The Art of Fan Fiction

"Art is not a thing, it is a way."--Elbert Hubbard

                When I was in undergraduate school (a long time ago), I read Wide Sargasso Sea and Rosencrantz and Guildenstern Are Dead.  Wide Sargasso Sea, by Jean Rhys, takes the story of the mad wife from Jane Eyre and retells it.   Similarly, in Rosencrantz and Guildenstern Are Dead, by Tom Stoppard, the author told the story of these small players in Hamlet.  When I read these stories, I enjoyed them and found them to be an interesting homage to the works from which they borrowed their lead characters and a critique of those very same works.  At the time, I did not think about the potential copyright consequences that these new works created. 

                Now, there are fan fiction websites all over the internet where professional and non-professional writers can take characters from another author and put them in different situations.  One site, FanFiction.net, has over 2 million pieces of fan fiction.  Some of the pieces are short-short stories, others are full length novels.  These stories are not created for profit (as opposed to Wide Sargasso Sea and Rosencrantz and Guildenstern Are Dead which were both published and sold). 

                While fan fiction may be a "derivative work" which is a right given to the author of the original work pursuant to the Copyright Act, some authors view fan fiction as a blessing and a way to market its work.  I must admit myself that after reading the books mentioned above, I reread the original works.  Others authors, however, aggressively try to shut down fan fiction in an effort to maintain the sanctity of their copyright rights. 

                It is easy to see both sides of the issue and why some authors may eschew their right to stop the proliferation of fan fiction using the characters they created in favor of free advertising for their works.  On the other hand, those who hold fast to their intellectual property rights are well within those rights to enforce them against the authors of fan fiction. 

                My livelihood revolves around helping others obtain, maintain, and protect their intellectual property rights.  Yet, I think that blindly asserting one's rights "because s/he/it can," may do more harm than good.  I often counsel my clients to conduct a cost-benefit analysis when they wish to target another whom they feel is violating their copyrights.  Oftentimes, the clients (with my assistance) that there are other alternatives that reside between all out copyright protection war and doing nothing. 

The Battle Over the Color Red

                When I was in law school, I wrote a law review article (unpublished due to the timing of the publication) about the trademarkability of color per se.  At the time, many moons ago, one of the hot topics in trademark law was this district court split about whether color alone can be an indicator of source, and therefore, a trademark.  On one side there was the pink of Owens-Corning Fiberglass insulation (you remember the ads with the Pink Panther saying "Get in the pink."  On the other side was the blue color of Nutrasweet sugar substitute packets.  Ultimately, the Supreme Court in Qualitex v. Jacobson, 514 U.S. 159 (1995), held that color per se was trademarkable as long as it garnered inherent distinctiveness (aka secondary meaning).  The concern at that time was allowing trademark owners to essentially take certain colors out of the public domain.  The United States Supreme Court tried to assuage these fears by requiring the color to acquire distinctiveness or secondary meaning.  But, this appears to remain at issue. 

            It appears that, despite Qualitex v. Jacobson, the matter is still in dispute.  A recent ruling by a Federal Court Judge denied luxury show maker's, Christian Louboutin, request to stop others from selling red-soled.  In particular, Yves Saint Laurent was making shoes with soles of various red shades. The Judge determined that Louboutin would not be able to show that its red-soled shoes deserved trademark protection.  Despite convincing the United States Patent and Trademark Office that the red soles were worthy of trademark registration, the Federal Judge in New York was unconvinced.  The judge determined that the fashion industry relied heavily on color, and as such, the red outsole of Christian Louboutin could not serve as a trademark. 

            Yet, other colors have been able to retain trademark status.  In the fashion world, the plaid of Burberry, Louis Vuitton's monogram, and Tiffany's blue box have all garnered trademark registration and protection.  The New York Judge's ruling seems to contradict the Qualitex ruling.  If the red soles of Louboutin's shoes acquired secondary meaning, then there is no reason not to honor Louboutin's trademark registration.  If consumers link in their mind red soled shoes with Louboutin, then the Judge got it wrong.  There is no reason that color cannot be the subject of a trademark--the courts and USPTO have said as much.