My, how time flies when you're not having fun. I hadn't realized it had been quite so long since the last entry! In any event, I'm getting closer on that article draft, so perhaps these will come off a little more every-third-dayish now. At the moment, there should be either three or four more parts. My blawg may vary—and probably will.
Just why doesn't a direct infringement theory help much when applying trademark law to fan fiction? The Lanham Act puts the standard like this:
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Lanham Act § 43(a)(1), codified at 15 U.S.C. § 1125(a)(1) (emphasis added). (We're going to neglect common-law trademark theories in this essay; they're in the article, but don't make enough of a difference to matter in a blawg.) As is usual in this sort of inquiry, the statute is far less clear than it could (or should) be. However, the three bolded phrases are important to figuring out what is going on here.
The primary "defense" raised by most advocates of fan fiction is the Lanham Act's "uses in commerce" requirement. These writers claim that their fan fiction is a "work of love" that is noncommercial in nature, and therefore cannot possibly infringe a mark. I'm afraid, though, that this is based on an unduly restricted (and self-serving) definition of "commerce." If there is advertising connected with the fan fiction, such as banner ads on a website; if there is a subscription fee or other payment of any kind for access, even if ultimately at a loss; if there is a membership fee; in short, if by any conception there is money changing hands, there is arguably commerce. This, in turn, means that if fan fiction is hosted on a website through a commercial ISP, it may be in commerce. Then, too, there's the oft-unstated (and sometimes unconscious) hope/possibility that one's fan fiction will be "noticed" by a commercial publisher, and thereby lead to a publishing contract. In a word, that's advertising. The "use in commerce" predicate is not so ironclad a defense as advocates would have it. (Returning to copyright for a moment, the tests for commercial activity and benefit in Fonovisa bear considerable thought in this context.)
More damaging to theories of direct infringement, though, are the two substantive methods of infringement prohibited by the statute. Fan fiction frequently has some kind of disclaimer stating that it is not authorized, which limits (does not, contrary to belief among many, eliminate) the likelihood of finding apparent confusion as to origin, sponsorship, or approval of the material. In reality, these disclaimers go only to the "likely" issue, and are matters of fact unique to each particular circumstance. That, friends, is not a good means of protecting oneself from lawsuits… since the relevant facts won't be determined until the lawsuit is filed! Misrepresentation of the nature, characteristics, qualities, or geographic origin is a much harder issue on direct infringement. First of all, as noted, a reasonable observer could or would treat fan fiction as an advertisement—even if the advertisement isn't for the subject of the fan fiction, but for its author. The defense, then, would be that the fan fiction does not misrepresent the underlying work(s). This is an even harder factual question than before.
Of course, this cuts both ways. As hard a factual question as direct infringement is for the defense, it's even harder for the plaintiff (the owner of the original property, which I'll refer to from here on as the "authorized creator"). All that means, though, is that this particular theory of infringement is not all that practical a response. There remain two other theories of trademark infringement, though, both of which are much more obviously germane to the issue and much more dangerous to the proprietor of fan fiction: dilution and disparagement. Next time we'll look at dilution, then after that at disparagement, followed by a summing-up of trademark infringement theories and fan fiction. That won't complete the series quite yet; we'll need to tie everything back together.