Legal Issues With Fan Fiction - Trademark Law

Trademark Law

Separate from the legal issues raised by fanfiction’s interaction with copyright law, legal issues may also develop from United States trademark law.

Current federal trademark law follows the Lanham Act, otherwise known as the Trademark Act of 1946. Under the Lanham Act, a trademark is “any word, term, name, symbol, or device, or any combination thereof” used in commerce to identify a service or good. Under this definition, it is possible for the names and likenesses of television, film and book characters, fictional settings, or other elements of entertainment products to act as trademarks. Unlike copyright, however, trademark rights are not automatic. To establish a right in trademark, the rights-seeker must establish that his/her mark acts as a distinctive "source identifier" for a particular type of good or service. Thus, trademark rights may arise when a fictional character’s name or likeness may serve to identify the source of an entertainment product or related good. For example, the use of Mickey Mouse’s name or likeness may serve to identify a particular book or toy as originating from Disney. One way to establish that a mark acts as a distinctive source identifier is to establish that the relevant purchasing public has developed a strong association between the mark and its originating source. In legal terms, this is known as “secondary meaning.”

If the trademark holder can show that its creation acts as a distinctive source identifier, s/he still must prove a likelihood of confusion to prevail in a trademark infringement claim. Different courts consider similar but not identical factors when deciding likelihood of confusion. Common factors that may be relevant to fanfiction include:

1. How well known and distinctive the mark allegedly being infringed is;
2. How similar the infringing mark is to the original mark;
3. How similar the allegedly infringing goods or services are to the markholder’s goods or services;
4. Whether the infringer intended to deceive the purchasing public or to trade on the good will of the markholder;
5. The level of sophistication of those persons or groups likely to be the consumers of the mark;
6. Whether consumers were actually confused as to the source of the goods or services.

The courts can weigh the factors in individual cases, and may consider additional factors as they please.

To the extent that fanfiction uses source-identifying characters, settings and such, the marks are often well known are identical to the original, and are used in similar types of goods (i.e., written fiction). In this way, the first three factors relayed here weigh for the trademark holder.

However, fanfiction writers generally do not intend to deceive the consuming public as to the source of the work, and often include prominent disclaimers at the outset of their works stating that the works are not the products of the original creators, both to honor the original creator and to prevent any possible confusion as to source. In addition, as a consuming audience, fanfiction readers are generally sophisticated regarding works' status as fanfiction, and are aware that fanfiction is not written or endorsed by those who hold the trademarks. As such, the last three factors tend to weigh in the direction of fanfiction writers.

Trademark holders may also allege that the use of trademarked characters, settings, etc. may constitute trademark dilution. The concept of trademark dilution is that overuse or improper use of a mark, even when it does not create consumer confusion, can lessen the mark’s uniqueness and value as a source identifier. A dilution claim requires that the mark in question be famous throughout general consuming public and that the use of the mark create a likelihood of either “blurring” or “tarnishment.” A likelihood of blurring occurs when the use of the mark creates an association that is likely to impair the distinctiveness of the famous mark; a likelihood of tarnishment occurs when the use of the mark creates an association that is likely to harm the reputation of the famous mark.

Even if a likelihood of confusion or dilution were found, trademark law provides various defenses to alleged infringement. These defenses fall into the categories of “fair use” and “First Amendment.”

Trademark “fair use” differs significantly from fair use under copyright law. In trademark law there are two types of fair use: descriptive and nominative use. Descriptive fair use permits the use of a descriptive mark in a descriptive way; for example, an advertisement could say that a particular dress shoe “feels like a sneaker” even though the phrase “Looks like a pump, feels like a sneaker” is the trademark of another company. Nominative fair use permits the use of a mark to identify the product that bears that mark, when (1) the product or service in question is not readily identifiable without use of the trademark; (2) no more of the mark is used than is reasonably necessary to identify the product or service; and (3) the user does nothing beyond use of the mark that would suggest sponsorship or endorsement by the trademark holder. For example, a news story about the New Kids on the Block can use the mark “New Kids on the Block” to identify the band. Nominative fair use is often particularly relevant to fanfiction, since a fanfiction writer’s use of trademarked names, settings, etc. to identify characters, story settings, etc. will generally meet the three requirements for nominative fair use. For this reason, fanfiction is harder to succeed on than an allegation of copyright infringement.

An additional defense to trademark infringement or dilution relies on the First Amendment guarantee of freedom of speech.

Courts have shown reluctance to curtail creative uses of trademarks in expressive works. For example, in Mattel v. MCA Records, United States Court of Appeals for the Ninth Circuit permitted the band Aqua’s use of Mattel’s trademark in “Barbie” to sell songs, that MCA had a valid parody defense, as Aqua needed to use the word “Barbie” in its song "Barbie Girl," based on the fact that the use of the mark was (1) artistically relevant to the song and (2) not explicitly misleading as to the source of the song. Because there was a relatively small likelihood of confusion, the Ninth Circuit held that the First Amendment protected Aqua’s use of the mark. The First Amendment defense has not stood up where the trademark holder was able to prove the existence of significant actual confusion. An example of this is a parodic publication running a parody ad for a product, and the parody not being well done enough or labeled clearly enough for people to realize it is not a real ad.

Because of these differences in the legal doctrines of trademark and copyright, trademark law is less likely to come into conflict with fanfiction.

A brief note on non-U.S. perspectives: while other countries do not necessarily weigh the interests of trademark owners and other speakers in the same way, noncommercial and expressive uses may receive protection under other nations' laws as well. For example, in South Africa, a T-shirt company was able to sell T-shirts parodying Black Label beer.