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 Chilling Effects Clearinghouse > Fan Fiction > Notices > Dee's Dragonrider Art Gallery (NoticeID 143, http://chillingeffects.org/N/143) Printer-friendly version

Dee's Dragonrider Art Gallery

April 01, 1997

 

Sender Information:
Anne McCaffrey
Sent by: [Private]
JACOBS PERSINGER & PARKER

Recipient Information:
Dee Dreslough
[Private]


Sent via: email
Re: none

Dear Ms. Dreslough:

I represent Anne McCaffrey and recently had occasion to review your web page entitled "Dee's Dragonrider Art Gallery (Tables Version)". You have made clear in the text of your materials that the artwork appearing at this web site is inspired by and based upon Ms. McCaffrey's Dragonriders of Pernr series and you appear to understand fully the copyright and trademark rights reserved to Anne McCaffrey, by your reference to her works. You also seem to understand that you may be violating her rights by your statement found on your web site that "if mentioning my inspiration is something that can get me sued. . . oh well. If I've goofed, let me know where to fix and I will. sigh"

Indeed, you are seriously violating Anne McCaffrey's trademark and copyright rights by your efforts to copy her work (creating "derivative" works) and marketing them over the Internet. As you indicate, you have not received permission from Anne McCaffrey to do so and the mere fact that you disclaim such endorsement does not allow you to violate her rights. Moreover, by both displaying the artwork and permitting it to be downloaded over the Internet, you not only violate Ms. McCaffrey's rights, but you contribute to others violating her rights which is, in itself, a contributory copyright and trademark violation. We have, for example, confirmed that your pictures are being used by others. For example, David York gives you credit for graphics appearing on his Pern page.

By this letter, I am advising you that you must remove your art gallery from the Internet immediately. Should you fail to cease and desist from these copyright and trademark infringements, we will have no alternative but to proceed with a legal action for an injunction and damages, as allowable under the copyright and trademark laws. Anne McCaffrey has not hesitated to prosecute copyright and trademark violations against others who have violated her rights over the Internet. On her behalf, we have obtained substantial monetary
judgments, in those cases in the middle and low six figures, for such violations. Ms. McCaffrey takes these copyright and trademark violations seriously.

Please promptly confirm by return letter that you are complying with this demand. If you fail to do so, we will be required to take further action.

Very truly yours,
[Private]

cc: Anne McCaffrey (via facsimile)

 
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: 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: 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: Is FanFic an illegal act of creating derivative works?

Answer: Copyright owners have the right to prepare derivative works based on the copyrighted work. In most cases the right to prepare derivative works is superfluous since when this right is infringed, the right to reproduction will also be infringed. For example, if a FanFic author creates a new story about Darth Vader, the author will have infringed both the derivative right and the right to reproduce that character.

As with a violation of the right to reproduction, the plaintiff will also need to show that the FanFic author copied from the original and that the new story is substantially similar to the original in expression. To be an infringement, the derivative work must be "based upon the copyrighted work," which refers to "a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." Thus, to constitute a violation of section, the infringing work must incorporate some portion of the original work (see Distorted Barbie example below). For example, a detailed commentary on a work or a musical composition inspired by a book would not usually constitute infringements of this right.


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Question: How can marketing affect FanFic?

Answer: Copyright law gives an author the exclusive right to distribute to the public by sale or other transfer of ownership. This means that if a fan of Superman digitally scans images of Superman from comic books and makes them available on the Internet, then this marketing could be a violation of the right to distribute (regardless of whether it was for- or not-for-profit). (Note that if a fan purchases a copy of a Superman comic book legitimately, then the fan is free to sell of transfer that specific comic book without getting the prior consent of the copyright holder; this is called the "doctrine of first sale").

However, most FanFic works are not straight copies of another work; rather they are works that are often inspired by some book, movie or TV show. Therefore, most FanFic authors are worried about whether they have violated an author's exclusive right to reproduce or prepare derivative works, rather than distribution. In defense of their works, FanFic authors will often try to argue that their use constitutes fair use.

Marketing activities by the FanFic author can impact the issue of fair use. If the marketing activity is purely non-commercial, then this weighs in favor of the FanFic author.


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Question: What benefit does an author credit provide?

Answer: A credit serves as a disclaimer. Strictly speaking, disclaimers do not absolve an infringer from liability. However, disclaimers do serve an important function. Disclaimers explain the purpose and extent of the borrowing author's use and show that they recognize their "borrowing." Thus, disclaimers help appease original authors' fear that they will lose control over their works. The acknowledgment of the original source and ownership of the original work can reinforce the communal aspects of fandom and show that the borrowing authors respect original author's rights.


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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 is contributory infringement?

Answer: The other form of indirect infringement, contributory infringement, requires (1) knowledge of the infringing activity and (2) a material contribution -- actual assistance or inducement -- to the alleged piracy.

Posting access codes from authorized copies of software, serial numbers, or other tools to assist in accessing such software may subject you to liability. Providing a forum for uploading and downloading any copyrighted file or cracker utility may also be contributory infringement. Even though you may not actually make software directly available on your site, providing assistance (or supporting a forum in which others may provide assistance) in locating unauthorized copies of software, links to download sites, server space, or support for sites that do the above may contributorily infringe.

To succeed on a contributory infringement claim, the copyright owner must show that the webmaster or service provider actually knew or should have known of the infringing activity.


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Question: How likely is copying to be found (by a court) and what are the possible remedies?

Answer: As mentioned in the legal introduction (see "Is there an infringement?"), a plaintiff must meet certain requirements in order to show that a FanFic author copied protected expression. In order to prove copying, it must be shown that the fan fiction author copied the work (either through direct or indirect evidence), and some of the copied elements are protected and that the "audience" of the work would also find similar elements. Since FanFic authors generally do not deny that characters and settings are borrowed ("copied"), as seen in their disclaimers, it is likely that copying will be found. Then you must raise the defense of fair use.

What happens if I lose the case? If the court finds that you unlawfully copied, it has several possible options. First, and most likely, an injunction could be granted to prevent the author from publishing and distributing the FanFic. The infringing materials could even be destroyed. The court also has the power to award monetary damages. The amount of damages would depend on the lost revenue suffered by the copyright owner and possible profits earned by the FanFic author. Generally, the loss of revenue is rare since FanFic does not draw audiences away from the original; rather, FanFic often serves to enhance sales of the original work. And if FanFic is not for profit, then it is unlikely that the author will have any profits to report. Since there is seldom lost revenue and profits, plaintiffs will often go for "statutory damages." This award can be between $200 (innocent infringement) and $100,000 (willful infringement) for each work infringed.


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Question: What is fair use and how does it relate to Fan Fiction?

Answer: The fair use doctrine says that otherwise copyrighted works may be used for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. To decide whether a use is "fair use" or not, courts consider:

(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.

Parody is also fair use.

Under this doctrine, artists have been permitted to create and display their art even if it uses copyrighted works of others. See Court Allows Artist to Sell Barbie Art, for an example.

There is a strong argument that many fan fiction stories are transformative since they create a different persona and set of events for the character. To create a new story cannot be seen as the same as posting video clips on a website. There must be a balancing between protecting copyrights in order to encourage innovation by authors and between allowing works to be in the public domain to allow creative uses.

Whether a court will view this as the case for a particular work of fan fiction depends on how much of the story relies on copyrighted materials, whether the story is sold, or affects the market for the copyrighted work, and other factors. There is no easy answer to the question, which is why it is often a good idea to consult a lawyer who can assess the particular facts of your case.


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