they have “no present plans to reprint or redistribute any of the Doom Patrol issues in the Flex Mentallo series.”[12] DC prevailed in the lawsuit on a number of different legal grounds, but Flex Mentallo has not been used much since. However, in recent years, DC has republished the trade paper backs of Doom Patrol and the Flex Mentallo miniseries.[13] DC is also launching a new Doom Patrol title in late 2016 that looks like it might feature Flex Mentallo, almost two decades since his last appearance.[14]

Our lesson from the Flex Mentallo case: even if you think you are in the right, and you win your case, you still might be denied the use of a character you create if another person or entity believes it infringes their rights and is willing to sue over it. A court found the Flex Mentallo character to be protected under the First Amendment,[15] and it found there was not a likelihood of confusion between the Flex Mentallo character and Atlas’ ad.[16] However, one of the factors that seemed to sway the judge on the likelihood of confusion of the trademark claim was DC’s representations “that it has no intention to use the Flex Mentallo character again[.]”[17] Additionally, one of the issues DC prevailed on was that Atlas waited too long to file the lawsuit, and the claims arising from Doom Patrol #42 were barred by the statute of limitations.[18] Based on that particular issue, republishing or reissuing this comic could give rise to a new claim for trademark infringement against DC. Even though DC won the case, they have been hesitant to continue exploiting the character. We do not know if there was a settlement between the parties restricting DC’s use of Flex Mentallo, or if DC was hesitant to use the character so as to avoid having to fight another lawsuit over Flex Mentallo. We do know that DC let twenty years pass before Flex Mentallo was set to reappear in an original comic book story after this lawsuit.[19] 

Next week: The last post in the Comics Startup 101 series -- part III of intellectual property infringement.

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[1] Charles Atlas, Ltd. v. DC Comics, Inc., 112 F.Supp.2d 330, 331-32.
[2] Id. at 331.
[3] Id.
[4] Id. at 332.
[5] Id.
[6] Id.
[7] Id.
[8] Id. at 333.
[9] Id. at 332.
[10] Id.
[11] Id. at 333.
[12] Id.
[13] Weldon, Glen, New Year, New Changes; Also, FLEX MENTALLO! HERO OF THE BEACH!, Jan. 5, 2011, NPR.com, http://www.npr.org/sections/monkeysee/2011/01/05/132672533/new-year-new-changes-also-flex-mentallo-hero-of-the-beach (last visited April 25, 2016).  See also Cronin, Brian, Comic Book Legends Revealed #284, Oct. 29, 2010, http://goodcomics.comicbookresources.com/2010/10/29/comic-book-legends-revealed-284/ (last visited April 25, 2016).[14] Arrant, Chris, Doom Patrol Leads New DC Imprint by Gerard Way, April 07, 2016, Newsarama.com, http://www.newsarama.com/28744-doom-patrol-leads-new-dc-imprint-by-gerard-way.html (last visited June 27, 2016).
[15] Charles Atlas, Ltd., 112 F.Supp.2d at 339.
[16] Id. at  340.
[17] Id.                         
[18]Id. at 334.
[19] Arrant, Chris, Doom Patrol Leads New DC Imprint by Gerard Way, April 07, 2016, Newsarama.com, http://www.newsarama.com/28744-doom-patrol-leads-new-dc-imprint-by-gerard-way.html (last visited June 27, 2016).

Comics Startup 101 - The Infringement of Others’ Intellectual Property – Part I, Right of Publicity

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator

Part 7: The Infringement of Others' Intellectual Property - Part I, Right of Publicity

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, and the sixth post discussing ways to protect your intellectual property here. Today, we'll discuss the infringement of others' intellectual property.

           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

The Infringement of Others’ Intellectual Property – Part I, Right of Publicity

            You’ve done your clearance search, and you’ve started your comic. You’re in the clear, right? Not necessarily. Even though you may think you’re clear, it is possible someone may believe that you are still infringing on their intellectual property. If this happens, you will most likely receive a cease and desist letter from an attorney threatening you with legal action and demanding you stop the infringing activity, provide an accounting of money earned, and all sorts of other nasty sounding language. It is important that you do not ignore this letter. When you receive a cease and desist letter, immediately take it to your attorney. Your attorney will be able to evaluate the merits of the demands being made and guide you in how to respond. Failing to take a cease and desist letter seriously could worsen the situation and escalate the problem.

            In previous posts, I’ve mentioned and discussed a few notable cases from the comic book world, some of which involve infringement of intellectual property. Now, we’ll highlight a few more lawsuits dealing with infringement of intellectual property that are interesting and informative.

            The first two cases we’ll look at both involve the right of publicity. The first case involves DC Comics and the singing duo the Winter brothers. In the 1990s, two new characters were introduced to the Jonah Hex miniseries named Johnny and Edgar Autumn.[1] The Autumn brothers were depicted with “pale faces and long white hair.”[2] The Winter brothers, musicians known for their distinctive albino-like appearance, sued because they felt their names and likenesses were being used and falsely portrayed them as “‘vile, depraved, stupid, cowardly, subhuman individuals who engage in wanton acts of violence, murder and bestiality for pleasure and who should be killed.’”[3] The court decided for DC Comics and found that the comics containing the Autumn brothers “do contain significant creative elements that transform them into something more than mere celebrity likenesses.”[4] Our second case once again involves Todd McFarlane and was decided at about the same time as the Winter brothers case. In McFarlane’s Spawn comic book series, he introduced a character named Anthony “Tony Twist” Twistelli.[5] The Spawn character “is a Mafia don whose list of evil deeds includes multiple murders, abduction of children and sex with prostitutes.”[6] In the letters columns of Spawn and in an interview in Wizard Magazine, McFarlane acknowledged that the “Tony Twist” character was named after the NHL player Anthony “Tony” Twist.[7] During trial, evidence was introduced that McFarlane marketed Spawn to hockey fans by producing “hockey pucks, hockey jerseys and toy zambonis” bearing the Spawn logo.[8] McFarlane “sponsored ‘Spawn night’ at a minor league hockey game, where McFarlane personally appeared and distributed Spawn products, including products containing the ‘Tony Twist’ character.”[9]  The court found that McFarlane’s use of Tony Twist’s name “was predominately a ploy to sell comic books and related products rather than artistic or literary expressions,” and was therefore a violation of Twist’s right of publicity.[10] After a second trial on these issues, a jury awarded Twist $15 Million in damages.[11] It was later reported that the case was settled for $5 million.[12]

            What can you take away from the Winter brothers and Tony Twist cases? Be careful when you choose to use someone’s likeness in your comic. Even if you think it is a parody, entitled to fair use, or protected by the First Amendment, it could still lead to a long, costly legal battle with an outcome that can be very uncertain. As I’ve stated before, the right of publicity varies from state to state, and the primary difference between the two outcomes in these cases hinged on the tests the state courts decided to apply.

Next week: Part II, Trademark

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[1] Winter v. DC Comics, 134 Cal.Rptr.2d 634, 637-38. (Cal. 2003).

[2] Id. at 637.

[3] Id. at 638.

[4] Id. at 637.

[5] Doe v. Tci Cablevision, 110 S.W.3d 363, 366 (Mo. 2003).

[6]Id.

[7] Id. at 366-67.

[8] Id. at 367.

[9] Id.

[10] Id. at 374.

[11] Doe v. McFarlane, 207 S.W.3d 52, 56 (Mo. App. 2006).

[12] ICv2.com, ‘Twist Case Settled,’ Feb. 18, 2007, http://icv2.com/articles/comics/view/10104/twist-case-settled (last visited April 22, 2016).

ComixLaunch Podcast

            I want to thank Tyler James for having me as a guest on his ComixLaunch podcast. We had a great discussion about contracts, Kickstarter, and other legal issues comic book creators might face. Here’s the link:  http://www.comixlaunch.com/session051/. Give it a listen. 

            Also, if you want to know more about navigating successful Kickstarter and crowdfunding campaigns for your comic book, you should probably be listening to this podcast series. 

Comics Startup 101 - Protecting Your Intellectual Property

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator

Part 6: Protecting Your Intellectual Property

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, and the fifth post discussing an overview of intellectual property here. Today, we will discuss ways to protect your intellectual property.

           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

Protecting Your Intellectual Property

1)      Copyright

            As I mentioned in the Intellectual Property Overview post, a copyright is any “original works of authorship fixed in any tangible medium of expression.”[1] The comic that you are creating, when finished and offered for sale, is a copyrighted work, and the entire work is protected under U.S. copyright law.

            An important decision will need to be made about if and when you want to apply for copyright registration with the U.S. Copyright Office. You may register a copyright at any time. However, you must register it within three months of its first publication in order to be granted full copyright protection, including statutory damages. If you register a work after this time-frame, you are only entitled to actual damages. The cost to register a copyright can vary from as little as $35 to as much as $85 or more, depending on the work you are seeking to register and depending on the method you choose to register, i.e., electronic versus paper registration. If you can afford to register your work with the Copyright Office, it is best to do so as soon as the work is published. 

2)      Trademark

            When starting your new business and comic, you may be creating trademarks. If you have adopted a business name, it might be a trademark. For example, Marvel,[2] DC,[3] Image,[4] and Top Cow,[5] all are registered trademarks.

            In addition to your business, the title of the comics you are publishing may be entitled to trademark protection. Some recent examples of trademarked titles from Robert Kirkman’s stable of comics include The Walking Dead,[6] Thief of Thieves,[7] and Super Dinosaur.[8]

            If your comic becomes successful enough that you start to produce merchandise bearing your creations, then you may be able to register additional trademarks associated with those goods. For examples, see the discussion of the Superman trademark registrations in the Intellectual Property Overview post. 

            As stated above, you may register a trademark with the USPTO at any time. Before you start publishing your comic, you may also file an intent-to-use application to reserve your rights to your prospective trademarks. You may also file at any time after you have begun to use the trademark in commerce. Keep in mind, however, that federal trademark registrations can be costly. The filing fee per class of goods or services is $325 or higher, and there are additional fees for the renewals of your trademark.[9] This is in addition to any attorney fees you may encounter, and if there are issues registering your trademark, the cost could escalate even higher.

3)      Domains

            Generally speaking, domain names are not considered intellectual property, but I believe they play an important role in today’s intellectual property protection and enforcement strategies. In my post on doing a clearance search, I mentioned that you should check domain registries as part of your clearance search. This will help identify possible existing conflicts. At the same time, if you are committed to using the names you have selected for your comic and your business, this is a great time to lock up those domains. You do not want someone else coming along later and registering a domain using the name of your comic or business. While it is possible to challenge a later registration, it can be costly, time-consuming, and it is not always possible to recapture a domain. If you can afford it, it is best to spend the money early and secure the domain name rights to the names you are planning to use for your comic and your business.

Next week: Part 1 of Infringing Others' Intellectual Property

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[1] 17 U.S.C. §102(a).

[2] Trad. Reg. No. 0870506, Registered June 3, 1969.

[3] Trad. Reg. No. 1003409, Registered January 28, 1975.

[4] Trad. Reg. No. 1884871, Registered March 21, 1995.

[5] Trad. Reg. No. 2120058, Registered December 9, 1997.

[6] Trad. Reg. No. 4443715, Registered December 3, 2103.

[7] Trad. Reg. No. 4430107, Registered November 5, 2013.

[8] Trad. Reg. No. 4149779, Registered May 29, 2012.

[9]See Trademark Processing Fees, USPTO, http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#TM%20Process%20Fee (last visited April 21, 2016).

The Star Trek Fan Film 10 Commandments

I'm going to take another break this week from my Comics Startup 101 series to tackle the new Star Trek Fan Film Guidelines released by CBS and Paramount. The Comics Startup 101 series will return next week addressing protecting your intellectual property.

The Impact of the Star Trek Fan Film 10 Commandments

I recently blogged about the legality of fan art, and you can find that post here. One of the main takeaways from my last post on fan art is that I believe it to be in violation of an IP owner’s rights. However, unless the fan art is being sold, most IP owners would not feel the need to sue or otherwise take actions against a fan artist. A few days after my last post on the fan art question, CBS and Paramount, the studios controlling the rights to Star Trek, announced ten “Guidelines for Avoiding Objections” fan film creators can follow in order to avoid the legal wrath of the studios. These Fan Film 10 Commandments, as I like to call them, are a great tool for determining how far is too far when using IP you don’t own for fan art, fiction, films, etc.

The guidelines were released as a reaction to a lawsuit filed by the studios against producers attempting to create a high-quality, feature-length Star Trek film set before the original Star Trek series titled Axanar. You can find more background information on the lawsuit here, but one of the key facts to keep in mind is that this unlicensed fan film had raised more than $1 Million through crowdfunding. Even though CBS and Paramount have allowed fan films and fan series to be produced in the past without legal challenge, they apparently felt the planned Axanar film went too far. After a bit of a backlash from the Star Trek fan community, including a harsh statement from the director of Paramount’s upcoming Star Trek Beyond film, the studios released a set of guidelines for fans to follow in order to prevent the studios from objecting or taking legal action against the fan-created films.

Here are the “Guidelines for Avoiding Objections”:

1)      The fan production must be less than 15 minutes for a single self-contained story, or no more than 2 segments, episodes or parts, not to exceed 30 minutes total, with no additional seasons, episodes, parts, sequels or remakes.  

2)      The title of the fan production or any parts cannot include the name “Star Trek.” However, the title must contain a subtitle with the phrase: “A STAR TREK FAN PRODUCTION” in plain typeface. The fan production cannot use the term “official” in either its title or subtitle or in any marketing, promotions or social media for the fan production.

3)      The content in the fan production must be original, not reproductions, recreations or clips from any Star Trek production. If non-Star Trek third party content is used, all necessary permissions for any third party content should be obtained in writing.

4)      If the fan production uses commercially-available Star Trek uniforms, accessories, toys and props, these items must be official merchandise and not bootleg items or imitations of such commercially available products.

5)      The fan production must be a real “fan” production, i.e., creators, actors and all other participants must be amateurs, cannot be compensated for their services, and cannot be currently or previously employed on any Star Trek series, films, production of DVDs or with any of CBS or Paramount Pictures’ licensees.

6)      The fan production must be non-commercial:

·         CBS and Paramount Pictures do not object to limited fundraising for the creation of a fan production, whether 1 or 2 segments and consistent with these guidelines, so long as the total amount does not exceed $50,000, including all platform fees, and when the $50,000 goal is reached, all fundraising must cease.

·         The fan production must only be exhibited or distributed on a no-charge basis and/or shared via streaming services without generating revenue.

·         The fan production cannot be distributed in a physical format such as DVD or Blu-ray.

·         The fan production cannot be used to derive advertising revenue including, but not limited to, through for example, the use of pre or post-roll advertising, click-through advertising banners, that is associated with the fan production.

·         No unlicensed Star Trek-related or fan production-related merchandise or services can be offered for sale or given away as premiums, perks or rewards or in connection with the fan production fundraising.

·         The fan production cannot derive revenue by selling or licensing fan-created production sets, props or costumes.

7)      The fan production must be family friendly and suitable for public presentation. Videos must not include profanity, nudity, obscenity, pornography, depictions of drugs, alcohol, tobacco, or any harmful or illegal activity, or any material that is offensive, fraudulent, defamatory, libelous, disparaging, sexually explicit, threatening, hateful, or any other inappropriate content. The content of the fan production cannot violate any individual’s right of privacy.

8)      The fan production must display the following disclaimer in the on-screen credits of the fan productions and on any marketing material including the fan production website or page hosting the fan production:
“Star Trek and all related marks, logos and characters are solely owned by CBS Studios Inc. This fan production is not endorsed by, sponsored by, nor affiliated with CBS, Paramount Pictures, or any other Star Trek franchise, and is a non-commercial fan-made film intended for recreational use.  No commercial exhibition or distribution is permitted. No alleged independent rights will be asserted against CBS or Paramount Pictures.”

9)      Creators of fan productions must not seek to register their works, nor any elements of the works, under copyright or trademark law.

10)  Fan productions cannot create or imply any association or endorsement by CBS or Paramount Pictures.

As you can tell from the guidelines, Commandment 6, with its six subsections, seems to be pretty important. Basically, the primary thing that will attract the attention and ire of an IP rights holder is trying to profit from their IP. If they are not followed, the other two Commandments that are likely to trigger a response from rights holders are 7 and 9. If a rights holder believes the fan art is harmful to the reputation of its IP, then it will probably act. A rights holder will also act if it believes someone is trying to obtain rights to its works.

           Commandments 1 through 5 seem to apply only to Star Trek related fan films, but they may prove instructive. If your work is substantial enough to pose a financial threat to the rights holder’s authorized works, then it will probably cause them to act. Additionally, if your work incorporates elements that could create confusion as to whether or not it is authorized (e.g., clips from the show, actors associated with the show, or misrepresents who is creating it), then it may force them to act.

What does the CBS/Paramount Fan Film 10 Commandments mean for fan film, fan fiction, and fan art going forward? While I am certain some fans will find these guidelines to be drastic and overbearing, I actually think they help shed light on how IP rights holders view unauthorized use of their intellectual property and are very instructive in gauging the risk of creating fan art, fan fiction, and fan films. While not every rights holder will be as permissive as CBS and Paramount, these Commandments offer clear guidance as to what will be allowed, and I’m guessing other companies use similar criteria in their decision making.

Comics Startup 101 - Intellectual Property Overview

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator

Part 5: Intellectual Property Overview

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here. Today, we will give a brief overview of intellectual property law that impacts comic book creators.

As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need. 

Intellectual Property Overview

As a creator, you should be aware of the laws relating to intellectual property. Generally speaking, there are three areas of intellectual property law – patent, copyright, and trademark. A fourth area of law, right of publicity, is sometimes lumped in with intellectual property rights even though it arises from a person’s right to privacy. In all likelihood, you will not have to worry about patents as you create your comic, and we will not discuss them here. Copyright, trademark, and right of publicity law will be important to you.

          Copyright protection is granted by federal law.[1] It protects “original works of authorship fixed in any tangible medium of expression.”[2] Included works of authorship are “(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.”[3] The Copyright Act grants exclusive rights to the creator of the work for the life of the creator plus seventy years,[4] or 95 years from the date of first publication or 120 years from the date of creation, whichever is shorter, for works made for hire, anonymous and pseudonymous works.[5] Technically, you do not need to register your copyright.[6] However, in order to enjoy the full benefits of copyright protection, you must register your copyrighted work with the U.S. Copyright office within three months of publication of the work.[7] Some of the benefits of registration include 1) a public record of your copyright claim, 2) statutory damages and attorney’s fees in an infringement lawsuit (if registration is filed within three months of publication), 3) and the ability to prevent the importation of infringing copies of your work.[8] A copyright registration may be filed with the Copyright Office at any time during the term of copyright protection, but there are certain benefits to registering early within the copyright term as we discussed above.[9]

            Trademarks are used as source indicators for goods and services (also known as service marks).[10] Trademark rights can be protected as long as your trademark is in use, and, if the mark is registered with the USPTO, you have filed all the required documents showing continued use.[11] Trademark rights arise from use in commerce.[12] Generally speaking, the first person or company to use a trademark for their goods or services has acquired some rights to prevent others from doing so, even if the trademark is not registered with the USPTO.[13] In order to have the broadest protection available, a trademark should be registered with the USPTO. The benefits of registering a trademark with the USPTO include “[p]ublic notice of your claim of ownership of the mark; [a] legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; [t]he ability to bring an action concerning the mark in federal court; [t]he use of the U.S. registration as a basis to obtain registration in foreign countries; [t]he ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; [t]he right to use the federal registration symbol ®; and [l]isting in the United States Patent and Trademark Office's online databases.”[14] It is important to note, however, that in order for a trademark to be registered with the federal government, it must be used in interstate commerce.[15] It is possible for an image or logo to be eligible for both trademark and copyright protection.[16] For example, Superman’s S shield arose as a copyrightable image/design, but it has also become an indicator of goods and services for DC Comics and a registered trademark for belt buckles,[17] toys,[18] sporting goods,[19] electronic games,[20] motion pictures,[21] comic magazines,[22] and many other types of goods. So, it is both copyrighted and a trademark.

            The right of publicity is the final area of law you will need to be aware of as a creator. Even though the right of publicity might not technically be an intellectual property right, it is nonetheless lumped in with these for good reason. It arose out of a person’s right to privacy.[23] However, as the law developed over time, it was accepted that in addition to a right to privacy, a person has a right to control how their likeness was exploited for financial gain.[24] The right of publicity allows someone, typically a celebrity, to control how their image or likeness is exploited for commercial purposes.[25] The right of publicity has been adopted in some form in over half of the states.[26] The right differs from state to state and can apply to “sound alikes; look-alikes; use of the celebrity’s nickname in a fictional work; use of address; statues; and the use of a robot that barely resembles the celebrity but evokes her image.”[27] Generally speaking from my own experience, the right of publicity is a very broad legal doctrine that can pose serious problems for creators trying to evoke the likeness of a living person or celebrity.

Next week: Protecting your intellectual property.

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[1] U.S. Copyright Office, Copyright Basics, http://www.copyright.gov/circs/circ01.pdf (last visited April 15, 2016).

[2] 17 U.S.C. §102(a).

[3] Id.

[4] 17 U.S.C. §302(a).

[5] Circular 15a, Duration of Copyright, 1, U.S. Copyright Office,  http://www.copyright.gov/circs/circ15a.pdf (last visited May 24, 2016)..

[6] 17 U.S.C. §408(a).

[7] 17 U.S.C.  §407(a).

[8] U.S. Copyright Office, Copyright Basics, http://www.copyright.gov/circs/circ01.pdf (last visited April 15, 2016).

[9] See Id.

[10] What is a trademark?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[11] How long does a trademark registration last?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[12] Must I register my trademark?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[13] What are “common law” rights?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[14] What are the benefits of federal trademark registration?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[15] See What is “interstate commerce”?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[16][16] See What is a copyright?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[17] Trad. Reg. No. 4656403, Registered Dec. 16, 2014.

[18] Trad. Reg. No. 2211378, Registered Dec. 15, 1998.

[19] Id.

[20] Id.

[21] Trad. Reg. No. 2226415, Registered Feb. 23, 1999.

[22] Trad. Reg. No. 1173150, Registered Oct. 13, 1981.

[23] Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stanford Law Review 1161, 1167-73 (2006).

[24] Id at 1167-74.

[25] Id at 1174.

[26] Id.

[27] Id. At 1174-75 (internal citations omitted).

Is fan art legal?

I'm going to take a quick break this week from my Comics Startup 101 series to answer a question I've seen asked a lot lately.

Is fan art legal?

            Being an intellectual property lawyer who is passionate about comics, one of my pastimes at conventions is to walk artist alley and the exhibition hall floor and guess who is selling prints and merchandise bearing unauthorized images of characters and actors. Whenever I have hosted my Comics Startup 101 panels at conventions and we start talking about intellectual property, the question of whether fan art is legal frequently comes up. The short answer, in my opinion, is no.

However, let’s take a more nuanced look at the reasons why I feel this way. Just to make sure we are all on the same page, when I speak of fan art, I am talking about art generated by a fan of a particular character, story, movie or other medium that is created without authorization from the owner of the property being depicted or from the person being depicted.

             In order to determine whether fan art is legal under intellectual property laws, we have to look at copyright, trademark, and right of publicity laws. Below, I am going to briefly discuss these areas of law as they relate to fan art. Keep in mind that these are very complex areas of law that can fill entire books. What I will be discussing here is just a brief overview.

              Copyright protection is granted by federal law.[1] It protects “original works of authorship fixed in any tangible medium of expression.”[2] Included works of authorship are “(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.”[3] The Copyright Act grants exclusive rights to the creator of the work for the life of the creator plus seventy years.[4]  Of particular interest to our discussion are the copyright owner’s exclusive rights to reproduce his work[5] and to create derivative works based on his original work.[6]

            Trademarks are used to identify the source of goods and services.[7] Trademark rights arise from use in commerce, [8]  and they can be protected as long as your trademark is in use.[9] Generally speaking, the first person or company to use a trademark for their goods or services has acquired some rights to prevent others from doing so, even if the trademark is not registered with the U.S. Patent and Trademark Office (“USPTO”).[10] In order to have the broadest protection available, a trademark should be registered with the USPTO. It is important to note, however, that in order for a trademark to be registered with the federal government, it must be used in interstate commerce.[11]

Of particular interest to our discussion, it is possible for an image or logo to be eligible for both trademark and copyright protection.[12] For example, Superman’s S shield arose as a copyrightable image/design, but it has also become an indicator of goods and services for DC Comics and a registered trademark for belt buckles,[13] toys,[14] sporting goods,[15] electronic games,[16] motion pictures,[17] comic magazines,[18] and many other types of goods. So, it is both a trademark and protected by copyright.

            The right of publicity is the final area of law we need to discuss. Even though the right of publicity might not technically be an intellectual property right, it is nonetheless lumped in with these for good reason. It arose out of a person’s right to privacy.[19] However, as the law developed over time, it was accepted that in addition to a right to privacy, a person has a right to control how their likeness is exploited for financial gain.[20] Therefore, the right of publicity allows someone, typically a celebrity, to control how their image or likeness is used for commercial purposes.[21] The right of publicity has been adopted in some form in over half of the states.[22] The right differs from state to state and can apply to “sound alikes; look-alikes; use of the celebrity’s nickname in a fictional work; use of address; statues; and the use of a robot that barely resembles the celebrity but evokes her image.”[23] The right of publicity is a very broad legal doctrine that can pose serious problems for creators trying to evoke the likeness of a living person or celebrity.

            Based on what we’ve discussed above, I believe most fan art to be a violation of intellectual property laws. Typically, we have a fan creating an image of a popular character, such as Iron Man, without the permission of Marvel. Even though the fan’s image may be distinct from other interpretations of Iron Man in the past, a copyright holder has the right to reproduce their works and to create derivative works. It is my belief that a fan creating an unauthorized Iron Man image is in violation of Marvel’s copyright rights. Additionally, because Marvel licenses Iron Man’s image for use on merchandise, the fan could be in violation of Marvel’s trademark rights. If the fan is selling copies of their art, then the question of whether it violates Marvel’s rights is even easier to decide in Marvel’s favor. The right of publicity comes into play if this fan art is of Robert Downey, Jr.’s Iron Man. Not only would the fan be in violation of Marvel’s intellectual property rights, he could also be in violation of RDJ’s right of publicity.

            If you are going to create fan art, then you should tread carefully. In all likelihood, drawing an image of your favorite character and posting it online will not get you sued. It’s generally not in large media companies’ interests to go after fans. If anything, you might get a request to remove the image. However, if you are creating unlicensed fan art and selling it online or at conventions, the risk of legal trouble increases greatly.

            You might be asking, “What about fair use?” It is true that fair use is a limitation on a copyright holder’s exclusive rights. If a work of art qualifies for the fair use exception, then it is found to not infringe another’s copyrighted material. The language of the statute reads:

    

“…[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— 

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”[24]

Fair use is a strong defense against a copyright infringement claim. However, you may have to go to court to assert it, which could be costly, and it is not always consistently applied, which makes it difficult to predict an outcome. Relying on fair use to save you is not the best idea.

            So, is fan art legal? Unless your work qualifies for fair use under the copyright act and doesn’t infringe on any trademark or right of publicity rights, then it might be. However, your typical artist alley renderings of Iron Man, Benedict Cumberbatch’s Sherlock Holmes, or all of the Doctors are most likely going to be found an infringement. Draw carefully.          

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[1] U.S. Copyright Office, Copyright Basics, http://www.copyright.gov/circs/circ01.pdf (last visited April 15, 2016).

[2] 17 U.S.C. §102(a).

[3] Id.

[4] 17 U.S.C. §302(a).

[5] 17 U.S.C. §106(1).

[6] 17 U.S.C. §106(2).

[7] What is a trademark?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[8] Must I register my trademark?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[9] How long does a trademark registration last?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[10] What are “common law” rights?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[11] See What is “interstate commerce”?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[12][12] See What is a copyright?, United States Patent and Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs (last visited April 18, 2016).

[13] Trad. Reg. No. 4656403, Registered Dec. 16, 2014.

[14] Trad. Reg. No. 2211378, Registered Dec. 15, 1998.

[15] Id.

[16] Id.

[17] Trad. Reg. No. 2226415, Registered Feb. 23, 1999.

[18] Trad. Reg. No. 1173150, Registered Oct. 13, 1981.

[19] Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stanford Law Review 1161, 1167-73 (2006).

[20] Id at 1167-74.

[21] Id at 1174.

[22] Id.

[23] Id. At 1174-75 (internal citations omitted).

[24] 17 §107.