Fan art is the
collective term for artworks, which may include but are not limited to
drawings, paintings, posters, collages and banners, that are based on
characters and stories from literary works and visual media. These artworks are
created by any person other than the artist; as such, issues have been raised
as to their legality, particularly in the realm of intellectual property (IP) rights,
i.e. copyright and trademark.[1]
Unfortunately, a search
of Philippine jurisprudence on the subject yielded zero results, albeit it has
been tackled in American courts. However, even in American jurisprudence there
is no definitive answer on the issue, and courts are given wide latitude in
deciding similar cases.
In the Philippine
setting, issues of copyright or trademark infringement generally raise five (5)
important questions, to wit:
(I) Is the subject
matter that is the basis of fan art protected by copyright?
(II) Is fan art
considered a derivative work?
(III) Is the making of
fan art compatible with fair use?
(IV) Is the subject
matter that is the basis of fan art a registrable trademark?
(V) Does the doctrine of
secondary meaning apply?
I. Copyright
Copyright
is that intellectual property right which one has over “original intellectual creations in the literary and artistic domain
protected from the moment of their creation”[2] and the works are generally protected “during the life of the author and fifty (50)
years after his death”.[3]
There
are certain literary and artistic works as well as derivative works that are
protected by copyright. The literary works and visual media that are often the
basis for fan art are included in this list, viz:
“172.1
Literary and artistic works, hereinafter referred to as "works", are
original intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
(a) Books,
pamphlets, articles and other writings;
xxx
(l)
Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
(m)
Pictorial illustrations and advertisements;
xxx
(o) Other
literary, scholarly, scientific and artistic works.”[4]
Having established that
the base materials for fan art are protected by copyright, the question now
arises whether a particular scene from a literary or artistic work or a
character therein is also copyrightable or not.
Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines, is silent
on this. It is a sound practice in statutory construction that where the law is
silent on a subject, recourse may be had to foreign law or international law
from which the domestic law is patterned. In this case, the view of the World
Intellectual Property Organization (WIPO) may be persuasive. On the question
whether a character is protected by copyright, the WIPO is of the view that “(a) character could be protected under
copyright if it is an original expression of an author. Merchandising items
such as toys, interactive games, books and clothing including characters can
also be protected by intellectual property rights in certain circumstances,
mainly copyright and trademarks, along with other areas of law.”[5]
The rulings in American
jurisprudence also support the view that a character is protected by copyright,
particularly in the cases Anderson v.
Sylvester Stallone [1989 WL 206431 (C.D. Cal.)], Nichols v. Universal Pictures Corp. [45 F.2d 119 (2d Cir. 1930)]
and Metro-Goldwyn-Mayer v. American Honda
Motor Co. [900 F. Supp. 1287 (C.D. Cal. 1995)].
II. Fan Art
as Derivative Work
Derivative
works that are protected by copyright are enumerated in Section 173 of R.A. No.
8293, to wit:
“Sec. 173. Derivative Works. –
173.1. The following
derivative works shall also be protected by copyright:
(a)
Dramatizations,
translations, adaptations, abridgments, arrangements, and other alterations of
literary or artistic works; and
(b) Collections of literary, scholarly or artistic
works, and compilations of data and other materials which are original by
reason of the selection or coordination or arrangement of their contents. (Sec.
2, [P] and [Q], P. D. No. 49)
173.2. The works
referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as
a new works: Provided however, That such new work shall not affect the force of
any subsisting copyright upon the original works employed or any part thereof,
or be construed to imply any right to such use of the original works, or to
secure or extend copyright in such original works. (Sec. 8, P. D. 49; Art. 10,
TRIPS)”[6]
It
is clear from the aforementioned provision that fan art is considered as a
derivative work as it is an adaptation or even an alteration of a literary or
artistic work. Consequently, copyright protection of the original author
extends to the derivative work because “such
new work shall not affect the force of any subsisting copyright upon the
original works employed or any part thereof, or be construed to imply any right
to such use of the original works, or to secure or extend copyright in such
original works.”[7]
In short, the original
author still has the exclusive right to use the original work in making the
derivative work. Therefore, based solely on the above-cited provision, it can
be gleaned that fan art is unlawful if the right to use the original work has
not been transferred or assigned to the “fan”. This, however, admits of an
exception which would be discussed on the next section.
III. Fan Art
and the Doctrine of Fair Use
The
Doctrine of Fair Use is a limitation on the various rights, i.e. economic,
moral and neighboring, of a copyright holder. It is provided in Section 185 of
R.A. No. 8293 that “(t)he fair use of a
copyrighted work for criticism, comment, news reporting, teaching including
multiple copies for classroom use, scholarship, research, and similar purposes
is not an infringement of copyright.”[8] Hence, a
derivative work (like fan art) may be made by any person aside from the original
author if the use is compatible with fair use.
To
determine the compatibility with fair use, the following factors shall be
considered:
(a) The
purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit education purposes;
(b) The nature of the copyrighted work;
(c) The
amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(d) The
effect of the use upon the potential market for or value of the copyrighted
work.[9]
This
is where the water gets murky. The abovementioned factors are couched in
general and vague terms, and are likely to give rise to several more questions.
One example is, in the determination of
the amount and substantiality of the portion used, the baseline for what is
compatible with fair use is not established. In view of this difficulty, the
Courts enjoy wide latitude in deciding cases involving copyright infringement
especially if fair use is used as a defense.
Thus,
a categorical answer on the legality of fan art in the Philippines, particulary
with regard to copyright, cannot be made. As usual, we revert to the practice
that instances like this are considered on a case-to-case basis, and is best
left to the discretion of the courts.
IV.
Trademark
Trademark
is that intellectual property right which one has over any visible sign capable
of distinguishing the goods of an enterprise.[10] The
rights in a mark are acquired through valid registration[11] and the
certificate of registration shall remain in force for ten (10) years.[12]
V. Fan Art
and the Doctrine of Secondary Meaning
The
issue of the legality of fan art in relation to trademark would only arise when
a character can be used to distinguish goods of an enterprise, and such character
is the subject of fan art. A character may be protected when it has been
validly registered or if it has attained secondary meaning.
When
a character has been validly registered and used to distinguish the goods of an
enterprise and the same is used in a fan art there may only be infringement if
used in a manner as to cause confusion as to a product or service or would tend
to indicate a connection between different goods or services and the owner of
the registered mark and the interests of
the owner of the registered mark are likely to be damaged by such use.[13]
Inversely, if there is no confusion or if damage is not likely to be caused
there is no infringment of the right over the trademark.
On the other hand, in
Philippine Nut Industry, Inc. v. Standard Brands, Inc. and Evalle, the doctrine
of secondary meaning was exlained thus: " ... a word or phrase originally incapable of exclusive appropriation
with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by
one producer with reference to his article that, in that trade and to that
branch of the purchasing public, the word or phrase has come to mean that the
article was his product." [14]
Thus, when upon
perceiving a character or any sign the purchasing public associates such with a
specific source of a product, then that character or other sign has attained a
secondary meaning. Consequently, the use of the same in a fan art that is
likely to cause confusion or damage, or if it would constitute unfair
competition, renders the fan art unlawful.
Summary
Fan
art is legal in the Philippines in any of the following circumstances: (1) the literary
or artistic work that is the basis of the fan art is not protected by
copyright; (2) the author of the fan art has the right (transferred or
assigned) to use the original as basis for the derivative work; (3) the use of
fan art is compatible with fair use; (4) the character or sign which is the
basis of the fan art is not a registrable trademark; (5) the character or sign
which is the basis of the fan art has not attained secondary meaning; (6) the
fan art, although similar to the original sign, is used for a different purpose
and does not cause confusion as to the source of the original goods; and (7)
the fan art does not tend to indicate a connection between different goods or
services and the owner of the registered mark and the interests of the owner of the registered
mark are both likely to be damaged by such use.
[1]
http://en.wikipedia.org/wiki/Fan_art
[2] Sec. 172.1,
R.A. No. 8293
[3] Sec. 213.1,
R.A. No. 8293
[4] Op. Cit. See
No. 2
[5]
http://www.wipo.int/copyright/en/faq/faqs.htm
[6] Sec. 173,
R.A. No. 8293
[7] Ibid.
[8] Sec. 185,
R.A. No. 8293
[9] Ibid.
[10] Sec. 121.1,
R.A. No. 8293
[11] Sec. 122,
R.A. No. 8293
[12] Sec. 145,
R.A. No. 8293
[13] Sec. 147,
R.A. No. 8293
[14] G.R. No.
L-23035, July 31, 1975
