“Man is least himself when he talks in his own person. Give him a mask, and he will tell you the truth. - Oscar Wilde

Thursday, August 30, 2012

The Legality of Fan Art in the Philippines


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