Wake Forest Law Review
22Feb

Published Fanfiction: The Fair Use Doctrine Should Not Save You

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by Sheridan Ecker

Recently, online author SenLinYu entered into a book deal with Del Ray at Penguin House to publish her debut novel, Alchemised.[1] This is not an ordinary book deal, though, as Alchemised is a reimagined version of her incredibly successful fanfiction called Manacled,[2] following Hermione Granger and Draco Malfoy from the world of Harry Potter[3] if the book had ended quite differently.[4] A quick search for “Manacled” on TikTok will yield countless results of users discussing the work,[5] and the fanfiction has over seven million hits[6] on its hosting website, Archive of Our Own.[7] In the Harry Potter fanfiction world—with over 450,000 works on Archive of Our Own alone[8]—it is second only to All the Young Dudes.[9] As the author herself notes, though, people in recent years have taken to selling it illegally, and this book deal was an opportunity for her to maintain the integrity of the work without jeopardizing the legality of fanfiction itself.[10]

Fanfiction requires some legal protection since it directly clashes with copyright.[11] Under federal copyright law, copyright protection “subsists…in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated.”[12] Assuming this is met, the copyright holder enjoys a variety of exclusive rights, including the exclusive right to “to prepare derivative works based upon the copyrighted work.”[13] However, to establish a prima facie case for copyright infringement, a copyright holder must show that the work was “actually copied” and that the copying “amounts to improper or unlawful appropriation.”[14] This typically involves looking into whether the new work is substantially similar to the original.[15] However, there are also protections for copyright infringers under doctrines like the fair use doctrine, which “allows the public fair use of copyrighted materials.”[16]

Unsurprisingly, fanfiction and published books are treated differently under copyright law and its defenses. Alchemised is hardly unique in its position as a fanfiction-turned-published-novel, the most notable example being the Twilight[17] fanfiction-turned-novel Fifty Shades of Grey.[18] While non-commercialized fanfiction enjoys broad protection under copyright law, resulting in little more than the occasional cease-and-desist letter,[19] there is a higher burden on those who seek to profit from it.[20] The fair use defense largely protects non-profit based fanfiction, and other similar fan works. Under the fair use doctrine, an “assessment is done under multi-factor test, which in part considers the commercial or non-commercial aspect of the potentially infringing work.”[21] The other considerations include the  “nature of the copyrighted work,” as well as the “amount and substantiality of the portion used in relation to the copyrighted work as a whole,” and finally, “the effect of the use upon the potential market for or value of the copyrighted work.”[22] When the use is commercial based, “the user must show a greater degree of transformation … in order to establish that it is fair.”[23]

The fair use doctrine is only necessary if the original work is actually violating copyright—fair use is a defense to the charge of copyright infringement.[24] Though it is uncertain whether a work like Alchemised would be considered copyright infringement in the first place, after changing character names and other Harry Potter specific references, one of the tenets of copyright law is that the owner has exclusive rights to “to prepare derivative works based upon the copyrighted work.”[25] Fanfiction is a derivative work, and given the factual knowledge that Alchemised is an updated version of a Harry Potter fanfiction, it would almost certainly have to rely on fair use rather than a basic argument that it does not infringe.[26]  Under the current fair use doctrine, so long as the work is sufficiently transformative and does not specifically reference characters or other unique features of the original work, it is not infringing     –after all, copyright does not protect ideas, but rather the “particular expression” of them.[27] Alchemised, then, would likely be protected under the fair use doctrine, once it is released.

When it comes to fanfictions-turned-novels, the fair use doctrine is an insufficient protection for the original holders of the copyright as it fails to account for the success second-comers enjoy from the intellectual efforts of the original author. As noted by other scholars, a key aspect of fanfictions becoming published novels is that they had wide fanbases due to the original subject matter of the fanfiction, and they got the benefit of this transfer of a fanbase under an ostensibly “original work.”[28] The economic outcome is notable, since authors like E.L. James and Cassandra Clare have been able to turn their fanfictions into “multi million dollar industries.”[29]

It should matter that these works became successful because of their original source, but under current copyright law, it does not. Would Manacled have been as successful if it was not a Harry Potter fanfiction? Would Alchemised have been chosen for publication if not for Manacled’s proven success? In essence, fanfiction enjoys broad protection because it does not seek to monetize the original work, but these published novels are chosen specifically for their connection to the source material and the underlying fan base. Without a copyright scheme that takes this into consideration for published fanfiction, the law does original copyright holders a disservice. 

[1] SenLinYu (@SenLinYu), Tumblr (Feb. 5, 2024), https://senlinyu.tumblr.com/post/741499573811445761/im-excited-to-announce-that-i-have-signed-a-book; see also Emily Lafroy, How the most anticipated book of next year is based off The Handmaid’s Tale-inspired fanfiction of Harry Potter’s Draco Malfoy and Hermione Granger that was read more than seven MILLION times, DailyMail (Feb. 9, 2024), https://www.dailymail.co.uk/femail/article-13061735/book-fanfiction-harry-potter-draco-malfoy-hermoine-granger.html.

[2] SenLinYu, Manacled, Archive of Our Own (Aug. 19, 2019), https://archiveofourown.org/works/14454174.

[3] See, e.g., J.K. Rowling, Harry Potter and the Sorcerer’s Stone (1997).

[4] Samantha Grindell, The popular ‘Harry Potter’ fan fiction ‘Manacled’ is way darker than J.K. Rowling’s original story. Here’s what to know about the plot before you read it., Business Insider (Sep. 26, 2023) (last visited Feb. 22, 2024) (detailing the plot of this fanfiction, following Hermione Granger and Draco Malfoy if Voldemort had lost, Harry Potter had died, and Hermione had become a prisoner of war in the aftermath).

[5] TikTok, https://www.tiktok.com/ (last visited Feb. 22, 2024).

[6] See SenLinYu,supra note 2 (reporting 7,183,817 hits to the work).

[7] Archive of Our Own, https://archiveofourown.org (last visited Feb. 22, 2024).

[8] Archive of Our Own, https://archiveofourown.org/tags/Harry%20Potter%20-%20J*d*%20K*d*%20Rowling/works (last visited Feb. 17. 2024) (reporting 450,489 works in the Harry Potter universe).

[9] MsKingBean89, All the Young Dudes, Archive of Our Own (Nov. 12, 2018) https://archiveofourown.org/works/10057010 (last visited Feb. 22, 2024) (boasting 13,263,021 hits).

[10] See SinLinYu, supra note 1 (noting that “[d]uring the last several years, there has been a growing issue with illegal sales of Manacled, putting both me and the incredible community that shares fanfiction freely in legal jeopardy).

[11] Mollie E. Nolan, Search for Original Expression: Fan Fiction and the Fair Use Defense, S. Ill. U. L.J. 533, 535 (2006). (explaining “fan fiction represents not just a tension between [the rights of copyright holders and the public’s fair use], but a fundamental collision in a way rarely seen in copyright law”).

[12] 17 U.S.C. § 102(a).

[13] 17 U.S.C. § 106(2).

[14] Nolan, supra note 11, at 539.

[15] Id.

[16] Id. at 543.

[17] See, e.g., Stephanie Meyer, Twilight (2005).

[18] Steven D. Jamar & Christen B. Glenn, When the Author Owns the World: Copyright Issues Arising From Monetizing Fan Fiction, 1 Tex. A&M L. Rev. 959, 960–61 (discussing how the fanfiction was significantly edited and changed to prepare it for publication); E.L. James, Fifty Shades of Grey (2011).

[19] See Piper Keel, Fan-Use and Fair-Fiction: How Does The Growth and Rise of Fanfiction Effect Its Relationship With The Fair Use Defence?, Austl. Nat’l Univ. J. of L. & Tech. (Nov. 14, 2022) (“Fanfiction…is not sold for profit and sites which host fanfictions are often free to access and therefore have not traditionally held a commercial purpose. In large part, this non-commercial purpose has been the reason fanfiction writers very rarely face legal challenge beyond cease-and-desist letters”); see also Jamar & Glenn, supra note 18, at 973 (detailing the fair use argument as it applies to non-commercial fanfiction); see also Nolan, supra note 11, at 534 (discussing how copyright holders largely rely on cease-and-desist letters for fanfiction writers rather than other legal action).

[20] See Harvard University Office of the General Counsel, Copyright and Fair Use: A Guide for the Harvard Community, Harvard, at 9 (July 11, 2023), https://ogc.harvard.edu/sites/hwpi.harvard.edu/files/ogc/files/ogc_copyright_and_fair_use_guide_bea_july_2023.pdf?m=1689173591 (“Noncommercial use is more likely to be deemed fair use than commercial use”).

[21] See Jamar & Glenn, supra note 18, at 963.

[22] 17 U.S.C. § 107.

[23] See Harvard University Office of the General Counsel,  supra note 14 at 9.

[24] 17 U.S.C. §107; see also Jamar & Glenn, supra note 18, at 970–71.

[25] 17 U.S.C § 106.

[26] See, e.g., Jamar & Glenn, supra note 18, at 978 (discussing Fifty Shades of Grey in connection with the fair use defense).

[27] Id. at 964.

[28] Keel, supra note 19.

[29] Id.

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6Feb

A Dream of Snakes and Copyright: Another Benzene Question

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Tamara Allen

“I turned my chair toward the fireplace and sank into half-sleep. Again the atoms fluttered before my eyes. . . . Long lines, often combined more densely; everything in motion, twisting and turning like snakes. But look, what was that? One of the snakes had seized its own tail, and the figure whirled mockingly before my eyes. . . .”[1]

So goes the story of August Kekulé’s inspiration for his skeletal depiction of benzene as a six-carbon cyclic compound with alternating single and double bonds (depicted using lines):[2]

With the 1865 proposal of his dream-inspired ring hypothesis (and his later publications of a refined structure that more closely resembles the modern benzene structural depiction),[3] Kekulé shed light on a mystery that had stumped chemists since the discovery of benzene in 1825.[4]  For forty years, chemists had struggled to divine a structure that would explain both the superior stability and unique reactivity of benzene.[5]  Kekulé’s intellectual contribution regarding “the simplest and most fundamental structure of the aromatic compounds” has provided the foundation for advances in the theory of aromaticity,[6] opening the door to developments in the synthesis of “dye-stuffs, medicines, and other organic chemicals.”[7]

Shifting to a legal perspective: the creation of any innovative and useful idea prompts one to wonder how the originator can protect (and thus, profit off of) her intellectual property rights in her idea.  Applying modern legal principles to the inventive landscape of the 1860s, how might Kekulé have protected his intellectual property rights in his structural depiction of benzene?

Broadly speaking, “intellectual property is any product of the human mind which the law protects against unauthorized use by others;” this includes patents, trademarks, copyrights, and trade secrets.[8]  This article will address whether Kekulé could have used Copyright Law to protect his benzene depiction.[9]

The United States Constitution grants Congress the power “To promote the Progress of . . . useful Arts, by securing for limited Times to Authors . . . the exclusive right to their . . . Writings . . . .”[10] The statutory source of federal copyright protection is the Copyright Act of 1976 (“Copyright Act”).[11]  For Kekulé’s benzene depiction to fall within the scope of copyrightable subject matter, it must be an (1) original (2) work of authorship that is (3) fixed in a tangible medium.[12]

For a work to be “original,” it must be independently created by its author, and it must possess “at least some minimal degree of creativity.” [13]  In other words, a work is not copyrightable if the author copied another’s work to make it. However, even if an author’s work is identical to another’s prior work, it may still be copyrightable so long as the author independently created it.[14]  Thus, “originality” hinges on the author’s independent source of inspiration for her work rather than the uniqueness or novelty of the work itself.

Under this definition, Kekulé’s benzene depiction would likely be found to be “original.”  Kekulé derived the idea from his dream of snakes and tails—in other words he independently created it.[15]  Even if another “author” independently reached the same structure before Kekulé, another’s independent creation does not bar Kekulé’s copyright prospects so long as the other author cannot prove that Kekulé copied that author.[16]  Additionally, given that chemists struggled to determine the structure of benzene for forty years before Kekulé found a solution,[17] his depiction likely meets the “at least minimally creative” threshold for the originality requirement.  Thus, Kekulé’s benzene structure is likely “original.”

Next, Kekulé’s structural depiction of benzene must have been a “work of authorship.”  A work of authorship can be pictorial or graphic[18] “two-dimensional . . . diagrams [and] models.”[19]  This subject matter category is limited by the “Useful Articles Doctrine,” which limits the scope of copyrightable subject material to only the pictorial or graphic elements “that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[20]  A “useful article” is one that has “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”[21]

In Kekulé’s case, benzene is depicted as a drawing of a hexagon with alternating single and double bonds.[22]  The primary purpose of the depiction is likely to “portray the appearance of . . . or convey information” about the molecule that makes up benzene in its physical form. Therefore, the danger that the Useful Articles Doctrine seeks to prevent—“the open-ended extension of copyright protection to all manner of useful articles”—is not implicated here.[23]  In other words, a copyright covering a drawn depiction of benzene could not be extended to benzene in its physical form, so an application of the Useful Articles Doctrine would serve no purpose. Therefore, Kekulé’s benzene depiction is likely a pictorial “work of authorship” within the scope of Section 102(a)(5).

The final Section 102(a) requirement for copyrightable subject matter is that the work of authorship be “fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated.”[24]  In Kekulé’s case, the moment he drew his structure of benzene in a workbook, he “fixed” his “original work of authorship” in a “tangible medium of expression.”

Thus, Kekulé’s benzene depiction likely falls within the Section 102(a) scope of copyrightable subject matter; however, Section 102(b) presents a significant obstacle in Kekulé’s path to copyright protection.  Section 102(b) establishes: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”[25]  As stated by the Supreme Court, “[t]he most fundamental axiom of copyright law is that ‘no other may copyright his ideas or the facts he narrates.’”[26]

Regarding ideas, a distinction is made between the expression of an idea, and the idea that is being expressed.[27]  Therefore, to overcome the per se uncopyrightable idea of benzene as a cyclic six-carbon compound with alternating single and double bonds (representing the idea of a delocalized electron system, as we understand it now),[28] Kekulé’s copyright should be directed only at the pictorial expression of benzene which uses single and double lines arranged to convey information about the characteristics of benzene.

Another argument against finding that Kekulé’s benzene depiction is copyrightable is that Kekulé has merely discovered a “scientific fact as to the nature of the physical world,” such that he “may not claim to be the ‘author’ of that fact.”[29]  This argument relies on the premise that Kekulé’s benzene depiction is factual in nature, i.e., that Kekulé has merely discovered the structure of benzene as it “actually exists.”[30]  In the 1860s, Kekulé likely could have countered that his depiction of benzene was not a fact, but a hypothesis.  However, in today’s world, the depicted structure of benzene may be so generally accepted in the scientific community as to be considered a legal fact (even if scientifically, the proposed structure remains hypothetical).

In conclusion, so long as Kekulé’s benzene depiction is not barred by Section 102(b), it likely falls within the scope of copyrightable subject matter. Exactly how Kekulé may have enforced such a copyright is another question entirely!

[1] Alan J. Rocke, It Began with a Daydream: The 150th Anniversary of the Kekulé Benzene Structure, Angewandte Chemie Int’l Ed. 46, 46 (2015) (quoting Richard Anschütz, August Kekulé 941–42 (1929)).

[2] Illustration of Kekulé’s Benzene Structure, in August Kekulé, Ueber einige Condensationsproducte des Aldehyds*), 162 Justus Liebigs Annalen der Chemie 77, 88 (1872).

[3] See id.  

[4] Jonathon Clayden et. al., Organic Chemistry 143 (2d ed. 2012).  Some controversy exists over whether Kekulé is the true originator of the benzene ring structure; however, such priority disputes fall outside of the scope of this article.  Id. at 24.

[5] Id. at 143, 156–57.

[6] Aromaticity is “difficult to define,” but to put it simply: aromatic compounds share certain structural and electronic characteristics which cause them to be “exceptionally stable.”  Id. at 160–61.

[7] Shigeaki Kikuchi, A History of the Structural Theory of Benzene – The Aromatic Sextet Rule and Hückel’s Rule, 74 J. Chem. Educ. 194, 194 (1997).

[8] 37 Am. Jur. 3d Proof of Facts §§ 1–2 (1996), Westlaw (database updated Dec. 2023).

[9] This narrow question is specifically directed at whether Kekulé’s arrangement of lines to convey information about a theoretical structure of benzene would have been copyrightable subject matter under the current copyrightable subject matter statute, 17 U.S.C. § 102.   This discussion does not consider (1) Kekulé’s general method of using skeletal structure to depict chemical compounds; (2) Kekulé’s potential scope of copyright enforcement power; or (3) IP protections in benzene as a physical chemical.

[10] U.S. Const. art. I, § 8, cl. 8.

[11] 17 U.S.C. §§ 101–1511.

[12] § 102(a).

[13] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).

[14] Id.

[15] Rocke, supra note 1, at 46.

[16] 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.01, LexisNexis (database updated Dec. 2023) [hereinafter “Nimmer”] (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936)) (“[T]he copyright owner must establish both substantial similarity and copying, ‘for just as he is no less an “author” because others have preceded him, so another who follows him is not a tortfeasor unless he pirates his work.’”).

[17] Clayden et. al., supra note 4, at 143.

[18] 17 U.S.C. § 102(a)(5).

[19] § 101.

[20] Id.

[21] Id.

[22] Clayden et. al., supra note 4, at 143.

[23] See Nimmer, supra note 16, at § 2A.08.

[24] 17 U.S.C. § 102(a).

[25] § 102(b).

[26] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345–46 (1991) (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985)).

[27] Nimmer, supra note 16, at § 2.03(D)(1).

[28] Clayden et. al., supra note 4, at 143.

[29] Nimmer, supra note 16, at § 2.03(E) (citing Feist Publ’ns, Inc., 499 U.S. 349 at 348).

[30] Fact, Black’s Law Dictionary (11th ed. 2019).

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20Mar

Supreme Court to Review Rogers Test for Parody-of-Trademarks Case, Involving Squeaky “Bad Spaniels” Dog Toy and Jack Daniel’s Tennessee Whiskey

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Comparison of Jack Daniels bottle and Bad Spaniels dog toy

Comparison of Jack Daniels bottle and Bad Spaniels dog toy

By Cameron Bray

On March 22, 2023, the Supreme Court will hear oral arguments[1] in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC,[2] which will determine the fate of the controversial “Bad Spaniels”[3] rubber dog toy.[4] The Bad Spaniels dog toy was created in 2013 by the Respondent, an Arizona limited liability company in the business of designing and selling dog toys for retail,[5] known commonly as “VIP.”[6]

Besides “Bad Spaniels,”[7] VIP also sells the Tuffy or “Tuffy’s Dog Toy” brand[8] and the “Mighty” line for stronger dogs.[9] The Petitioner, Jack Daniel’s Properties, Inc. is a Delaware corporation, with its principal place of business in California, that owns and licenses the trademarks and trade dress used for wholesale of Jack Daniel’s whiskey.[10]

The Tennessee corn mash whiskey for which Jack Daniel’s is known has been sold domestically since 1875[11] and was halted briefly by Prohibition.[12] At the trial court level, Senior Judge McNamee of the United States District Court for the District of Arizona granted partial summary judgment upon cross-motions of the parties[13] and the court also entered a permanent injunction, enjoining VIP from commercialization (marketing), distribution, or sale of “Bad Spaniels” after a four-day trial without a jury.[14]

Reviewing VIP’s appeal[15] and the trial record for legal conclusions de novo,[16] the United States Court of Appeals for the Ninth Circuit unanimously[17] found that “Like the greeting cards in [Gordon v. Drape Creative, Inc.],[18] the [‘Bad Spaniels’] dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.”[19] It applied the well-known Rogers[20] test for expressive works under the Lanham Act[21] and held that the Bad Spaniels dog toy was indeed entitled to First Amendment protection.[22]

In terms of First Amendment law[23] and intellectual property (“IP”),[24] Jack Daniel’s Properties, Inc. v. VIP Products LLC is the most important constitutional IP case that the Supreme Court has reviewed since Matal v. Tam[25] six terms ago.[26] It has the power to abrogate Rogers and decide what parodies may be protected under the Free Speech Clause of the First Amendment, which is now in conflict with the two commonly claimed trademark actions under the Lanham Act.[27] If the Court is divided in its opinion, over two dozen amicus briefs have been filed in the case,[28] including from the United States and from corporations such as Nike, Inc., and from nonprofits such as the Foundation for Individual Rights and Expression.[29]

  1. See Adam Liptak, May “Bad Spaniels” Mock Jack Daniel’s? The Supreme Court Will Decide, N.Y. Times (Dec. 5, 2022), https://www.nytimes.com/2022/12/05/us/politics/bad-spaniels-jack-daniels-dog-toy.html; see also Supreme Court of the United States, Docket for 22-148, Jack Daniel’s Props., Inc., Petitioner v. VIP Prods. LLC, https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html (last visited Mar. 8, 2023). ↑

  2. 143 S. Ct. 476 (2022) (granting certiorari to the United States Court of Appeals for the Ninth Circuit). Jack Daniel’s Properties, Inc. v. VIP Products, LLC has been docketed as case number 22-148 by the Supreme Court. See supra note 1. ↑

  3. “In July of 2013, VIP [Products, LLC] introduced the Bad Spaniels squeaker toy. The toy is roughly in the shape of a Jack Daniel’s bottle and has an image of a spaniel over the words ‘Bad Spaniels.’ The Jack Daniel’s label says, ‘Old No. 7 Brand Tennessee Sour Mash Whiskey’; the label on the Bad Spaniels toy instead has the phrase ‘the Old No. 2, on your Tennessee Carpet.’ A tag affixed to the Bad Spaniels toy states that the ‘product is not affiliated with Jack Daniel Distillery.’” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020) (reviewing the United States District for the District of Arizona’s grant of summary judgment). ↑

  4. “In 2014, [Jack Daniel’s Properties, Inc., or “JDPI”] ‘demand[ed] that VIP [Products LLC] cease all further sales of the Bad Spaniels toy.’ VIP responded by filing this action, seeking a declaration that the Bad Spaniels toy ‘does not infringe or dilute any claimed trademark rights’ of JDPI and that Jack Daniel’s trade dress and bottle design are not entitled to trademark protection. The complaint also sought cancellation of the Patent and Trademark Office registration for Jack Daniel’s bottle design. JDPI counterclaimed, alleging state and federal claims for infringement of JDPI’s trademarks and trade dress, and dilution by tarnishment of the trademarks and trade dress.” Id. at 1172–1173 (internal citations omitted). ↑

  5. Complaint, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2014 WL 4913256 (D. Ariz. Sept. 16, 2014) (No. 2:14CV02057). ↑

  6. “VIP Products sells the ‘Bad Spaniels Silly Squeaker’ dog toy, which resembles a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations. For example, the name ‘Jack Daniel’s’ is replaced with ‘Bad Spaniels,’ ‘Old No. 7’ with ‘Old No. 2,’ and alcohol content descriptions with ‘43% POO BY VOL.’ and ‘100% SMELLY.’ After Jack Daniel’s Properties, Inc. (‘JDPI’’) demanded that VIP cease selling the toy, VIP filed this action, seeking a declaration that the toy did not infringe JDPI’s trademark rights or, in the alternative, that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed, asserting trademark infringement and dilution.” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020) (reversing judgment on the dilution claim, ordering vacatur on trademark infringement, and remanding for further proceedings in light of the First Amendment interests owed to “Bad Spaniels”). ↑

  7. See supra notes 3–5. ↑

  8. See, e.g., VIP Products LLC, Tuffy® Aliens: Alien Green, MyDogToy.com, https://mydogtoy.com/p/Tuffy-Alien-Green (last visited Mar. 8, 2023). ↑

  9. See, e.g., Vip Products, MIGHTY – Safari Elephant – Squeaker-Multiple Layers, Amazon.com, Inc., https://www.amazon.com/MIGHTY-MT-S-Elephant-OR-Mighty-Safari-Elephant/dp/B01AT2OTTQ/ref=sr_1_5?crid=3E1V1W9PE4R4E&keywords=mighty%2Bdog%2Btoy&qid=1678294288&sprefix=mighty%2Bdog%2Btoy%2Caps%2C122&sr=8-5&th=1 (last visited Mar. 8, 2023). “Mighty dog toys rethink durability and approach it from a new angle.  Durability is created for each toy with multiple layers of flexible materials that move with the dog’s teeth instead of tearing . . .  These toys may seem plush on the outside, but all the durability features are internal making these toys soft, yet MIGHTY strong.  Please be a responsible dog owner and only allow your dog to play with the toy under supervision.” Id. ↑

  10. Answer and Counterclaims of Defendant and Counterclaimant, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2014 WL 12936100 (D. Ariz. Dec. 3, 2014) (No. CV 14-02057). See also Jack Daniel’s Properties, Inc., Born to Make Whiskey, Our Story, https://www.jackdaniels.com/en-us/our-story (last visited Mar. 8, 2023). ↑

  11. “Since 1875, Jack Daniel’s Tennessee whiskey has borne the registered trademarks JACK DANIEL’S and OLD NO. 7. Jack Daniel’s also has a registered trademark for its three-dimensional configuration of a square-shaped bottle with the embossed signature of ‘Jack Daniel’ . . . Approximately 98% of consumers expressed awareness of the Jack Daniel’s Brand.” Petition for a Writ of Certiorari at 9, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 2022 WL 3561781 (S. Ct. Aug. 5, 2022) (No. 22-148). ↑

  12. See U.S. Const. amend. XVIII (repealed by the Twenty-first Amendment, effective Dec. 5, 1933). ↑

  13. VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2016 WL 5408313, at *1–2 (D. Ariz. Sept. 27, 2016) (No. CV-14-2057). ↑

  14. See VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1173, 1176 (9th Cir. 2020) (vacating the permanent injunction against appellant, inter alia). ↑

  15. Id. at 1173 (citing 28 U.S.C. § 1291). ↑

  16. Id. at 1173–75 (citations omitted). ↑

  17. Judge Hurwitz delivered the opinion of the court, and Judges Miller and Tashima concurred. See id. at 1171–72. ↑

  18. 909 F.3d 257 (9th Cir. 2020). There was no petition or order for a rehearing en banc in the Ninth Circuit, and the Court granted Jack Daniel’s petition for a writ of certiorari after the Ninth Circuit affirmed the lower court’s grant of summary judgment. See supra note 2; VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2021 WL 5710730 (D. Ariz. Oct. 8, 2021) (No. CV-14-020507) (reviewing the matter on remand and granting summary judgment to VIP), aff’d, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2022 WL 1654040 (9th Cir. Mar. 18, 2022) (No. 21-16969). ↑

  19. VIP Prods. LLC, 953 F.3d at 1175. ↑

  20. See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (“We believe that in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”).

    The Rogers test was adopted by the Ninth Circuit in the case of Mattel, Inc. v. MCA Records, Inc., 296 F.3d 849 (9th Cir. 2022). “[The Rogers court] concluded that literary titles do not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.’ We agree with the Second Circuit’s analysis and adopt the Rogers standard as our own.” Id. at 902 (internal citations omitted) (opinion of Kozinski, J.) (finding that MCA Records, Inc.’s use of BARBIE in its song “Barbie Girl” was a parody entitled to First Amendment rights). ↑

  21. 15 U.S.C. § 1051 et seq. Trademark infringement is a cause of action under 15 U.S.C. § 1114. Trademark dilution (by tarnishment or “blurring” a mark) is an additional cause of action under 15 U.S.C. § 1125. Fair use is codified as a legal defense under 15 U.S.C. § 1115 for when a trademark is registered nationally. See id. § 1115(b)(4). ↑

  22. “We affirm the district court’s summary judgment in favor of JDPI on the issues of aesthetic functionality and distinctiveness. However, because the Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, we reverse the district court’s judgment on the dilution claim, vacate the judgment on trademark infringement, and remand for further proceedings.” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020). ↑

  23. The Free Speech Clause is included in the First Amendment to the United States Constitution and generally protects commercial speech from abridgement or censorship: “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.” U.S. Const. amend. I; see David Schultz, Commercial Speech, The First Amendment Encyclopedia, https://www.mtsu.edu/first-amendment/article/900/commercial-speech (last visited Mar. 8, 2023). ↑

  24. Trademark is classified as “intellectual property,” but it draws its constitutional power from the Commerce Clause. See U.S. Const. art. I, § 8, cl. 3; The Trade-Mark Cases, 100 U.S. 82 (1879) (holding that Congress lacked power under the “Intellectual Property Clause” of Article I, § 8, cl. 8 to provide for trademark protection). “[The Congress shall have power . . .] To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.” U.S. Const. art. I, § 8, cl. 3 (emphasis added). ↑

  25. 582 U.S. 218 (2017). ↑

  26. The Matal Court invalidated a provision of the Lanham Act that prohibited the registration of “disparaging” or offensive trademarks. See id. at 223 (holding unconstitutional 15 U.S.C. § 1052(a)). Matal concerned an Asian-American rock band called “The Slants,” who were denied federal trademark registration because their mark was a derogatory term. Id. “But the band members believe that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force . . . We now hold that [§ 1052(a)] violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Id. ↑

  27. See Petition for a Writ of Certiorari at I, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 2022 WL 3561781 (S. Ct. Aug. 5, 2022) (No. 22-148) (Questions Presented: “1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims. 2. Whether humorous use of another’s mark as one’s own on a commercial product is ‘noncommercial’ under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.”); see also Dorsney & Whitney LLP, So, Nine Justices Walk into a Bar . . . SCOTUS to Consider Role of Humor in Infringement and Dilution Claims, JDSUPRA (Jan. 9, 2023), https://www.jdsupra.com/legalnews/so-nine-justices-walk-into-a-bar-scotus-9208322/. ↑

  28. Supreme Court of the United States, Docket for 22-148, Jack Daniel’s Props., Inc., Petitioner v. VIP Prods. LLC, https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html (last visited Mar. 8, 2023). ↑

  29. See SCOTUSBlog, Jack Daniel’s Properties, Inc. v. VIP Products LLC, Cases, https://www.scotusblog.com/case-files/cases/jack-daniels-properties-inc-v-vip-products-llc-2 (last visited Mar. 8, 2023) (listing amici briefs). ↑

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29Oct

Viral for the Wrong Reasons: Credit or Copyright for Short Choreographic Works?

Categories: Current Issues Blog
Comments Off on Viral for the Wrong Reasons: Credit or Copyright for Short Choreographic Works?

By: Maryclaire M. Farrington

Credit or copyright?  That is the question. On September 25, 2019, fourteen-year-old Jalaiah Harmon created a short, twenty-second dance, dubbed “the Renegade,” and posted it on Instagram.[1]  In the weeks after, the video racked up about 13,000 views, inspiring other Instagrammers to recreate the dance and post it themselves.[2]  By October, the dance had migrated to TikTok, and Jalaiah was lost in the endless echoes of “the Renegade.”[3]  Jalaiah was not credited once.[4]

However, Jalaiah did not seek legal action, and did not attempt to copyright her dance,[5] she simply wanted credit.[6]  But where is the line between copyright and credit, and must you have one to perpetuate the other?

The Renegade credit-or-copyright debacle is reminiscent of the 2018 Fortnite lawsuits.[7]  In these lawsuits, a handful of basketball players, pop-culture icons, and even Carlton from the Fresh Prince of Bel-Air attempted to take on Epic Games for their Fortnite “emotes,” alleging copyright infringement and violation of the right of publicity.[8]

The United States District Court for the Central District of California cut Carlton at his knees when the court dismissed his suit, holding: “No one can own a dance step.”[9]  The court went on to explain that “[c]opyright law is clear that individual dance steps and simple dance routines are not protected by copyright, but rather are building blocks of free expression, which are in the public domain for choreographers, dancers, and the general public to use, perform, and enjoy.”[10]

Copyright does not extend to “short dance routines consisting of only a few movements or steps with minor linear or spatial variations, even if a routine is novel or distinctive.”[11]  The reasoning behind such stingy protection is Congress’ unwavering commitment to “progress.”[12]  Copyright law walks the line between “providing protection to incentivize authors to create new works and allowing leeway so that new works can be created without being unduly strangled by the rights of preexisting works.”[13]  Thus, Carlton’s swinging arms aren’t copyrightable, and neither is your favorite athlete’s end-zone jig.[14]

But where is the line between “individual dance steps” and “choreographic routines?”[15]  The United States Copyright Office provides some clarity: “[c]horeography is the composition and arrangement of a related series of dance movements and patterns organized into a coherent whole.”[16]  Common elements of copyrightable choreography include:

  • Rhythmic movements of one or more dancers’ bodies in a defined sequence and a defined spatial environment, such as a stage
  • A series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole
  • A story, theme, or abstract composition conveyed through movement
  • A presentation before an audience
  • A performance by skilled individuals
  • Musical or textual accompaniment[17]

Analyzing Jalaiah’s Renegade under these factors, it seems as though it might be copyrightable.  The hurdles don’t stop there, though. Though the filing costs $45 for a single author or $65 for all other filings,[18] “[p]roviding the requisite material for an ironclad copyright application can also be costly.”[19] For example, a single Labanotation score,[20] which is a “codified dance notation” similar to sheet music, might cost an individual $5,000.[21]  This may explain why, out of the 500,000 applications the Copyright Office receives each year, typically less than 20 are “choreographic works.”[22]  Furthermore, the “world of professional dance is a small one built largely on reputation—so, historically, choreographers haven’t been tempted to outright copy each other’s work. . . . .[23]”

So, what does this mean for the amateur dancers of TikTok?  “To be robbed of credit on TikTok is to be robbed of real opportunities.  In 2020, virality means income. . . . .”[24]  Should growing artists like Jalaiah be forced to invest in the copyright process to reap the benefits of their creativity?  As is seemingly the answer with anything internet-related: maybe, maybe not.  Whether it be social pressures of bourgeoning[25] and veteran[26] creators alike calling out copiers and demanding credit, or the strengthening legal argument some of these creators have,[27] some big names have begun to tip their hat to the original creators.[28]  Perhaps we can trust credit will be given where credit is due, or perhaps the Copyright Office is about to get a lot busier with #TikTokApplications.

[1] Jalaiah S. Harmon (@jalaiah), Instagram (Sept. 25, 2019), https://www.instagram.com/p/B22za3xD1Fh/?utm_source=ig_embed&utm_campaign=embed_video_watch_again.

[2] Taylor Lorenz, The Original Renegade, N.Y. Times (Feb. 13, 2020), https://www.nytimes.com/2020/02/13/style/the-original-renegade.html.

[3] Id.

[4] Id.

[5] See generally id. (discussing that Jalaiah only wants to receive credit for her dance). 

[6] Id.; see also J. Clara Chan, Tik Tok Star Jalaiah Harmon is More Than Just the Renegade Dance Creator in New Docuseries, Hollywood Rep. (Oct. 20, 2021), https://www.hollywoodreporter.com/business/digital/tiktok-star-jalaiah-harmon-renegade-docuseries-1235030529/.

[7] See, e.g., Nick Statt, Fornite Keeps Stealing Dances – And No One Knows if it’s Illegal, Verge (Dec. 20, 2018, 8:55 AM), https://www.theverge.com/2018/12/20/18149869/fortnite-dance-emote-lawsuit-milly-rock-floss-carlton (discussing similar occurrences including Russell Horning’s “floss dance” and Alfonso Ribeiro’s “The Carlton”).

[8] Id.; Chandler Martin, Whose Dance is it Anyway?: Carving Out Protection for Short Dances in the Fast Paced Digital Era, 98 N.C. L. Rev. 1001, 1002 (2020).

[9] Mem. of P. & A. in Supp. of Def.’s Mot. to Dismiss for Failure to State a Claim and Special Mot. to Strike (Anti-Slapp) Pl.’s Second Am. Complaint, Ferguson v. Epic Games, No. 2:18-cv-10110-CJC(RAOx), 2019 WL 578214 (C.D. Cal. 2019).

[10] Id.

[11] Id.

[12] Martin, supra note 8, at 1016 (“The Copyright Office’s interpretation of ‘simple routines’ and ‘short dance moves’ falls in line with how courts have previously interpreted building blocks in order to protect the broader copyright goal of promoting the progress of science and the useful arts . . . Such a right would not promote progress but instead inhibit it by depriving other creators of useful tools.”).

[13] Id. at 1015.

[14] Epic Games, supra note 9; Diane Faulkner, How to Copyright a Dance, LegalZoom, https://www.legalzoom.com/articles/how-to-copyright-a-dance (last updated July 16, 2021); Adi Robertson, Most of the Fortnite Dance Lawsuits are on Pause, Verge (Mar. 9, 2019, 12:23 PM), https://www.theverge.com/2019/3/9/18257385/epic-fortnite-lawsuit-ribeiro-2milly-dance-emote-lawsuits-withdrawn-pause-registration.

[15] Robertson, supra note 15 (“According to US copyright law, individual dance steps can’t be protected, but choreographic routines can—and there’s not much case law establishing a clear boundary between the two.”).

[16] U.S. Copyright Off., Circular 52: Copyright Registration of Choreography and Pantomime, at 1 (2021) https://www.copyright.gov/circs/circ52.pdf.

[17] Id.

[18] Fees, Copyright.gov, https://www.copyright.gov/about/fees.html (last visited Oct. 25, 2021) (choose “Registration”).

[19] Rebecca Milzoff, Inside ‘Single Ladies’ Choreographer JaQuel Knight’s Quest to Copyright His Dances, Billboard (Nov. 5, 2020), https://www.billboard.com/articles/business/9477613/jaquel-knight-beyonce-megan-thee-stallion-billboard-cover-story-interview-2020.

[20] Id.

[21] Milzoff, supra note 20.

[22] Id.

[23] Id.

[24] Lorenz, supra note 2.

[25] See, e.g., Tanya Chen (@tanyachen), Twitter (Mar. 28, 2021, 11:17 AM), https://twitter.com/tanyachen/status/1376191660623863812 (representing an example of a new and flourishing creator).

[26] See, e.g., Chancelor Johnathan Bennett (@chancetherapper), Twitter (July 13, 2018, 12:23 PM), https://twitter.com/chancetherapper/status/1017806749028573184 (representing an example of a seasoned creator).

[27] Paige Skinner, The TikToker Who Created The Viral “Savage” Dance Is Copyrighting The Moves, BuzzFeed News (Aug. 2, 2021, 3:19 PM), https://www.buzzfeednews.com/article/paigeskinner/savage-dance-copyrighted.

[28] Fortnite (@FortniteGame), Twitter (July 17, 2020, 8:00 PM), https://twitter.com/FortniteGame/status/1284276702131089408?ref_src=twsrc%5Etfw%7Ctwcamp%5Etweetembed%7Ctwterm%5E1284276702131089408%7Ctwgr%5E%7Ctwcon%5Es1_&ref_url=https%3A%2F%2Fwww.theverge.com%2F2020%2F7%2F17%2F21329157%2Ffortnite-renegade-dance-emote-jalaiah-harmon-for-sale-now.

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