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Posts Tagged ‘trademark’

To follow-up my last post, and in response to a couple of conversations I’ve had lately, I wanted to try to sharpen the picture regarding fair use. I recently told a friend and playwrite that using the fair use doctrine is like running a yellow light. It’s risky, you’re on the verge of having done something wrong, but if you did it “just so,” you did it right. When running a yellow light, it matters if a traffic authority sees you, and it matters what his or her perspective of you is. Outside influences can make a difference, a reckless driver who runs a yellow is more likely to get pulled over than someone who is doing everything above reproach except for running the yellow.

Running a yellow light is legal, running a red light is not. Fair use is legal, unauthorized derivatives are not. What makes for properly executed fair use? Read on.

Because I like examples, and because I like Batman, we’ll turn again to the Dark Knight as a test subject. Instead of fan art, however, we’ll look to the silver screen and consider Nicholas Cage’s Big Daddy from Kick-Ass. [SPOILER WARNING: I’m going to refer to details from Kick-Ass that give away some of the plot. If you haven’t seen it, read with caution. Also, see the movie, very funny, it may still be in some cheap shows and it hits DVD August 3].

First, the original work must qualify for copyright protection. As I previously wrote, copyright usually applies to specific works, but it is conceivable for highly distinctive characters to achieve a protected status. The Batman character as depicted in both comic and film qualifies as a protectable character.

Christian Bale as Batman in the most recent film. the visible features of Batman are part of the protected property: cape, cowl, utility belt, insignia. The idea of the man who dresses up as a bat because of a previous crime in which he lost family is also a part of the property.

Nic Cage as Batma... uh, Big Daddy in Kick-Ass. Cape, cowl, utility belt, the lack of insignia is all that's missing. Big Daddy shares a similar back story of losing a loved one to organized crime giving birth to a vendetta.

Copyright grants to the owner the exclusive right to make derivative works based on the original. If a second work is derived from the first, it must either be done with permission or be a fair use. The character Big Daddy, as depicted in the movie, borrows from many of Batman’s key elements. Yes, there are plenty of original elements to Cage’s portrayal, but the character is also clearly derived from DC’s iconic hero. Cage’s original elements will be key to the fair use analysis, but it doesn’t change the work from being a derivative, it’s just an allowed derivative.

Fair use is complicated and muddy, allowing courts a great deal of latitude, but the basic elements that will be considered are:

1. the purpose and character of the use

2. the nature of the original work

3. the proportion that was “taken”

4. economic impact of the “taking”

No one element is controlling. The elements are not taken individually, but rather in tandem with one another. A use could fail on two or more elements, but the great weight of the use could still favor finding it a fair one. Looking specifically to the use of Big Daddy.

1. Purpose and Character of use includes public vs. private and commercial vs. non-commercial. Private, non-commercial uses are more favored for fair use. Educational uses, especially non-profit ones, are favored. Parody use is favored. The more the second use “transforms” the original work, the safer it is. Big Daddy is a commercial, public use. Kick-Ass was distributed on a wide scale with the goal of turning a profit. However, Big Daddy is also a clear parody of Batman. The basic elements are taken, but then expanded, comic value is added. Big Daddy is ruthless toward the mob, just as Batman is, but unlike Batman, he uses guns. Big Daddy employs a fake mustache, lampooning the idea of changing appearances to fight crime – a great comic touch as Big Daddy has a regular mustache by day and an even bigger mustache in costume.

Big Daddy 1, Batman 0.5.

2. Nature of Original Work. This factor is tied closely to the fourth (economic impact). It basically asks when the first work was published. Social statement? Educational text? Mass-marketed to maximize profits? Batman may well be a social statement, but the franchise is just that, a franchise marketed for the purpose of making money. Neither DC or Warner Bros. (which owns DC and distributes the current run of movies) means for Batman to do anything for them but bring in the green.

Big Daddy 1, Batman 1.5.

3. Amount Taken. This is a critical factor for a parody, for a parody must take some for the target of the lampooning to be clear, but may not take too much or it simply making money on another person’s idea, rather than making money from making fun of another person’s idea. Big Daddy takes some of Batman’s core elements, but the character doesn’t take too much, only what is necessary for the audience to know “we’re mocking Batman,” The rest is original. If the target is well identified and the lampooning is well targeted, the taker can actually keep taking. For example, Nic Cage’s speaking cadence when in costume is taken from Adam West’s Batman in the 60’s television series. He took an element not needed to make the identification, but then he had fun with it. Another additional taking was the not-so-subtle reference to the Bat signal:

Big Daddy 2, Batman 1.5

4. Economic impact on the original. Often misunderstood, I have heard people say that so long as they aren’t making money, it’s a fair use. Not true. The question is not “are you making money?” It is “are they not making money because you usurped them?” One last complication, if they lose money because you spoiled the public’s taste for their product, you’re okay, the issue is are they losing money because you met the consumer’s need for the original. Kick-Ass and Batman are rival films vying for consumer dollars. Although not released in direct opposition, DVD sales, Netflix, and On-demand make the analysis worthwhile, if not crucial. Kick-Ass will probably enjoy some sales at Batman’s expense, but if it does, it will do so because people prefer it as a superhero movie or because Nic Cage has forever ruined people’s ability to take Christian Bale’s performance seriously. Both of those are okay. A court would not find that Kick-Ass fulfills people’s need for a “Batman Movie,” that’s the analysis, and Kick-Ass wins.

Big Daddy 3, Batman 1.5. Game Over. Fair Use. Don’t mess with Daddy!

Two points in closing.

First, if it isn’t obvious, I liked Kick-Ass. I got the joke. This makes a difference, just as a sports car is more likely to get pulled over than Volvos, it matters if a judge or jury likes the second use. It’s not fair, but it’s reality. This is one reason why utilizing a lawyer can benefit an artist claiming fair use. Lawyers specialize in framing issues in a way that court’s will find more palatable.

Second, I wrote about trademark fair use in a previous post, but it’s worth noting here that the line in Kick-Ass “he looked like Batman” is a trademark fair use of the “Batman” trademark. The line was talking about Batman, and isn’t likely to confuse the audience into thinking that Kick-Ass was in some way endorsed by DC or Warner Bros.

Parody is the easiest of fair uses to define and protect, but the basic analysis is the same in all instances. Purpose of second use, nature of original work, amount taken, economic impact. My educational use in this blog is subject to the same analysis, in my case: 1. education, non-profit use, 2. Batman & Kick-Ass both commercial original uses, 3. my clips and pictures were just large enough to emphasize my point, 4. no one is going to skip seeing either movie because my blog usurped the core property. I win.

An even simpler stating of the fair use analysis is “Transformative qualities vs. Economic impact.” Have fun, use fairly, drive safely.

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At the recent Stumptown Comic Convention in Portland, I had the chance to chat with comic artists about what basic questions of law they have. One artist asked if he created any liability for himself by drawing fan art sketches.

Fan art is a drawing based on a character, costume, or location that is made without permission by the original creator. A professional artist may consider it insulting to have their art referred to as “fan art.” I mean no offense, copyright law does not distinguish the work or professionals from amateurs and for the purpose of this blog, neither will I. The ability to create fan art is vital to comic artists both as a means of practicing to improve skill, but also to make money at conventions by drawing commissions for fans.

The practice is common, but is it legal? The short answer is a qualified maybe, which is about as good as you can get from a lawyer without specific facts. I think most artists are safe, but each situation will be different.

Batman with all his basic goodies: cape, cowl, insignia, utility belt, ennui (ennui not protected by copyright). Art by Jim Lee. I am using this copyrighted work under the fair use/educational purpose doctrine.

For the sake of discussion, I’ll use Batman as an example because he is well-known to any reader who would care about the answer and has very recognizable attributes to copy.

Before you can violate someone’s copyright, they must have one in the first place. A copyright is a set of rights available to authors of an original work in a fixed form. Each Batman comic book qualifies for copyright protection.  Each line of dialogue and panel of action are a part of that copyrighted work. Fictional characters can be copyrighted separately if they have substantially distinctive features. “Batman” qualifies for protection as a stand-alone character, but “thug #3” does not.

Batman is copyrighted, which means that only the author/rights holder (in this case, DC Comics), has the right to copy, display, distribute, and create derivative works. Fan art can be considered a derivative work, therefore most fan art is an infringement of DC’s copyright.

BUT, copyright law has a doctrine called “fair use” that (in the name of free speech) protects certain uses that would otherwise be an infringement. To find protection in fair use, a second work must be an artistically transformative use of the first, not have a great economic impact on the first, and not take too much of the first. A good piece of fan art is very transformative, giving us a new vision of a familiar character, so that factor could benefit the artist. The amount taken would probably not favor the artist, because one of the considerations is if the “core” elements are copied, which most fan art does. Economic impact would also not favor the artist, as DC could argue that the $60 the fan put down on the fan art could have instead gone towards the purchase of a licensed poster. The factors are not merely added up, however, so artist’s don’t lose 2-1. A truly transformative work may be protected. Fair use is a vague doctrine, giving courts great freedom in application. A good lawyer can make or break a free speech argument.

Mad magazine parody of Batman around the time of the 1989 movie release, used without permission.

Due to the U.S. love affair with free speech, Parody enjoys great protection. Well executed parody will steal just the right elements from the target to make the identity clear, then let the roast begin. Even if the “core” elements are copied and the economic value of the original is harmed, a parody is still protected. The irony is that fan art which seeks to honor the original work enjoys less protection than a work that insults it.

Fan art could also potentially violate the Batman trademark. Protection in the trademark realm covers the right to claim you are the rightful source of a good. Trademarks are violated when a second party markets goods in such a way that the consuming public could believe they are buying from the first party. Trademarks usually protect words or phrases and company logos, but can also extend to packaging (called trade dress). Fan art shouldn’t ordinarily violate trademark if the artist makes no claim to be associated with DC and isn’t marketing his or her own “Batman” comic. An artist can say that they once drew Batman for DC (so long as it’s true). I could see an artist getting in trouble if they tried to publish a collection of original Batman sketches in a bound volume with the words “Batman” on the cover. Such a collection would look more like a sanctioned publication.

An entirely different (and non-legal) reason for why DC doesn’t bring the pain on independent artists is that they have decided it’s in their best business interest to let it go. Comic book fans are a dedicated, if not rabid, bunch. They want to live in the world they read about. While that will never happen, getting a one-of-a-kind drawing from a favorite artist gives them a unique piece of that world. That fan, rather than cease purchasing Batman merchandise, will be drawn even further into the brand, buying all the comics and other merchandise, then seeing the Dark Knight five times, and then buying the DVD. Comic artists, freelancers that they are, also benefit from being allowed to make some side cash when DC doesn’t have a commission for them.

I can’t speak for DC, perhaps some of the reasoning I’ve outlined, plus the headaches of fighting over fair use, plus the desire to not be seen as creative fascists, combine to convince them to leave it alone. But with all this in mind, I offer the following suggestions to artists who want to draw original works based on others creations.

1. The more original your work is, the more protected you are. Be creative, that’s why you draw, anyway.

2. Be wary of mass production. The bigger you get, the bigger the target on you.

3. Don’t use the logo or trademarked name. People want the drawing, not the name, so don’t risk it.

“If you take my intellectual property, I will find you. Especially if you try to sue me.”

4. This should go without saying, but since someone did it, I’ll mention it. Don’t draw attention to yourself or intentionally aggravate the big boys. In 2002, artist Jeff Supon sued DC for copyright infringement of his “Black Bat” comic. In 1984, Mr. Supon sent DC some original sketches of his ideas of where he thought Batman should go next, apparently hoping to become a new artist for the company. DC never replied to Mr. Supon, and he relabeled the work “Black Bat.”  In 1999, after the release of “Batman Beyond,” he brought suit for  copyright infringement, claiming the new series incorporated the designs he submitted 15 years earlier. He got creamed. DC won its defence against his claim and won its counterclaim that his designs infringed their intellectual property. Bottom line, don’t wake the dragon.

I hope this helps. Keep doing what you’ve been doing and you’ll probably be fine. If a DC (or Marvel, or Dark Horse, etc.) representative ever approaches you and requests you stop making a particular drawing, be nice, hear them out, and decide if it’s worth it to you to fight back. If it is, seek the advice of an attorney who can give specific counsel to your circumstance.

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Nintendo shuts down fanmade Pokemon MMO.

An image from before Pokenet was taken down

Last week, Pokenet, a fan made online game that allowed players to login as Pokemon trainers and catch and trade Pokemon, turned off it’s servers after receiving a cease and desist letter from Nintendo. The event raises a few interesting legal questions.

First, is it correct to say, as the headline of the story did, that Nintendo “shut down” the site, or is that angry rhetoric from the online community? In a literal sense, in order for Nintendo to “shut down” Pokenet they would have either had to physically turn the servers off or obtained a court order commanding the developers to close up shop. A cease and desist letter doesn’t do either of these things. Nintendo’s attorneys told Pokenet that it was Nintendo’s opinion that Pokenet violated trademark or copyright rights and that if the site was not shut down, further legal action would follow. Pokenet didn’t have to comply. They could have retained an attorney and fought back. However, Nintendo is a massive company with an in-house legal staff and access to multiple powerful law firms. Pokenet was a collection of web developers creating a website in their spare time. The notion that they could have afforded a viable defense is laughable. So in that sense, yes, Nintendo shut down the site. It is worth remembering, though, that a cease and desist letter is not a court order and legal authorities will not act on it (that would require a temporary or permanent injunction), it’s a warning and a demand from one person to another (or multiple people). There have been David’s who have fought back against such Goliath’s in the past, often aided by talented attorneys looking to do some good for cheap.

A second question is whether or not Pokenet was in the wrong. Did they actually violate Nintendo’s trademark? The US Trademark & Patent Office grants protection for trademarks that are used in specific areas of commerce. I may, therefore, start lawfirm and call it Emerald City Law Group after my beloved Seattle. I could register the trademark for legal services. This registration would not stop someone from opening up an Emerald City music shop or bike store. I don’t own “Emerald City,” it’s a nickname for Seattle. Greater protection is given for names that are completely made up, such as Kodak or Bravia (or Pokemon). These words often receive a kind of global protection in that I couldn’t start a Kodak music shop or Bravia bike store, such names are so distinct that only the companies that coined them may use them. Looking at Pokenet, they lose on both considerations. The trademark “Pokemon” is registered for online video games and the word was made up. So, even if a kind hearted First Amendment attorney had wanted to take on Nintendo over the website, they would have lost.

Another question is why Pokemon went after Pokenet. The site didn’t charge users any money and only had 7,000 users at the time of shut down, so the “threat” posed to the core IPs and profits would seem to be minimal. Presumably, users of Pokenet are avid Poke-freaks who will still buy the games, collect the cards, and watch the show. Doesn’t Pokenet actually raise the profile of the brand? Why would the Elephant need to squash the bug? The first is that Pokemon holds a valid trademark and has the right to control the use of the mark in the video game space. If they deem it a business asset to be the only game in town, they may do so. Pokemon may someday want to launch such a program, but even if they don’t, they have the right to stop anyone else. Pokemon may have had reasons other than financial to shut Pokenet down, the game may have been subpar and made the brand look bad.

Another reason Pokemon went after Pokenet is the property doctrine of laches, which states that the true owner of a property may lose rights to the property if they don’t actively protect it when someone attempts to encroach. The doctrine has been ported to intellectual property, so Pokemon is forced to go after the small “trespassers” if they want to retain the right to go after the large ones.

One last irony is that if Pokenet had been a satire of Pokemon, rather than a faithful recreation, they would have stood on higher legal ground. Spoofing, satire, and commentary are protected under free speech. So if the developers at Pokenet wanted to do a build of the game “Pinch-and-Chew” instead of “Pikachu” and make fun of the original IP, they’d be fine. However, because they made a game that honored the core IP, they can’t fight back. This may seem like a backwards result, but sometimes that what the law gives.

*Note: I refer Nintendo and Pokemon interchangeably in this posting. The two companies are separate entities in the US, but as Nintendo’s legal department is much larger than Pokemon’s, the junior company uses the Big N for anti-piracy and similar type matters. Without seeing the cease and desist letter, it cannot be said if Nintendo, Pokemon, or outside counsel actually flexed the muscle in this case.

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In response to my last post, someone asked me if my hypothetical chef stealing the recipe’s would get in trouble under trademark for for claiming to be affiliated with the original chef. My response, as any good lawyer would do, was to tell him “it depends.”

Whether or not the use of another person’s trademark is legal depends on the type of use. Trademarks are words/pictures/etc. that identify the source of goods. Trademarks exist for the purpose of helping consumers know what they’re buying. If one prefers Sprite over 7up, the logo and words “Sprite” adorning the bottle will let that person know they’re getting what they want. 7up would be violating Sprite’s trademark if they put “Sprite” on their bottles, because the use would be likely to confuse consumers as to what they were buying. Likelihood of consumer confusion is the critical question of trademark infringement.

Free Speech in action

7up is perfectly free to have commercials with “taste tests” showing people choosing their drink over Sprite. The ad can talk about Sprite, use a can with a Sprite logo and show interviews with people talking about how much they hate Sprite. The reason is because of a the trademark doctrine of “Fair Use” which is based on our free speech rights here in the US. Sprite may not use its trademark to stop people, including competitors, from talking about them. Sprite can’t stop me from talking about them right now or using their trademark to make my point. I may be harming Sprite’s reputation, I may not be, but I am not confusing anyone that I am a Sprite spokesperson.

Returning to our chef. If “impostor chef” outright lies and claims to be “original chef” or uses the same restaurant name, he is infringing the mark. If he says “uses recipe’s from original chef” or “taste’s better than original chef” then he’s all good, just speaking his mind under the protection of the Constitution.

People have attempt to use Trademark to stop competitors from gaining advantages on a regular basis. One of my favorites was when Bumblebee Tuna attempted to stop a maker of tuna salad the salad was “made with Bumblebee Tuna.” They lost because the consuming public in that case was deli workers and they would know that the salad in question was not “Bumblebee Tuna Salad” but rather salad made “with Bumblebee Tuna.”

In another case, Playboy attempted to stop a former model from claiming she was a former “Playboy Playmate of the Year” on her website. This was an internet case and Playboy was concerned that seaches using the keyword “playboy” or “playmate” would find this model and not them. The court had none of it. The fact was that she was former Playboy Playmate of the year and she can say so as often as she likes.

There are other considerations when using another person’s mark that artists should be aware of. The biggest is that you risk pissing off the mark holder and, depending on your reason for using the mark, maintaining a good working relationship with the mark holder may be more important than your planned use. Spite and 7up are business competitors engaged in adversarial marketing, they’ll never be partners, so the uses can get as nasty as they want. The former Playmate, however, may have wanted to maintain a positive relationship with Playboy. Perhaps there are reunion opportunities for former Playmates that could have been positive for her career. Such invitations would likely dry up after she and Playboy took legal action against one another. As my business law professor said in law school, “You may sue your supplier, but even in you win, you’ll need a new supplier.”

Another consideration is where one can afford the cost a making a fair use defense. Even if you’re in the right, being dragged to court can get costly very quickly. I’ve often wondered if this is why reality shows like Mythbusters take steps to blur or cover logos from the products used in busting. Mythbusters is perfectly free to do a test and discover at what temperature a Twinky explodes. Such knowledge could even serve the public. Reality shows were invented to keep the budgets low, however (costs for writers and actors are nominal compared to other genres) and inviting litigation from Coke or Hostess just isn’t thrifty. The Mythbusters may also be aiming to not upset brands, as their show depend on ad revenue.

Free Speech in Hyper-Action

But, if you’re an artist and you don’t care what the big bad rights holders think of you, then feel free to toss your Barbie in a blender or make an animated short using every logo you can fit into one screen. The law is on your side.

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