Using a Copyrighted Character in Internet Fan Fiction

by John Aquino on 05/04/12

I have written in a previous article about litigation by the estate of Margaret Mitchell and J.D. Salinger over the attempts of authors to continue the stories of Gone with the Wind (Suntrust Bank v. Houghton-Mifflin Co., 11th Cir., No. 01-12200, 5/20/01) and Catcher in the Rye (Salinger v. Colting, 2d Cir., No. 09-2878-cv, 4/30/10). In both cases, the defendants claimed that their works were parody/commentaries of the originals under the Supreme Court’s ruling in Campbell v. Acuff-Rose Music Inc, 510 U.S. 569 (1994). Having lost some preliminary rulings, the Suntrust and Salinger plaintiffs settled prior to going to court rather than litigate the issues in the suits.

In another article I discussed the issue of fair use of copyrighted material, in which the court is instructed to consider four factors: the nature of the use of the copyrighted material (is it commercial or educational in nature); the nature of the original work; the amount of the work to be used; and the effect of the proposed use on the market of the copyrighted work. In Campbell, the Supreme Court held that the fact that the use is commercial is only one of the four factors and that parody (the nature of the use) can conceivably be the most important factor in the analysis.

Fair use is also an argument that is raised concerning stories that continue the lives and adventures of copyrighted characters on the Internet.

Initially, the copyright holders for the tv series Star Trek, for example, came down like thunder on writers who used their copyrighted characters without permission, just as they would have done had someone issued a Star Trek novel on their own or made a Star Trek movie. But as stories on the Internet proliferated, the attitude of at least some copyright holders changed.

The creators of the television series Xena the Warrior Princess actually encouraged fans to write their own stories about Xena and her friend Gabrielle. The show had an implicit lesbian relationship between the two characters. Some fan authors were more than willing to make the relationship explicit. Fans have continued the adventures of the castaways on Gilligan’s Island and even Harry Potter. J.K. Rowling also encouraged fans of Harry Potter to write they own stories but later became less encouraging and even litigious as fan authors anticipated the plots of her novels and even accused her of stealing from them.

Some copyright holders have expressed their discomfort with the lives of their characters being continued without them and in ways they did not sanction. Others have indicated that these stories actually promote the original works at no cost to the copyright holder and keep the “franchise” alive. Harry Potter related sites contain over one million stories and are visited by hundreds of thousands of readers globally.

I must admit that as a writer, for my own amusement and under a pseudonym, I have contributed a few stories to fan fiction websites. My instinct was to use some of the basic characteristics of copyrighted character but to change names and do other things to dilute the “substantial similarity.” But I quickly found out that of all the writers on the web site I was the only one who was doing this. The other authors were emboldened because no one complained. But, as with anything, the complaints will come if the re-use affects the market or the reuse goes “too far.”

Aaron Schwabach of the Thomas Jefferson School of Law has written a book on the subject, Fan Fiction and Copyright: Outsider Works and Intellectual Property Protection (Ashgate, 2011). It’s a relatively short book (192 pp.) and sells for $80 (!). He argues that Internet fan fiction is arguably protected under a fair use analysis in that the use is not commercial. The stories are published for free on the Internet. Following Suntrust and Salinger, an author could even argue that the new work is a parody.

But the nature of the reuse is just one of four factors a court considers. A Rowling could argue that the other three factors are more important and that the use is indeed affecting the marketability of the original works.

I’m always amused by youtube posting and even Internet fan stories using copyrighted characters that say “Copyright infringement is not intended.” Copyright infringement is essentially a strict liability cause of action. The mental state of the alleged infringer does not matter. Under the Copyright Act, the threshold question is whether a copyright defendant has made copies, distributed copies, prepared derivative works, publicly performed, or publicly displayed the work at issue.  “Innocent infringement” is a defense used to mitigate damages and is not recognized as a defense for the infringement itself. If someone says, “Copyright infringement is not intended” he or she is acknowledging the work is protected by copyright.

So the issue of whether fan fiction on the Internet infringes a copyright really does come down to a fair use analysis, which is decided by a court.

A related issue is the copyrightabiliy of characters in the first place. This has always been difficult because copyright protects expression and not ideas. In cases such as Nichols v. Paramount, the principle was set that while exact copying is not needed for there to be infringement the copyrightability of the characters hinges on how far they have been fleshed out for the audience. "[T]he less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly," Judge Learned Hand wrote in Nichols.

In November 2007, Rowling threatened legal action against G. Norman Lippert for allegedly violating her intellectual property rights by producing and publishing the online novel, James Potter and the Hall of Elders. The novel is set 18 years after the end of the last official installment in the series and describes the adventures of Harry Potter's son, James Potter, during his first year at Hogwarts School of Witchcraft and Wizardry. Rowlins dropped her suit when she was shown a copy of the novel. But if litigated, the issue would have been whether the offspring of a fictional character, who was never even depicted in the original work, can claim copyright protection.

Say an author takes the character of Yeoman #2 in Star Trek episode. The yeoman has a very, very small part. Say an author fleshes her character out and gives her a back story and then gives her a whole new story about what happened after the incident portrayed in the episode. Is the character protected by copyright? Is the author infringing that copyright? She was just Yeoman #2 in the episode, not very well delineated. Was she fleshed out enough to be protected? Of course, if the author brings into the story other Star Trek characters and the original plot of the episode and Star Trek trademarks then the matter becomes even more complicated.

Copyright 2012 by John T. Aquino. This article does not constitute a legal opinion and is intended solely for educational purposes.