Fan Fiction, Part VIII: Undiluted Envy

Although the procedural distinctions between copyright and trademark by themselves are more than sufficient to explain rightsholders' reluctance to attack third parties' use of their characters and settings,¹ trademark law itself provides another reason: proof of actual confusion and loss. Legislation pending in Congress now would overturn the unfortunate (but probably required) result in Victoria's Secret.² Should this legislation pass in a largely undiluted form,³ the procedural barrier will remain—but the internal barriers to applying dilution theory will not.

The legislation would soften the result in Victoria's Secret by explicitly making the statute refer to likelihood of identification with the authorized source, instead of "lessening of capacity." On the one hand, this is a good change for consistency's sake, as it brings the Trademark Dilution Act back into parallel with both the Fair Debt Collection Practices Act, 15 U.S.C. § 1692 et seq., and the Federal Trade Commission Act, 15 U.S.C. § 41 et seq.. Since trademark is, at its core, an outgrowth of consumer protection law and theory, it makes sense that its tests should parallel those elsewhere. On the other hand, many observers object that the amendment threatens free speech. Although this is rather a reductio ad absurdum argument—of the nature that gives the "slippery slope" its deserved bad name—it concerns such an important fundamental right (and, ironically, one central to the IP Clause) that it can't be dismissed in substance, even if it can in rhetoric.

Additionally, because H.R. 683 allows famous mark holders to seek injunctions based on a likelihood of dilution (as compared to the higher standard in Moseley which requires a showing that dilution by blurring is actually occurring) and validates tarnishment claims, it is likely that the new bill will chill more creative speech despite the parody and criticism exception than the current statute chills without it.⁴

In analyzing fan fiction and playing in others' sandboxes, this change would mean simply this: That defense that "I wasn't seeking a profit" would have even less force than noted previously. It would also tend to devalue statistical evidence live disputes: All that would be necessary would be demonstrating that the "unsophisticated consumer" couldbe fooled into believing that the subject work was an "authorized" production, not that a significant number of "unsophisticated consumers" would do so.⁵ This makes a trademark-based attack much more palatable to less-wealthy plaintiffs; in practice, the statistical studies necessary to prove that something is in fact "misleading" often cost more than the remainder of the pretrial attorney's fees. Pile on the reluctance of courts to award attorney's fees to prevailing plaintiffs in trademark matters, and we can see yet another reason that few such cases have been fought concerning literary characters and settings.

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1. "Settings" are almost entirely of concern within speculative fiction. The paradigmatic example is the Star Trek universe, which is jealously guarded by Paramount. Parhaps this is because the setting in speculative fiction functions almost as another character; perhaps it is simply that nobody has tried to make much fan fiction in Scott Turow's Kindle County setting.
2. Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003). Aside: I'm referring to this as Victoria's Secret because that name is a lot more meaningful than is the plaintiff's. In any event, this case held that the Federal Trademark Dilution Act, codified at 15 U.S.C. § 1127 as meaning

   the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of—
   (1) competition between the owner of the famous mark and other parties, or
   (2) likelihood of confusion, mistake, or deception.

   The Court held that this requires proof of actual "lessening," not just of the possibility.

3. Pun intended.
4. "The Trademark Dilution Revision Act of 2005 (H.R. 683)" at PublicKnowledge. This is actually a rather restrained variant of the rhetoric commonly thrown about. Note, too, that this would drag us back into the ill-defined—and even misdefined—parody/satire quagmire that I denigrated previously.
5. Leaving aside the philosophical question of whether statistical studies actually "prove" anything, these studies are unsatisfactory for another reason in this context. although the law concerns itself with the "unsophisticated consumer," the actual realistically definable consumer of a literary work is an individual who already consumes literary works, and more particularly at least marginally related literary works. For example, it is extraordinarily unlikely that a hardcore fan of Scott Turow's sophisticated law-flavored literary fiction is going to encounter all that much Harry Potter fan fiction. (Unless, that is, you're writing this particular blawg, and it's your job to do so.) On the other hand, this may provide some justification by itself for not bringing the TMDA's language into parallel with the rest of federal consumer protection law. Maybe.