Phoenix Comicon nearly started with a bang – literally. On the first day of the con, Mathew Sterling, arrived at the Phoenix Convention Center with a loaded shotgun, three handguns, and knives, allegedly intending to kill actor Jason David Frank and police officers. He was arrested and charged with attempted murder.
Following this incident, Phoenix Comicon changed its rule for the event and banned all prop weapons. Likewise, it instructed vendors who sell prop weapons to wrap them when completing a sale. This is where the problems between Ultrasabers and Phoenix Comicon began.
Ultrasabers sells replica lightsabers and was a repeat vendor at Phoenix Comicon. There was a dispute between the two, resulting in Phoenix Comicon demanding that Ultrasabers pack up their booth and vacate the premises on the Friday night of the con. It’s unclear exactly what transpired between these two companies. Ultrasabers and Phoenix Comicon each released a statement about this matter.
As a lawyer, one of my first thoughts when I heard about this situation was, “This is why contracts matter.” For full disclosure: I don’t represent either party in this matter. I didn’t write this vendor contract. I haven’t even seen it. I’m just an outsider looking in.
Contracts don’t exist for when things go right. Contracts exist for when things go wrong. A contract is a relationship management document; it helps prevent and/or solve problems between people in a relationship. It’s imperative that contracts are written with a thorough scope, and that the recipient review it thoughtfully before signing it, because if things take a downward turn, the contract will be the roadmap you rely on to achieve a resolution. Whenever a client or prospective client comes to me with a contract dispute, one of the first questions I ask is, “What does your contract say?” Footnote: The most common response I get to this question is, “We didn’t have one.”
In regards to Ultrasabers v. Phoenix Comicon, I don’t know what actually happened between the two or whether this situation is resolved at this point. I hope this issue was a reminder, or perhaps a wake-up call, to people who participate as a vendor or performer to read their contracts carefully before signing them. If you sign a contract and you later regret it, there may be nothing you can do to change the rules of that relationship at that point.
Previously, fan fiction movies were limited to camcorders and sets people created in their backyards, but now with computer animation and other technology, a fan could create an impressive work of fan fiction. You can see some earlier Trek fan fiction on the documentary Trekkies.
A friend asked me to weigh in on these guidelines. As a die-hard Star Trek fan, my legal interpretation may be slightly biased in favor of promoting fandom. Below are the guidelines in full with my comments in italics:
CBS and Paramount Pictures are big believers in reasonable fan fiction and fan creativity (I’m glad you support fan art/fiction. Star Trek is known for inviting fan-submitted scripts, but what do you mean by “reasonable?”), and, in particular, want amateur fan filmmakers to showcase their passion for Star Trek. Therefore, CBS and Paramount Pictures will not object to, or take legal action against, Star Trek fan productions that are non-professional and amateur and meet the following guidelines. (It’s nice when people tell you how not to get sued.)
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. Is this because you don’t want fan fiction to compete with the TV series and movies? I wonder if someone is less likely to make significant money from a one-off video vs. a series. I wonder if the copyright holder would have objected if Melissa Hunter only made one Adult Wednesday Addams video instead of two seasons.)
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. (This makes sense from a trademark perspective. With brands creating content in various genres, it’s important to avoid confusing viewers about what is/is not made by the brand vs fans.)
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. (This makes sense because of copyright. It’s ok to copy ideas, but not the original work itself. This may be overstepping a little bit depending on how they define “recreations.”)
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. (I understand that they want to promote their partners and don’t want fans being misled. However, it makes more sense to require disclosure of sources of props and costumes. Some fans prefer to have a tailor custom-make uniforms instead of buying them from commercial sources. And thank you for calling them uniforms, not costumes – as a fan and Starfleet officer myself, I appreciate that.)
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. (What?! This seems overreaching and overly broad, especially considering that non-compete agreements are not permitted in California. Past and current employees can have non-disclosure agreements that limit their participation in other projects. Even a hobbyist has to pay for certain things – like a musician paying for studio time.)
6. The fan production must be non-commercial (This makes sense. Many artists approve of fan art as long as the person isn’t selling their work.):
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. (Thank you for understanding that hobbyists have expenses – despite your contradictory term above.)
The fan production must only be exhibited or distributed on a no-charge basis and/or shared via streaming services without generating revenue. (Ok – so you can’t submit your video to film festivals or run ads on it if you post on YouTube.)
The fan production cannot be distributed in a physical format such as DVD or Blu-ray. (This makes sense given current technology. They want to protect their intellectual property.)
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. (Fair enough.)
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. (This makes sense in terms of protecting their intellectual property, and also makes it more challenging to use fundraising sites.)
The fan production cannot derive revenue by selling or licensing fan-created production sets, props or costumes. (Agreed. This makes sense.)
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. (I understand no porn, but no illegal activities? What are the bad guys supposed to do? Even Star Trek episodes and films depictions of tobacco and alcohol and the films contain the occasional swear word.)
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.” (This makes sense, but the last sentence suggests that CBS and Paramount may be able to use fan-created content without obtaining the creators’ permission.)
9. Creators of fan productions must not seek to register their works, nor any elements of the works, under copyright or trademark law. (What about the fans’ rights to protect their original works of authorship and their brands that don’t infringe on CBS or Paramount’s rights?)
10. Fan productions cannot create or imply any association or endorsement by CBS or Paramount Pictures. (Agreed.)
CBS and Paramount Pictures reserve the right to revise, revoke and/or withdraw these guidelines at any time in their own discretion. These guidelines are not a license and do not constitute approval or authorization of any fan productions or a waiver of any rights that CBS or Paramount Pictures may have with respect to fan fiction created outside of these guidelines. (This makes sense as long as CBS and Paramount don’t change the rules and go after a fan film creator who reasonably complied with the guidelines as written at that time.)
I appreciate that CBS and Paramount Pictures’ desire to protect their intellectual property and that put out guidelines to further this goal, but I wish they would be more fan-friendly. Hopefully this is only an over-zealous reaction to the recent lawsuit and not a sign of future legal battles between Star Trek and their fans.
The key element of this court ruling is that the court declared that “copyright holders must consider fair use before sending a [DMCA] takedown notice.” Prior to this case, fair use was regarded as an “affirmative defense.” If you’ve seen my YouTube videos, you have seen this one where I declare, “Fair use is a defense, not a permission slip.” This court said that’s not the case, but rather that fair use is authorized by the Federal Copyright Act. There is no copyright infringement if your use of another’s copyright-protected work is permitted by fair use.
There are two downsides to the case (at least for now):
Although the court said that copyright holders must consider fair use before sending a DMCA takedown notice, they only have to have subjective good faith belief that the use of the copyrighted work is illegal, even if this belief is objectively unreasonable.
This ruling only applies to the Ninth Circuit. The Ninth Circuit is comprised of Arizona, California, and most of the western United States. However, this ruling is not binding on the other ten Circuit Courts, but they can take it under advisement in future cases.
This case is a step in the right direction and will hopefully lead to fewer abuses of the DMCA. You can read the EFF’s full report about the case here.
Footnote: This case took eight years to reach this ruling. Sometimes pursuing a lawsuit is the right decision, but you have to be prepared to be in it for the long haul.
Earlier this year, I discovered Melissa Hunter’s “Adult Wednesday Addams” on YouTube. It’s a collection of short videos featuring Melissa playing a grown-up version of the iconic Addams Family character. In each video, Melissa dresses up like Wednesday Addams (black dress, long braids, pale skin, and deadpan attitude) and plays out everyday occurrences (like interviewing to be someone’s roommate and going to work) while embodying the Wednesday Addams character. She is a talented, smart, and funny writer.
So of course, my question in this situation is, “Are the Adult Wednesday Addams videos infringing on the original Addams Family copyright or are they protected by fair use?”
The law is complicated and there is no mathematical equation that will definitively show whether this is fair use. That is up to a court to decide based on the merits of the case. There are four main fair use factors. I created an acronym of the fair use factors when I spoke at Phoenix Comicon last year on fan art and copyright: PAIN.
P = Purpose and character of your use
A = Amount of the original used
I = Impact on the market
N = Nature of the work you copied
Here’s my take on how the fair use factors apply to this situation:
P (Purpose): Adult Wednesday Addams transforms the original Wednesday Addams character who was a tween in the latest Addams Family movie (Favors Melissa). I don’t remember if Melissa was running ads on her videos, but if she was, that would be a strike against her – but not a deal breaker (Favors Addams Foundation).
A (Amount): Compared to the entire Addams Family franchise, Melissa only used a single character (Favors Melissa) but compared to the copyright in the Wednesday Addams character herself, Melissa copied a substantial amount (Favors Addams Foundation). However, part of what makes Adult Wednesday Addams work is that we know that she is copying the original. That’s what makes it so funny, and parody is generally protected by fair use.
I (Impact on the market): Apparently there is a new project in the works for the Addams Family, but I don’t know if Melissa’s work will have any effect on that. Melissa’s videos are only a few minutes long, compared to the longer TV shows and movies created using the original characters’ story line. Her work is definitely not a viable substitute for those (Favors Melissa).
N (Nature of copied work): The Addams Family has been made into cartoons, a TV show, and movies. Melissa Hunter created short YouTube videos. Although these are both audiovisual works, they cater to different audiences (Favors Melissa).
Do I think what Melissa did was fair use? Yes. I hope she’s fighting the claim that her work is copyright infringement, and I hope whoever is working on the Addams Family remake offers to hire her. Remember, fair use is a defense, not a permission slip, so Melissa has to prove to the court that what she did was legal if she chooses to fight this.
Yesterday, Melissa released a video with an update about Adult Wednesday Addams:
I’m glad to see that Melissa is as sassy as ever and that she’s working on this while putting energy into new projects too. Keep wearing that dress!
I had an awesome time presenting on Creator Rights at Phoenix Comicon this year with Javier Hernandez. His comic book series, El Muerto, was recently made into a movie and a fan created a fan film that was shown at the Con. It was really interesting to hear his story as an artist trying to muddle through the legalities of working in the arts with the help of his lawyer.
I don’t prepare much for my talks at Phoenix Comicon. I feel like it’s my job to be there to explain legal concepts in plain English and answer the audience’s questions about copyright, trademarks, contracts, and fan art. There’s always a fun smart audience with thoughtful questions. It’s a privilege to be invited back multiple times. Here are some of the highlights from this year.
You have Rights in your Original Creations
There is no legal protection for ideas but there is for original works of authorship once you’ve captured your ideas in a tangible medium such as paper or a digital file. The copyright laws were designed to protect original story lines and fully-formulated characters. I often recommend that artists at least register their “story bible” with the U.S. Copyright Office to maximize their legal rights related to their work.
Once you create a comic, you have the exclusive right to copy, distribute, display, perform, or make derivative works from your original work. That’s why the movie studio had to get the option (aka license) from Javier to make a movie from El Muerto, because a movie is a derivative work. Javier didn’t authorize the creation of the fan film and so when he went to see it, part of his motivation was to see if he wanted to exert his legal rights to stop the creators from showing it in other forums.
Protect your Trademarks
Someone in the audience shared a horrific story. He created a comic and after he started sharing his work with others, someone else started a similar comic – with the same name. Here’s the kicker, the second guy registered the name with the U.S. Patent and Trademark Office. What a nightmare. I told him to call a lawyer to try to sort out this mess.
A lot of beginning artists and people who create art as a hobby don’t understand their rights and how they can avoid problems like this by registering their trademark before their competition does. Or if they understand their rights, they don’t invest the money to file the proper applications with the federal government. These types of problems happen all the time. Check out what happened when two restaurants decided to call themselves “Burger King.”
When Contracts are Involved, Call a Lawyer
If you are lucky enough to create art that someone wants to buy or license, call a lawyer. The other side is going to present you with a contract that was written solely based on their interests. You need someone who is equally versed in entertainment contracts to represent you. Lawyers talk to lawyers – so hire someone who can explain the process, understand your priorities, and advise you of your options.
Javier and I had a fantastic time doing this panel – sharing our experiences and knowledge from the creator’s and lawyer’s perspective. It was a wonderful juxtaposition for the audience. I also did a panel at Phoenix Comicon on Fan Art/Fiction and Copyright. If you want to know more about that specific topic, check out this post I wrote last year with a handy mnemonic device.
I had the pleasure of presenting on Comic Book Creator Rights with the award-winner comic author Mike Baron at Phoenix Comicon last weekend. We talked about how important it is for writers and artists to understand what rights they have in their work and the various ways they can protect it.
An artist or writer has copyright rights in their work the moment they put fingers to keyboard or pen to paper. As the owner of their work, they can control where their work is copied, distributed, displayed, performed, and what derivative works can be made.
Unlike books where a complete story is often contained in a single volume, a comic book story may be broken up into several 22-page issues. One thing Mike and I suggested to our audience was registering the copyright in the “story bible” as well as each issue that the artist creates. A story bible is a master document that lays out the setting and norms of that universe and the backstory and characteristics of each major character.
The copyright laws regarding infringement for published and unpublished works are different, and under the current laws (that are in need of overhaul), a work that is released only online is “unpublished.” To maximize your options for recourse (i.e., financial damages), I advise artists to register their work with the U.S. Copyright Office before they release it if it is unpublished. Mike also suggested doing a short run of each issue so the work will qualify as “published” and the rules about when you have to register to be eligible for what’s called statutory damages are more favorable.
A comic book artist could have several trademarks related to their series – the name of the series, logos, slogans, and the name and possibly depiction of the characters. Any or all of these could be trademarks used to market the artist’s work.
For each of these potential trademarks, it’s a good idea to run a search on the U.S. Patent and Trademark Office’s (USPTO) trademark database to make sure that another artist doesn’t already have the exclusive right to use that trademark in relation to comic books or similar products. If they do, they can force the other person to rebrand.
If the desired trademarks are available, putting a superscript “TM” next to them will put everyone on notice that the artist is using them as trademarks, not just elements in their series. Registering them with the USPTO will increase their value and give the artist the exclusive right to use those trademarks. No one else in the industry could have the same trademark in the U.S. Registration also increases their value and may make the artist’s work more desirable if their goal is to be acquired.
Let me tell you a story. MGM owns the copyright for The Wizard of Oz. In 1976, they hired Bradford Exchange to create a series of Wizard of Oz collector plates. Bradford had a competition for the “Dorothy” plate design. Jorie Gracen submitted a design that clearly depicted Dorothy, Toto, and the yellow brick road, but the image doesn’t match any screenshot from the film. Gracen’s design won but she refused to sign the contract to turn her painting into the plate. Bradford allegedly gave her painting to another artist who used it to create a similar design which was made into the plate.
The collector plates were derivative works; however, Gracen was acting in compliance with Bradford’s direction when she created her design. She couldn’t get a copyright in her work because it was based on the movie but she couldn’t get in trouble for simply creating it for the contest.
Bradford’s mistake was they didn’t include a copyright assignment or license in the competition rules. I would expect a similar contest to include a provision that everything the artist creates for the contest becomes the proper of the contest organizers or the company they represent.
Here’s the big lesson I take away from this case – if a copyright holder tells fans to create fan fiction or fan art, the fans’ work may not be original enough to warrant their own copyrights, but they shouldn’t get in trouble for creating something that they have been authorized to create.
However, the fans may only be able to create fan fiction or fan art; they may be committing infringement if they try to distribute it. I would expect the copyright holder to be especially upset if you try to sell your work because you could be interfering with their profits and/or hurting their brand with inferior artwork.
I have the pleasure of speaking about copyright and fan fiction and fan art at Phoenix Comicon this year. It’s always fun to hear about the projects fans are working on, and to see that so many of them are mindful about the copyright. I wish I had more black and white answers for them about what they can and can’t do.
Fan fiction and fan art falls squarely into the murky realm of copyright and fair use. The owner of a copyright controls where and how their work is copied, displayed, distributed, performed, and what derivative works are made. Fan fiction and fan art can be derivative works but they also may be protected by fair use.
Fair use is part of the copyright laws that acknowledges the fact that many works are inspired by past art. This law allows artists to build on existing works in creative and innovative ways. One thing to always remember is that fair use is a defense, not a permission slip. There is always a risk that the copyright holder will claim you’re infringing on their copyright and you’ll have to basically tell the court, “Yes your honor, I used their work but it’s OK because . . . .”
When a court considers a fair use case, these are some of the main factors it considers:
Purpose and character of your use of another’s work (Is what you did transformative and did you do it for commercial use?)
Nature of the copyrighted work (What did you copy?)
Amount and substantiality of the copyrighted work used (How much of the original – quality and quantity – did you copy?)
Effect on the market (Would someone seek out the original and accept your work as a substitute?)
These are some of the main factors, but the court can consider others if it wishes. This is also not to be treated as mathematical equation. Regardless of how many fair use factors favor you, you can always lose.
For Phoenix Comicon this year, I wanted to create an easy mnemonic device that fans can use to remember the fair use factors; and here it is: PAIN.
P = Purpose and character of your use
A = Amount of the original used
I = Impact on the market
N = Nature of the work you copied
Another thing to consider if you want to use another artist’s work is how the copyright holder historically responds to fan fiction and fan art. Some encourage it; some are OK with it as long as you’re not making money off of it; some are OK with it as long as it’s not sexual (i.e., slash fiction); and some dislike all fan fiction and fan art and will try to lay the smackdown on you if you create it.
Anyone who knows me will tell you that I have the palette of a five year-old and a massive sweet tooth – especially for ice cream. I would love to have a bat signal – well something like it but only in the shape of an ice cream cone. I want to be able to turn my bat signal on and have multiple people calling and texting to ask “What flavor?”
Unfortunately, bat signals are illegal in Arizona. I was driving around this past December with a friend who remarked that a business that had moving spotlights pointing up at the sky was violating of a city ordinance. This inspired me to be a legal geek and look up why bat signals are illegal in the Arizona criminal laws and the Phoenix city ordinances. Here’s what I came up with.
Disorderly Conduct (Class 1 Misdemeanor)
Disorderly conduct is a catch-all law written to apply to activities that the powers that be dislike but where there isn’t a specific law on point. The Arizona disorderly conduct law prohibits excessive noise, but not excessive light. The law does prohibit “fighting, violent or seriously disruptive behavior,” but there may be an argument that a bat signal may be disruptive, but it shouldn’t be treated as being in the same category as physical violence.
Public Nuisance (Class 2 Misdemeanor)
I think this is what you might get if your neighbors call the cops on you. In Arizona it’s illegal to do anything that is “injurious to health, indecent, offensive to the senses or an obstruction to the free use of property that interferes with the comfortable enjoyment of life or property by an entire community or neighborhood or by a considerable number of persons.” If your bat signal is so bright that it interferes with your neighbors’ ability to enjoy their property, it could be illegal.
Criminal Nuisance (Class 3 Misdemeanor)
In Arizona, a criminal nuisance is “conduct either unlawful in itself or unreasonable under the circumstances,” such as a person who “recklessly creates or maintains a condition which endangers the safety or health of others.” I could see law enforcement making a strong argument that turning on a bat signal could be hazardous to other’s safety, especially if it limits people’s ability to see or disrupt traffic on the streets or in the air.
The City of Phoenix has city ordinances that require outdoor lighting to be shielded and/or filtered – including spotlights. The City also has rules against disturbing the peace or creating a nuisance that is “offensive to the senses.” The rules for using a searchlight say you can’t have one within 150 feet of a residential structure, that it can only be used between 8 a.m. and 10 p.m., and it can’t contain any advertising. I don’t think my bat signal is advertising because I’d use to get people to bring me ice cream, not to sell anything.
I suspect if you want to have a bat signal, you’d have to get a permit to use it only for a special event and then after that it could only be used for show. The Phoenix rules require you to file for a permit at least 45 days in advance. I can’t plan my ice cream cravings out that far. It’s too bad – it would have been awesome to have a bat signal.
I spoke at TechPhx on Social Media Horror Stories from the Legal Trenches. One of the stories I told was Turner Barr’s experience with having his blog, Around the World in 80 Jobs, essentially shut down because another company registered the trademark in the same name. At the end of my talk, someone asked if you could register the trademark in a hashtag.
A trademark is the words, slogans, logos, colors, packaging, etc., you put on your products that differentiate you from your competition. If you don’t register your trademark, you get the exclusive right to use your marks where you’ve established your market. When you register your trademark, you get the exclusive rights to use your marks on your type of products everywhere in the U.S. If you want to know more about trademarks, check the story behind the Burger King trademark.
Just like you can register a trademark in a company name, product name, or slogan, you can register a trademark in a hashtag. The first rule is your trademark can’t be the generic product. If you own a coffee shop, you can’t register the trademark #coffee. If the U.S. Patent and Trademark Office (USPTO) let you have that, you could stop your competition from calling their coffee “coffee,” which would be very confusing. You could register your business name (i.e., #DansCoffee) or a slogan like #GreatMornings or #WheresMyMug.
The second rule is you can’t claim a trademark that your competition is already using. If you were a soda manufacturer, you couldn’t register the trademark #Coke or #CocaCola unless you were the Coca-Cola Company.
Another thing to keep in mind is when you register your trademark, you have to declare what you’re claiming as your trademark and what goods or services you’re using it on. You only get the exclusive rights to your mark in your arena of goods. You can’t stop another company from using a similar trademark on their products as long as they are completely unrelated.
Registering a trademark allows you to prevent your competition from using your trademark or something similar to it. It doesn’t give you the ability to stop people from using your slogan in their everyday lives. For instance, the Williamstown Theatre Festival could register the trademark in the hashtag #WTF which would allow them to prevent other theatres from using the same hashtag to promote their products, services, and events, but it would allow them to stop everyone who uses it on Twitter to mean “What The Fuck.”
Registering a trademark is a long process. It can take months for the USPTO to look at your application and then there may be several rounds of communications between you and the USPTO before your trademark is approved. If you want to claim the exclusive right to use your desired hashtag, it should be for something that you’re planning on using for a long time.
So can you register a trademark in a hashtag? Yes. Should you register your hashtag as a trademark? It depends on your situation. That should probably require a joint meeting with your marketing staff and your lawyers. If you want to chat with me about this or any other topic, you can connect with me Twitter, Google+, Facebook, YouTube, LinkedIn, or you can email me.
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