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.