Copyright Society of the USA, Savannah, Georgia, February 3, 2018 Hannibal Travis, moderator Florida International University College of Law

Strategic Issues in Adopting Guidelines on Unobjectionable "Fanworks" In June 2016, CBS Studios and Paramount Pictures released a series of guidelines setting forth the circumstances under which they will not object to or file legal claims against fan films. The guidelines do not cover sampling or mash-ups, full-length feature films even if offered for free and noncommercially, the sale of tickets or digital downloads for consideration, or the depiction of nudity, sexual activity, or "illegal or harmful activity." This panel addresses the strategic and long-term legal considerations involved in drafting, negotiating, and updating such guidelines, including potential implications relating to recourse to copyright and trademark remedies, and relating to the applicability of non-IP laws. Fanwork medium, nature of fan use, contests, control of fan content, and merchandising and cosplay by fans will be explored. I. Defining Fanworks a. Fan Fiction as written works based on other works of popular culture, such as novels or films. i. Must fan fiction be “amateur” to qualify? ii. Breakdown of amateur/professional distinction in social media context b. as film or video works based on other works of popular culture i. Amateurism? ii. Methods of monetizing video with YouTube, , other platforms c. Typologies of fanworks i. Referential vs. participatory distinction of Tushnet, Stroude, other articles ii. Referential examples: Joy of Trek, Seinfeld Aptitude Test, Welcome to Twin Peaks, Harry Potter Lexicon iii. Participatory examples: The Greatest American Hero, The Wind Done Gone, Tonya Grotter, Point Break Live!, Oh, the Places You’ll Boldly Go! II. Potential Intellectual Property Objections a. Copyright i. Reproduction and distribution of material having substantial value 1. Animate characters a. Superman case b. cases c. Seinfeld case d. Twin Peaks case e. Harry Potter cases f. Scenes a faire characters 2. Animate character classes a. Vulcans and b. Jedi and Sith c. Wookies, Ewoks, and Porgs

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3. Inanimate characters a. Batmobile b. The Enterprise 4. Inanimate character classes a. TIE fighters and X-Wings, Starfleet and birds-of-prey, and Romulan warbirds b. Starfleet uniforms c. Planets such as , Coruscant, Krypton ii. Analyses of substantial similarity 1. Warner Bros. v. ABC ( Greatest American Hero ): different overall perception and widely shared traits holdings 2. Castle Rock Entertainment v. Carol Publishing Group (Seinfeld Aptitude Test ): fictional facts are expression, and taking them may make a referential work substantially similar to a franchise viewed as a whole 3. Warner Bros. v. RDR Books (Harry Potter Lexicon ): “factual” similarity and “chronological” similarity tests rejected 4. Paramount Pictures Corp. v. Axanar Productions, Inc. ( Star Trek: Prelude to Axanar ): no filtration of non-protectable elements on motion to dismiss where complaint puts defendants on notice of claim for taking elements protectable as whole iii. Preparation of infringing derivative work 1. Ty, Inc. v. Publ'ns Int'l: Beanie Babies Collectors Guide was not derivative work because a guide does not recast, transform, or adapt the works that it is a guide to, but For the Love of Beanie Babies was a derivative work as collection of photographs derived from sculptures 2. Castle Rock v. Carol Publishing: derivative works such as Seinfeld Aptitude Test take expression and do not transform it in the sense of criticism, parody, etc. iv. Public performance and public display rights 1. Transmission clause 2. De minimis exclusion v. Fair use 1. Purpose and character a. Castle Rock v. Carol Publishing: referential work may be non- transformative derivative works, e.g. change of medium b. Suntrust Bank v. Houghton Mifflin (The Wind Done Gone ): parody is transformative, favors fair use, because it adds new meanings, perspectives, and critical commentaries c. Warner Bros. v. RDR Books: reference guide was transformative because not intended to entertain, unlike Seinfeld Aptitude Test d. Paramount Pictures v. Axanar Productions: possible commercial use by fundraising via Kickstarter, not paying licensing fees, and aiming to leverage fan film into future job prospects e. More recent parody cases finding transformative uses of Point Break , Three’s Company, Oh, the Places You’ll Go

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2. Nature of copyrighted work a. Typically weighs in favor of owner of copyright in fictional work b. Unpublished work would weigh factor even further in plaintiff’s direction 3. Amount and substantiality of portion taken a. No more than is necessary test? b. Measurement in relation to transformative purpose? Proportionality? 4. Effect of use on the value of or potential market for the work a. Measures substitution, not suppression e.g. by parody or negative review b. Typically assesses effect on non-parody licensing markets, including licensing of derivative works c. Copyright owner entitled to decide not to enter certain derivative markets without losing ability to rely on potential impact on them: Castle Rock, Salinger v. Colting d. Reference guides to characters and objects in a fictional world may not be substitutes for them: Ty v. Publications, RDR Books e. Participatory works (Suntrust): insufficient evidence at preliminary injunction stage that Wind Done Gone would undermine market for licensed sequel to Gone with the Wind – see also, Point Break, Three’s Company, Oh, the Places You’ll Go, How the Grinch Stole Christmas! 5. Partial summary judgment of invalid fair use defense a. Paramount Pictures v. Axanar Productions: applied test of markets plaintiffs “would in general develop or license”, rejected lack of market substitution argument due to trailer length due to evidence of fundraising, marketing fan film as alternative to cable television subscriptions b. Trademark i. Likelihood of confusion 1. Parody tends not to present much risk of it: e.g., Mattel, Inc. v. Walking Mountain Productions, LL Bean v. Drake Publishers, Lucasfilm Ltd. v. Media Market Group Ltd., Universal City Studios v. Nintendo Co.; but see Anheuser-Busch, Inc. v. Balducci Publications 2. Sequels or “mockbusters” may present one: e.g., Age of Hobbits case ii. Likelihood of dilution 1. Blurring or tarnishment may occur despite claim of defendant to have made a parody: e.g., Dr. Seuss Enters. v. Penguin Books USA, Dallas Cowboys Cheerleaders Inc. v. Pussycat Cinema, Pillsbury Co. v. Milky Way Productions; but see Louis Vuitton Malletier S.A. v. Haute Diggity Dog, Original Appalachian Artworks v. Topps Chewing Gum; Hormel Foods Corp. v. Jim Henson Productions 2. Fame requirement

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3. Trademark Dilution Revision Act – must a parody be used other than as a designation of source for defendant’s own product or service? See Starbucks Corp. v. Wolfe's Borough Coffee (Starbucks IV); but cf. Starbucks Corp. v. Wolfe's Borough Coffee (Starbucks V) 4. Fair use in comparative commercial advertising or promotion (to identify competing goods or services of the owner of the famous mark) and noncommercial use of a mark not actionable as dilution iii. Nominative use iv. Trademark and copyright’s public domain III. Fanwork Guidelines a. X-Files 1997: demand that all audio or video clips be removed from websites b. Lucasfilm 2000: terms of use for starwars.com provided that fanworks would become Lucasfilm intellectual property c. Harry Potter 2004: Christopher Little literary agency announced that: "JK Rowling's reaction is that she is very flattered by the fact … that people take the time to write their [Harry Potter] stories…. Her concern would be to make sure that it remains a non- commercial activity to ensure fans are not exploited and it is not being published in the strict sense of traditional print publishing." d. Paramount/CBS 2016: fan films guidelines include duration (15 minutes long), length of season (two episodes or 30 minutes), content (no illegality, drug or alcohol use, or profanity), fundraising (up to $50,000), advertising revenue (none), uniforms and accessories (“official merchandise” only), actors (amateurs not currently or previously employed on any project of CBS or Paramount Pictures or of its licensees), fan copyright or trademarks (no registered ones), trademark disclaimer (required) i. guidelines are revocable, not a license, and not a representation of scope of copyright or trademark law IV. Strategic Considerations a. Gauging likelihood that a type of fanwork will be a fair use even in absence of guidelines b. Estimating risk that non-enforcement of copyright or trademark will impact scope of rights, injunctive relief, or defenses c. Drafting guidelines to promote compliance, protect legal interests in IP, and achieve branding objectives d. Allocating resources to enforcement of guidelines e. Dealing with implications of Lenz v. Universal Music Corp. and standard of subjective good faith belief in infringement

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