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[Charles Mahan]

Hello all,

I'm hip deep in an interesting discussion on another forum with regards to the copyright/trademark issues surrounding fan produced artwork of comic/manga characters.  Based on some posts I've read here I am under the impression that the visual likeness of a character falls under the trademark umbrella so I'm posting here for some additional input.  If anyone has links to articles about the topic I'm happy to read them, but my google fu has proven weak lately and I'm having trouble locating solid articles on the topic.

So here's the situation for those of you(most I imagine) who aren't familiar with the Anime/Manga fan art scene in the US.  It all started in Japan.  Manga(Japanese comic books) have been popular for many decades in Japan.  Practically the entire country reads them.  There is a kind of cottage industry of fans in that country that produce fan fictions and fan art in the form of fan produced comics.  Sometimes these are original stories with original characters, but more often than not these characters are from commercially released manga.   The fan artists and story writers will take those characters and create new story lines print a couple thousand copies or so and sell them at tables in events like Comiket which is held twice a year and attracts as many as half a million attendees.  At first blush you would expect the Japanese publishers to clamp down hard on an event like this, but quite the contrary seems to be the case.  Comiket is more than 30 years old, and instead of the publishers attempting to sue them out of existence, the publishers setup their own tables.  Instead of sending out cease and desist letters, industry reps troll the tables to see what properties are attracting the most attention from the fan artists.  They actively recruit talented artists and occasionally pickup original works for national publication.  Under Japanese law these dojinshi(fan produced comics) as they are called are technically illegal, but the industry derives a benefit from them and so nobody complains, with a handful of notable exceptions.  In general the industry leaves the fan artists alone so long as they restrict their sales to tables at these events and do not attempt to mass market or distribute them.

Over the past 25 years or so in this country conventions have sprung up as the anime/manga phenomenon has spread to this country.  In these conventions, it is common to have an artist alley where fan artists can sell fan artwork.  The idea behind these artist alleys is to replicate in miniature the kinds of things that happen at events like Comiket.  American conventions have also garnered industry support from American distribution companies and from the Japanese publishers who regularly send guests to the American conventions.    For most of that 25 years, fan art has been tolerated here in much the same way it has been in Japan.  Here Fan art is more restricted to paintings, marker drawings, etc.  There are few fan comics in the US like there are in Japan.  That said there are numerous art shows around the country at different conventions which sell this artwork and prints are usually available at artist alley tables.

The problems have sprung up relatively recently with a few shows deciding to put a stop to fan art altogether in a knee jerk reaction to the possibility that someone might one day send a cease and desist letter.  Technically most fan art produced here could be found to infringe on the trademarks and copyrights held by the Japanese publishers who hold the copyrights and trademarks for the characters depicted in the artwork.

[Charles Mahan]

Now that I've set the stage a bit, my questions for this forum are as follows.

• The image of a comic book character, ie the style of the face, general shape of the body, characteristic hair and clothing, etc.  Do those fall under copyright law or trademark law?
• Assuming that they fall under trademark law and the entity which holds the trademark is a Japanese publisher, who would have the standing to pursue a trademark infringement case against a fan artist for producing new artwork featuring a character design that is under trademark?  Presumably only the Japanese publisher who actually owns the trademark.  In many cases there are american distribution companies who license these properties for distribution in the US, but I am unclear on whether or not they have the standing to bring a trademark infringement case against someone producing art for a property for which they hold a license agreement, or if the actual trademark owner would have to get involved to bring a case.
• In the event of such a case, what impact would a decades long practice of tolerance for fan art have on the court case?
• Are there any provisions in the trademark law that make allowances for artistic expression?  
• I see a distinction drawn occasionally in copyright and trademark articles regarding the concept of something being produced "commercially".  What does this term mean in context?  Does it cover any piece of art created with the intention of being sold at auction?  What about prints of artwork?  At what point does art become "commercial"?
• If the trademark holders have shown zero interest for decades in making any effort to stop the sale of fan produced artwork, is there really any need for convention organizers to be concerned about suddenly being sued out of existence.  Isn't it more likely that trademark holders would send a cease and desist letter before any legal action was threatened?
  

What I suspect is happening is that some people who do not really understand the situation in Japan and the symbiotic relationship between the Dojin creators and the industry, have come along and decided to start banning fan art in an effort to cover their butts in case someone decides to sue them.  We do live in a litigious society after all.  It could happen, but the odds are VERY small, and there is a very long history of the industry looking the other way on fan artists, who after all are not really producing things on a commercial scale.

To add some numbers to the discussion:
Typical fan art prints in american artist alleys are color laser prints and sell for around $5 with a few exceptions running closer to $20.  Occasionally at auction prints can run as high as $400, but typically prints top out under $100.
Original art in the form of paintings, marker or colored pencil pieces, charcoal, cell art, etc will cell at auction for anywhere from $5 to $1000, but only rarely more than $300.  
And as far as numbers, I suspect an artist alley fan artists that sold 100 prints would be pretty happy with the way the show went, and a big auction like AnimeFest just had might send 92 pieces to the live auction.

Myself I am a collector of anime artwork both original character designs and fan art.  I don't have a dog in the fight per se other than the interest to see fan art available for me to collect in the future without needing a plane ticket to get me to Japan.

Anyway thanks for taking a look and I appreciate any and all feedback.

[Zonath]

"The image of a comic book character, ie the style of the face..."

Both.  The original artwork is protected by copyright law, and its use in trade is protected by trademark law.  So, someone who produces a derivative work and uses it in trade should expect to be sued under both bodies of law.

"Assuming that they fall under trademark law and the entity which holds the trademark is a Japanese publisher, who would have the standing to pursue a trademark infringement case against..."

International distribution agreements often have clauses where one company or the other is authorized and given the duty to sue for rights infringements in country.  Without knowing what those agreements say, it's tough to tell, but the default would usually be the original rights holder.

"In the event of such a case, what impact would a decades long practice of tolerance for fan art have on the court case?"

On a strict trademark case, the past permissiveness could possibly show that the company has abandoned rights to the mark or allowed it to become generic.  The analysis under copyright would probably be different, and center on estoppel or laches.

"I see a distinction drawn occasionally in copyright and trademark articles regarding the concept of something being produced "commercially".  What does this term mean in context?..."

The commercial or non-commercial character of the use can be important in an analysis of fair use.  In a fair use case, a work being produced for commercial use typically works against a finding of fair use, and thus works against the defendant.  Often, in a copyright fair use case, one of the bottom lines for the analysis is market displacement, which measures the amount of the rights holder's market that the alleged fair use usurps.  I would guess that the fact that these artworks are being sold at auction would not militate to the favor of the defendants.

In a trademark case, there is typically only infringement if a mark is unlawfully used in commerce.  So, if someone was making fan art for their own use and not distributing it or displaying it in any way, the likelihood that there would be trademark infringement would be very low.  Again, though, a sale at an auction is pretty commercial.

"If the trademark holders have shown zero interest for decades in making any effort to stop the sale of fan produced artwork, is there really any need for convention organizers to be concerned about suddenly being sued out of existence.  Isn't it more likely that trademark holders would send a cease and desist letter before any legal action was threatened?"

Possibly, but a cease and desist letter is not at all required before a convention organizer is sued out of existence.  Some attorneys take the stance that cease and desist letters just give the defendant more time to circle the wagons, and that a summons delivered out of the blue can be a more effective way to deter an infringing use.  Again, laches could potentially be a defense, but it'd need to be proven in court, and most con organizers I've known are on shoestring budgets that wouldn't really support them fronting the kind of money a defense like this would cost.

[Kaitlin]

"In the event of such a case, what impact would a decades long practice of tolerance for fan art have on the court case?"

On a strict trademark case, the past permissiveness could possibly show that the company has abandoned rights to the mark or allowed it to become generic.  The analysis under copyright would probably be different, and center on estoppel or laches.

Actually, trademark is always equitable, so a laches argument could be used there also.  "Equity aids the vigilant, not those who sleep on their rights."  This is the reason why smart companies are always very pro-active in searching out infringers.  If they let people slide, they do it at their (trademark rights') peril.

If the trademark holders have shown zero interest for decades in making any effort to stop the sale of fan produced artwork, is there really any need for convention organizers to be concerned about suddenly being sued out of existence.  Isn't it more likely that trademark holders would send a cease and desist letter before any legal action was threatened?

Possibly, but a cease and desist letter is not at all required before a convention organizer is sued out of existence.  Some attorneys take the stance that cease and desist letters just give the defendant more time to circle the wagons, and that a summons delivered out of the blue can be a more effective way to deter an infringing use.  Again, laches could potentially be a defense, but it'd need to be proven in court, and most con organizers I've known are on shoestring budgets that wouldn't really support them fronting the kind of money a defense like this would cost.

Zonath's caution is a good one:  the questions of whether you have the law on your side and whether you are able to both a) prove your case in court and b) finance a sustained fight to prove your case in court, are very different questions.