We Are Just Too Pretty to get Sued for Infringement
|Written by Beth Hutchens
Hutchens Law Office, PLLC
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Posted: April 23, 2013 @ 7:35 am
For those of you who are totally missing out, Firefly was a briefly lived television show that aired on Fox in 2002. It only lasted for a few months before Fox yanked the plug (a most egregious decision that I shall never EVER forgive them for). In the years that followed, Firefly – the best space western you didn’t watch – gained a cult following that gives Trekkies a run for their money. In one of the episodes, the character Jayne Cobb receives a care package from his mother containing a homemade orange and yellow poofball hat. The hat wasn’t a focal point of the episode but fans of the show, known as Browncoats, can easily be identified at conventions by wearing this most cunning hat.
Despite collecting dust on the shelf at Fox for over a decade, the fans’ devotion to Firelfly has kept the series alive. If you’ve never been to a convention like ComiCon, it’s common to see folks dressing up as their favorite character from a comic, movie, or TV Show. There may be a Viper Pilot here, a 4th Doctor there, even a Stormtrooper or two. Browncoats wear the Jayne Hat. The hat is, and has been, a favorite item of do-it-yourselfers to sell on sites like Etsy.
In 2012, a decade after the show was mothballed, Fox licensed the right to sell official Firefly apparel, including the Jayne Hat, to a company called Ripple Junction. The hat quickly became a top seller in online stores like ThinkGeek. Shortly thereafter, Etsy began taking down certain items in response to cease and desist letters from Fox. Specifically, Fox sent letters to Etsy letting them know that certain shops were selling unauthorized versions of the Jayne Hat. This, in turn, inspired a collective “Whaaaaa???” from the geek community and Browncoats everywhere muttered “Curse your sudden but inevitable betrayal!” ThinkGeek and Ripple Junction deny having anything to do with the cease and desist letters and Fox has remained quiet on the subject, leaving Browncoats and Etsy sellers free to direct their ire toward Fox (admittedly an easy target).
Now, Fox’s talent for alienating folk is near miraculous. The show was cancelled, mothballed, and only the fans seemed to care about it for the last ten years or so. Perhaps resentful of Fox’s ability to make sure members of the nerd community are equally ignored or meddled with, the fans’ response was swift and indignant. But before we entertain the thought of a ship of hungry Reavers descending upon Fox’s legal department, there are a lot of theories that are a bit whimsical in the brain pan that we need to address before we can get to what’s really going on here.
The letter sent to Etsy mentions copyright, trademark, and other intellectual property rights in Firefly, which includes characters, images, designs, slogans, and other distinctive creative elements. Don’t read too much into this – it’s standard language in a cease and desist. Admittedly, I haven’t seen the letter from Fox or any other fact-based documents that permit me to say for sure, so I have to conjecture a bit to address the issues, which yet again, are numerous and complex.
This is not, contrary to popular belief, a purely copyright infringement issue – at least in the sense in which it’s being framed. Fox doesn’t appear to be arguing that it has an ownership interest in the expression of the Jayne Hat, the pattern to the hat, or that either even merits copyright protection in the first place. Copyright law does protect sewing patterns, but the protection does not extend to the item made using the pattern. Copyright for fashion designs is well beyond the scope of this article, but suffice it to say that whether an article of clothing merits copyright protection goes well beyond a simple hat, even if it’s the sweetest hat ever made. It is true that each knitter puts her own spin on the hat and therefore the hat being sold is not an exact replica of the Jayne Hat. In a garden variety copyright infringement case, this would probably trigger a substantial similarity inquiry, but that’s not what we’re talking about here. The cease and desist does not mean that an Etsy store selling a homemade poofball hat will be liable for copyright infringement. Period. In fact, it’s highly doubtful Fox even cares to make this issue about the hat in and of itself.
Browncoats argue that it was the fans, not the show, that made the hats popular which is kind of true. The Jayne Hat is only briefly featured in one episode that didn’t even air in the original series. Fans feel justified selling these hats, claiming they built the demand at a time when Fox showed no interest in the Firefly brand. Also arguably true. But even if fans’ efforts and resources developed the Firefly brand, probably more than Fox ever could have, it still doesn’t bestow a license to use the brand. Etsy sellers argue that since the hat is an homage to the show done out of love, there should be some sort of “out” for them to make and sell the hat. Sweet, but also wrong. Loving the show as much as Jayne loves Vera does not give one an ownership interest. In fact, it doesn’t give you anything. Lastly, everyone seems to believe that Fox should have just left them alone since no one was making a ton of money from homemade orange and yellow poofball hats. In the immortal words of Jayne, “Ten percent of nuthin’ is…let’s do the math here…nuthin’ into nuthin’…carry the nuthin’…” Ironic series quotes aside, this is very much not true. Strictly speaking, and from a purely intellectual property standpoint, the issue isn’t about love and money. Or hats. OK, maybe it’s a little bit about money.
The truth is that what this little kerfuffle is about is a teeny little thing called merch rights. Have you ever noticed that when there’s a very popular movie, TV show, or book, all sorts of stuff from that show starts popping up on coffee mugs, T-Shirts, plastic figurines, replicas, and all other manner of tchotchkes? That’s merch – short for “merchandise” and the rights to make and sell this stuff are negotiated early on. Merch is a HUGE money maker in the entertainment industry – sometimes the profits surpass the revenues from the show itself (Star Wars, anyone?) – so this is kind of a big deal. But successful merchandising campaigns also attract copycats and imitators who produce counterfeit products. Any responsible IP owner will do whatever possible to deal effectively with these problems because they damage profits. Big time.
That’s what seems to be going on here. Two by two, hands of blue, it appears that Fox’s cease and desist letters to Etsy specifically mention the exclusive right to license merchandise in connection with the series, so any unauthorized use of the trademarks, characters, images, designs and other distinctive elements is not permitted. Fox doesn’t take issue with folks knitting and selling orange and yellow poofball hats (and best of luck to them if they did). Fox has a problem with folks knitting and selling orange and yellow poofball hats under the Firefly brand. The distinction here is important. The problem didn’t begin when Etsy sellers started making and selling the hats, it started when Etsy sellers started making and selling the hats that created a connection to the show. Making the hat is not the problem. Selling it probably isn’t either. But selling the hat, or any other merch, under the color of the Firelfly brand is. This likely includes references to Ma Cobb, the Hero of Canton, and all other gorram references that conjure the show in the mind of the purchaser. This is what Fox is trying to prevent.
Remember, just because the show is dead doesn’t mean the brand is dead. The problem here is trademark dilution, as opposed to garden variety infringement. Dilution is a concept in law that lets the owner of a famous mark (I think we can all agree the Firefly brand meets the standard) prevent others from using it in a way that will chip away from its uniqueness. Here, it’s highly unlikely that anyone will think that Fox decided to open up a knitted hat business; but the consumers, when seeing a knitted hat branded Firefly, may think that it was done so with Fox’s blessing. Not only would permitting this be in direct violation of their (presumably exclusive) licensing agreement with Ripple Junction, but allowing anyone and everyone to use the brand without care as to the nature of the business or quality of the goods weakens the brand. Fox has an obligation to its shareholders and licensees to do everything it can to prevent this because it can damage profits.
Draconian and perhaps overreaching takedown issues aside, I can’t speak to how this campaign came about or the strategies discussed to implement it. No one can. I’m being very presumptuous in my analysis here. But if I’m correct, Fox is really in a tough bind. Are they being a little hyper? Maybe. I have no idea if each of the items that Etsy is taking down meets the standard for dilution or if each and every hat really qualifies as selling unlicensed merchandise. I don’t even know if the cease and desists were limited to just hats. And theoretically, if one could successfully argue that there is no copyright or trademark protection in this element or that used to describe the hat (like “Ma Cobb”, “Jayne”, or other shiny elements from the show), there may be an out. But that would require a court to decide, and I’m fairly confident that Fox knows Etsy will not be the one to poke that bear and the individual seller doesn’t have the resources to question it. Fox sends the letters, Etsy takes down the allegedly infringing item, and that’s that.
I hate to come out on Fox’s side here, but they are really in a tough position. As the owner of the Firefly brand, they have an obligation to protect it from being weakened. Their choice is to leave the home sellers alone and let the brand get weakened which will anger their licensees, refuse to exploit the brand and anger their shareholders, or assert their intellectual property rights and create a fan-based PR nightmare. Fox really can’t win here. But really, who can?
There’s nothing I can say that will make this any less of a tough pill to swallow for Firefly fans and Etsy sellers. Fox is acting perfectly within its rights and I daresay it had no choice. I can’t even say I’d have acted differently if I were employed by Fox. Of course, it has some serious damage control issues to contend with, but that is outside of the scope of a pure intellectual property analysis. And believe me, there are many issues here that we just don’t have the time to address more fully. Still, I can see how this article won’t make the issue sting any less and I know Browncoats well enough to know that even though they may be on the losing side of this argument, you’ll have a tough time convincing them they are on the wrong side.
Maybe this poem will help them find a little bit of serenity…
Take my yarn, take my hand
Take me where I have no brand
I don’t care, I’m shiny
You can’t take my hat from me
Take me out to the Con
I’ll still have my brown coat on
Close my store and you will see
You can’t take my hat from me
There’s no place I can be
Where Browncoats win and merch is free
But you can’t take my hat from me.
About the Author
Beth is an Intellectual Property attorney licensed to practice before the United States Patent and Trademark Office and the State Bar of Arizona. She received her B.S. in Biological Sciences from CSU, Sacramento and her J.D. from Whittier College School of Law, where she earned a Certificate in Intellectual Property. She enjoys being a solo practitioner in Phoenix, Arizona.