Rewriting TV: Fanfiction as Fair Use – Part III

Previous: Fair Use

III. The Corporate Interest: Copyright Rights and Infringement

Fans are the first ones to acknowledge that they do not own the characters they play with in their fiction. Every fanfic starts with a disclaimer along the lines of,

Stargate SG-1 and its characters are the property of Showtime/ Viacom, MGM/UA, Double Secret Productions, and Gekko Productions. I do not own the characters and indeed am only playing with them for a little while. I am not making any money from this and I’m still paying for everything I own so there’s very little point in suing me. No copyright infringement whatsoever is intended. The story is for entertainment purposes only. At least I hope it’s entertaining. The original characters, situations and story are mine. Please check with me first if you want to archive or link to this story.1

The fans know that they are appropriating media texts which belong to others, but they seek to find ways to legitimate this appropriation. They have their own “moral economy.”2 They often style themselves as loyalists rather than infringers, and they see their work as striving to save the property to protect it against abuse from the media conglomerates who claim to own it.3 At the same time that they acknowledge ownership over the characters and basic scenario set-ups, the fans resist the traditional property rights of producers in favor of a reader’s right of free play with the material:

I still don’t agree with the concept that property rights over fiction…include any rights of the author/producer to determine how readers or viewers understand the offering…Fans’ mental play is no business of producers and neither are their private communications, however lengthy. (Barbara Tennison, 1991)4

However, with the advent of the internet, the fans’ communications and stories are no longer private. They are available to anyone with a computer. While the paper fanzines were kept private for fear of legal action, they posed no real threat to copyright owners. Now that the infringement is public, owners feel they must act to protect their rights or true competitors could start to use it and claim that the owners waived their rights by not prosecuting the fan sites using their protected property.5

Copyright was intended to promote the useful arts and sciences by giving authors and inventors an exclusive right to exploit their property for a limited time.6 It has steadily been expanded through the years. The original Copyright Act of 1790 protected works for 14 years with a 14-year renewal. In 1909 the duration was expanded to 28 years, with a possible 28-year renewal. The 1976 Act extended protection to the life of the author plus 50 years. In 1998, the Sony Bono Copyright Extension Act extended the protection to life of the author plus 70 years.7 The validity of this extension was recently contested as being unconstitutional.8 However, the Supreme Court held that despite the wording in the Copyright Clause about “a limited time,” the extension was Constitutional because life plus 70 years is still limited.9

The Copyright Act gives the holder a bundle of rights: (1) to reproduce; (2) to prepare derivative works; (3) to distribute the work; (4) to perform the work publicly; (5) to display the work publicly; (6) in the case of a sound recording, to perform the work publicly by way of a device.10 Fan fiction does not copy the TV show or movie directly, but it probably infringes on the right to create derivative works. Derivative works are defined as works “based upon one or more preexisting works, such as 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.” 11 By taking an audio-visual work and transforming it into a short story or novel, the fan writer has created a derivative work based on the original.

Fan fiction also infringes on the copyright in the characters themselves. The case law has been rather confusing about the protection afforded characters. In the Sam Spade case, Dashiell Hammet used Sam Spade again in radio sequels he wrote to The Maltese Falcon. Warner Brothers owned the copyright in The Maltese Falcon and sued Hammet for infringement.12 The court held that unless a character “constitutes the story being told,” the character is not protected, but merely a figure moving through the story.13 However, later cases have cast doubt on this test.

Walt Disney Productions v. Air Pirates dealt with the use of several Disney comic book characters in somewhat questionable, adult, scenarios.14 The court acknowledged the Sam Spade decision, but held that the characters were protected because, “comic book characters…are distinguishable from literary characters, [and] the language does not preclude protection of Disney’s characters.”15 It isn’t clear whether this is because Disney’s characters constitute the story being told or whether there is a less stringent test for graphic characters. Trying to sort this out, the court only injected more confusion into the matter. In MGM v. American Honda, the court looked at the test laid out in the Rocky case which was a character delineation test.16 The test asked whether the character was sufficiently delineated to warrant protection on its own.17 One rationale for applying this test to graphically depicted characters is that, “as a practical matter, a graphically depicted character is much more likely than a literary character to be fleshed out in sufficient detail so as to warrant copyright protection.”18

Applying this in MGM, the court held that James Bond was both the “story being told” and sufficiently delineated to warrant protection.19 The courts adoption of two distinct tests has led to some confusion as to the individual copyrightability of characters. The Rocky case is probably most similar to fan fiction as that involved an unauthorized derivative work—a script for a sequel using the character of Rocky Balboa.20 Fan fiction directly copies the characters—there need be no question about substantial similarity or access. Fan writers have taken the actual characters from a show and transplanted them into their own works of fiction. Under any test, this is copying and later courts have accepted without much discussion that audio-visual characters are protected by copyright.21Olson v. National Broadcasting Co., held that “copyright protection may be afforded to characters visually depicted in a television series or in a movie.”22 In addition, the characters are usually protected by trademark as well, for double protection.

Thus fan fiction implicates at least two possible areas of infringement: direct copying of copyright protected characters and the right to make derivative works. If this were all there were to copyright law, fan writers would undoubtedly be found to be infringers. However, the copyright system of the United States is one which acts, in theory, in the public interest.23 For this reason, Congress enacted the Copyright Act with certain inherent limitations.24 Fair use is one of those exceptions, codified by § 107 of the Copyright Act.25 The doctrine began as a judge-made exception in the nineteenth century. In England, the doctrine was known as the “fair abridgement” doctrine and it permitted certain abridgments of the works of others without imposing liability.26 In 1803, an English court recognized the right to “fairly adopt part of the work of another,” noting that courts must not “put manacles upon science.”27 In 1841, the first American court considered the applicability of the doctrine. While the defendant’s use in that case was not found to be fair, Justice Story laid out the factors a court should examine when considering a claim of fair abridgment: “In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.”28 The phrase “fair use” was first employed 28 years later in Lawrence v. Dana.29 However for the next 100 years, courts looked at the factors laid out by Justice Story as the most useful when deciding fair use cases.30

Congress finally codified the doctrine when it passed the Copyright Act of 1976. Because it was only meant to codify what already existed, §107 did not give much guidance to courts about how to apply the doctrine. “Although the courts have considered and ruled upon the fair used doctrine over and over again, no real definition of the concept has ever emerged. Indeed, since the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts.”31 Courts apply the fair use doctrine on a case-by-case basis, so it can be difficult to predict the outcomes.

This uncertainty is probably one reason why no cases dealing with fan fiction have reached the courts. (The other reason, of course, is that few fans have the monetary resources to take on the corporations in court). The possible fair use defense is so strong that the corporate owners are most likely afraid to test their luck in court for fear of setting a dangerous precedent. Sending cease-and-desist letter is far easier as most fans comply with them. “If you are a housewife in Nebraska and you receive a letter from Viacom’s attorneys telling you to remove your Web site or they will take away your house and your kid’s college fund, you don’t think twice about your alternatives. You fold.”32 The strength of the defense, however, is demonstrated by the fact that often when fans do hire legal representation to fight back, the companies fold. Rebecca Tushnet, and IP attorney in New York, has taken on the cause of fans, sending replies to the cease-and-desist letters, laying out the foundation for a fair use defense. She says invariably the corporations cease-and-desist harassing her clients.33

Next: Part IV – The Solution: Fair Use

References for Part 3:

1 Boo, “Mating Rituals” available at (November 2003).

2 Jenkins, Star Trek Rerun, supra note 12, at 87.

3 Id. at 103.

4 Jenkins, Textual Poachers, supra note 14, at 31.

5 Jenkins, Digital Land Grab, supra note 3.

6 U.S. Const., art. I, § 8.

7 Copyrights Law, Professor Henning’s lecture September 24, 2003.

8 Eldred v. Ashcroft, 537 U.S. 186 (2003).

9 Id. at 187-88.

10 17 U.S.C. §106 (2003).

11 17 U.S.C. §101 (2003).

12 Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.2d 945 (1954).

13 Id. at 950.

14 581 F.2d 751, 755 (9th Cir. 1978).

15 Id.

16 Metro-Goldwyn Mayer, Inc. v. American Honda, 900 F.Supp. 1287 (C.D.Cal. 1995); Anderson v. Stallone, 1989 WL 206431 (C.D. Cal. 1989).

17 MGM, 900 F.Supp. at 1295.

18 Anderson, 1989 WL 206431, at *7.

19 MGM, 900 F.Supp. at 1296-97.

20 Anderson, 1989 WL 206431.

21 Olson v. NBC, 855, F.2d 1446, 1452 (9th Cir. 1988). The court recognized “copyright protection for characters who are especially distinctive.”

22 Id.

23 U.S. Const., art. I, § 8.

24 § 106 begins with the cautionary note “subject to sections 107 through 122…” [emphasis added].

25 17 U.S.C. § 107 (2003).

26 Julie E. Cohen, et. al, Copyright in a Global Information Economy 492 (2002).

27 Cary v. Kearsley, 170 Eng. Rep. 679, 680 (K.B. 1803).

28 Folsom v. March, 9 F.Cas. 342, 348 (C.C.D. Mass. 1841).

29 15 F.Cas. 26, 60 (C.C.D. Mass. 1869).

30 Cohen, et. al., supra note 86, at 493.

31 H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 65 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5679.

32 Jenkins, Digital Land Grab, supra note 3.

33 Email from Rebecca Tushnet to author, October 26, 2003.