Pop culture fan conventions are huge in the new millennium. “Cons,” as they are often called, have sprung up all over the country and grown into a massive cultural phenomenon. There are Cons for comics, movie and television franchises, toys and much more. By its own reckoning, Comic-Con boasts more than 130,000 attendees a year. Hit television shows like the Big Bang Theory celebrate Cons as part of hip “nerd culture.”

However, there is a less seemly side of Cons—IP infringement. It's easy to find unlicensed fan art for sale and knock-off products being sold without the proper licensing. Owners of big IP franchises like comic book characters and toy lines may have tolerated much of this activity in the past, but some are taking notice.

For example, the LEGO Group has begun to crack down on enforcement of its trademarks and other IP being used by fan Cons and fan clubs. It has promulgated guidance that has addressed things like limitations on sales of Con t-shirts bearing LEGO Group IP assets like the LEGO® name and logo. In fact, some LEGO fan clubs have had to change their names due to new IP guidelines issued by the company in the last couple of years. Arguably, the LEGO Group has charted a reasonable approach, balancing protection of its IP while not entirely prohibiting or discouraging use of its IP assets in many permissible ways by fans; other companies can be more or less aggressive.

Con vendors selling “fan art,” should be aware of the risk of a claim for IP infringement. Fan art like “original” artwork depicting copyrighted characters, fan websites or fan novels/stories can all implicate IP infringement. For example, in Warner Bros. Entertainment v. RDR Books, the court found that fan art in the form of an encyclopedia of “fictional facts” regarding the Harry Potter universe—which appropriated plotlines, summaries of scenes or key events and language used in the novels—established a case of copyright infringement. The court engaged in an extensive “fair use” analysis and rejected that defense. Among other things, the court observed that the “actual use of the copyrighted works is not consistently transformative.”

Even works “inspired” by a popular IP franchise can amount to IP infringement if the fan is creating a “derivative work.” Fan art can quite often be characterized as a derivative work, which is defined as a work based upon a preexisting work which recasts, transforms or adapts the preexisting work. The law of copyright protects the copyright holders right to control the creation of derivative works (i.e. works that merely change an original work into a new mode of presentation like the novelization of a movie). A fan created sequel or episode utilizing characters of a popular IP franchise is very likely to amount to a derivative work. So, no, you cannot sell your DVD of fan created YouTube videos of PJ Masks episodes—which I can attest are readily available, as a father of young children—or other copyrighted cartoon or comic characters.

If the fan's work “inspired” by the protectable IP is sufficiently original and transformative, the fan might well claim it is protected by the law of fair use. The modern fair use doctrine is codified in Section 107 of the Copyright Act of 1976. The statute provides that “fair use” for purposes such as “criticism, comment, news reporting, teaching … scholarship, or research” is not an infringement of copyright. The law of fair use is complicated and requires a careful review and evaluation of numerous factors. What constitutes fair use is an expansive topic and requires a case-by-case analysis and an evaluation of the following factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Generally speaking, the purpose and character of the purported fair use will weigh in favor of a finding of fair use where there is a “transformative use” that communicates something new and different from the original.

The application of the fair use factors must be done case-by-case, but broadly speaking much fan art may not amount to parody, critical commentary or substantial transformation so as to fall into the realm of fair use. Though certainly some will. One touchstone is the more the “look and feel” of the work reminds one merely of a commercial knock-off, the less likely the work will be found to be fair use. Moreover, because supposedly “everyone does it” or the alleged infringer is a small time operation making little profit—contrary to some popular sentiment—does not, in and of itself, mean the fan art constitutes fair use.

Thus, some fan art at Cons treads on very shaky grounds and Con goers may want to be wary of supporting non-authorized works that violate the IP rights of the content creators whose works have given rise to these conventions that we enjoy.

Leonard Marquez is a partner at Oakland, Calif., law firm Wendel, Rosen, Black & Dean LLP. He focuses his practice on commercial landlord-tenant law, general civil litigation and intellectual property. He can be reached at [email protected].

Pop culture fan conventions are huge in the new millennium. “Cons,” as they are often called, have sprung up all over the country and grown into a massive cultural phenomenon. There are Cons for comics, movie and television franchises, toys and much more. By its own reckoning, Comic-Con boasts more than 130,000 attendees a year. Hit television shows like the Big Bang Theory celebrate Cons as part of hip “nerd culture.”

However, there is a less seemly side of Cons—IP infringement. It's easy to find unlicensed fan art for sale and knock-off products being sold without the proper licensing. Owners of big IP franchises like comic book characters and toy lines may have tolerated much of this activity in the past, but some are taking notice.

For example, the LEGO Group has begun to crack down on enforcement of its trademarks and other IP being used by fan Cons and fan clubs. It has promulgated guidance that has addressed things like limitations on sales of Con t-shirts bearing LEGO Group IP assets like the LEGO® name and logo. In fact, some LEGO fan clubs have had to change their names due to new IP guidelines issued by the company in the last couple of years. Arguably, the LEGO Group has charted a reasonable approach, balancing protection of its IP while not entirely prohibiting or discouraging use of its IP assets in many permissible ways by fans; other companies can be more or less aggressive.

Con vendors selling “fan art,” should be aware of the risk of a claim for IP infringement. Fan art like “original” artwork depicting copyrighted characters, fan websites or fan novels/stories can all implicate IP infringement. For example, in Warner Bros. Entertainment v. RDR Books, the court found that fan art in the form of an encyclopedia of “fictional facts” regarding the Harry Potter universe—which appropriated plotlines, summaries of scenes or key events and language used in the novels—established a case of copyright infringement. The court engaged in an extensive “fair use” analysis and rejected that defense. Among other things, the court observed that the “actual use of the copyrighted works is not consistently transformative.”

Even works “inspired” by a popular IP franchise can amount to IP infringement if the fan is creating a “derivative work.” Fan art can quite often be characterized as a derivative work, which is defined as a work based upon a preexisting work which recasts, transforms or adapts the preexisting work. The law of copyright protects the copyright holders right to control the creation of derivative works (i.e. works that merely change an original work into a new mode of presentation like the novelization of a movie). A fan created sequel or episode utilizing characters of a popular IP franchise is very likely to amount to a derivative work. So, no, you cannot sell your DVD of fan created YouTube videos of PJ Masks episodes—which I can attest are readily available, as a father of young children—or other copyrighted cartoon or comic characters.

If the fan's work “inspired” by the protectable IP is sufficiently original and transformative, the fan might well claim it is protected by the law of fair use. The modern fair use doctrine is codified in Section 107 of the Copyright Act of 1976. The statute provides that “fair use” for purposes such as “criticism, comment, news reporting, teaching … scholarship, or research” is not an infringement of copyright. The law of fair use is complicated and requires a careful review and evaluation of numerous factors. What constitutes fair use is an expansive topic and requires a case-by-case analysis and an evaluation of the following factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Generally speaking, the purpose and character of the purported fair use will weigh in favor of a finding of fair use where there is a “transformative use” that communicates something new and different from the original.

The application of the fair use factors must be done case-by-case, but broadly speaking much fan art may not amount to parody, critical commentary or substantial transformation so as to fall into the realm of fair use. Though certainly some will. One touchstone is the more the “look and feel” of the work reminds one merely of a commercial knock-off, the less likely the work will be found to be fair use. Moreover, because supposedly “everyone does it” or the alleged infringer is a small time operation making little profit—contrary to some popular sentiment—does not, in and of itself, mean the fan art constitutes fair use.

Thus, some fan art at Cons treads on very shaky grounds and Con goers may want to be wary of supporting non-authorized works that violate the IP rights of the content creators whose works have given rise to these conventions that we enjoy.

Leonard Marquez is a partner at Oakland, Calif., law firm Wendel, Rosen, Black & Dean LLP. He focuses his practice on commercial landlord-tenant law, general civil litigation and intellectual property. He can be reached at [email protected].