When branding a new product, many businesses allude to copyrighted works either to honor a creative work or cash in on a pop culture success. The practice is very common across a wide variety of products, including t-shirts, stickers, craft beers, and even car commercials. You may even be considering alluding to a copyrighted work for your next product. But, brand creators are often unaware of the dangers associated with the practice as it risks trademark and copyright infringement. This four-part series introduces the limits of the applicable legal doctrines, as well as the defenses available.
In Part I, we looked at the ways brand creators allude to copyrighted works, especially in their brand name, trade dress, and advertising. In Part II, we discussed the pitfalls of trademark infringement, as well as the two most common defenses: fair use and parody. In Part III below, we examine the dangers of copyright infringement that can arise when brand creators allude to copyrighted works and the common defenses.
Copyright law protects much more than just books and art. It protects all “original works of authorship, fixed in any tangible medium.” This includes literary works, musical works, dramatic works, art, sculptures, movies, sound recordings, and even architecture. Our legal system seeks to promote and encourage the creation of new creative works by providing authors of creative works a wide range of exclusive rights to those works. So, authors are given exclusive rights to reproduce their creative works, to prepare derivative works, and to display the work publicly. In order to be protected by copyright, though, a work must be an original, creative work. Originality and at least a modicum of creativity are required in order for something to be copyrighted.
This does not necessarily mean that everything in a creative work is protected by copyright law. To take an extreme example, if every word in a book could be copyrighted, then an author could monopolize common words and make the authorship of any future book nearly impossible. Therefore, courts have distinguished between protectable and unprotectable elements in copyrighted works. This distinction is vital because only the copying of protectable elements constitutes copyright infringement. In movies and novels for example, the general “ideas” behind the work and the basic plot points are not protected, but the specific expression of that work is protected.
In Part IV, we will discuss how this applies to fictional characters and the complicated analysis that can involve. For now, though, we can look at a few things that are unprotectable and therefore fair game when it comes to copying.
Not Protected by Copyright
Recall that for something to be protected by copyright law, it must be original and creative. Therefore, the following are not protected under copyright law: historical events, names, short phrases, and stock scenes.
Historical Facts and Events. Historical facts and historical events are not unprotected because they lack the requisite creativity and originality. This is true even if those historical events have been depicted in creative, copyrighted works. For example, even though the movie Saving Private Ryan depicted the D-Day invasion better than any creative work before or since, Paramount Pictures cannot claim exclusive rights to the Normandy landings. So, if a brewery wanted to name a line of beers after World War II battles—a fantastic idea, really—they are perfectly free to do so! However, so-called “fictional facts,” i.e., the events occurring in a fictional work are copyrightable. This was a rude awakening for the publisher of an unauthorized Seinfeld trivia book, who discovered that Castle Rock Entertainment has a copyright on the events occurring in the world of Seinfeld, including the “fictional fact” that it was Junior Mints that Kramer was eating while observing a surgical procedure from an operating-room balcony. (Ironically, “Junior Mints” is of course a trademark of yet another separate entity, but the use of that trademark in the Seinfeld world is protected by the nominative fair use doctrine discussed in Part II because it was used simply to identify the product.)
Names, Titles, and Short Phrases. Similarly, names, titles, slogans, and short phrases do not enjoy copyright protection because they lack the requisite modicum of creativity. As you can imagine, if short phrases could be copyrighted, creative progress would be stifled because these are the building blocks of larger works. However, as we discussed in Part II, names and short phrases could be protected under trademark law if they identify a source of goods in commerce. So brand creators must be careful here. For example, the name “Lightning McQueen” was not protected by copyright law from the first moment the Pixar screenwriter made those keystrokes and brought the animated car to life. However, that name has subsequently been trademarked and plastered on everything from t-shirts to water bottles, so misuse would be infringement.
Stock Scenes and Characters. Finally, stock scenes—called scenes a faire—and stock characters likewise do not enjoy copyright protection. Scenes a faire are those “incidents, characters, or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.” Think of any western movie; what comes to mind? Dusty roads, duels at high noon, six-shooters, cowboy hats, maybe even a passing tumbleweed? Those are all examples of scenes a faire, and they are not protected by copyright. Just like short phrases are building blocks of books, these elements are building blocks of the western genre, and therefore, no one can claim a monopoly over them. Without the freedom to use these basic elements, it would be impossible to create any new work in that genre.
Defenses: Fair Use and Parody
There are two main defenses to a claim of copyright infringement: fair use and parody. These are broadly similar to the defenses for trademark infringement, though they are not identical, and it would be unwise to gloss over the unique aspects of each as copyright defenses.
Fair Use. Fair use is an affirmative defense that allows one to use another’s copyrighted work, even the protectable elements of a copyrighted work. The federal statute lists four factors for consideration when deciding whether a given use of another’s work is fair use: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use on the potential market. While courts tend to systematically run through each of the factors in their analysis, in practice, the first and the fourth factor are the most important. Under the first factor, courts examine whether the new use merely supplants the original or whether the new use is “transformative” or is being used for a different purpose. This analysis is highly fact-specific, and the outcome can be difficult to predict because what may appear as mere copying to one person may be considered a new transformative work of art to another. Under the fourth factor, the court considers the economic impact of the new work on the original. The analysis, though, does not hinge merely on whether the new work would damage the market for the original—otherwise a bad review by a film critic might be infringement—but on whether the new work usurps the market for the original by offering a competing substitute. Here again the outcome is highly fact-dependent and notoriously difficult to predict.
Parody. The parody defense is technically not an independent defense but rather a common and favored scenario within the fair use defense. Parody is the use of another’s work in order to comment or criticize by joining “reference and ridicule.” Parody is another form of use and courts will consider the parodic nature of the new use under the first fair use factor. While a parodist must take at least enough of the original work to “conjure up” the reference so that the message is received by the audience, taking too much of the original work may be problematic. Whether a new use succeeds as parody or whether it is considered copyright infringement likely depends on whether the court thinks the new work comments on the original or whether the new work merely uses the original to get attention or to avoid the drudgery of working up something fresh. This line, while easy to state conceptually is difficult to discern in concrete cases.
Brand creators intending to allude to a copyrighted work must tread carefully to avoid copyright infringement. You can stick to the safe and secure paths of historical facts and events or scenes a faire, which are not protected by copyright law. But, venturing out into the world of fair use and parody can be treacherous, and you will want a skilled guide. In the fourth and final installment of our series, we will take a more in-depth look at copyright law as it applies to fictional characters. How will it all turn out? Find out next time. To close with a non-infringing use of a short phrase: same Bat-Time, same Bat-Channel.
This article is taken from Paul M. Matenaer, Never Tell Me the Odds: How to Avoid Infringement When Alluding to Copyrighted Works in Branding, 22 Chi.-Kent J. Intell. Prop. 86 (2023).