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September 15 2006

Blue Sun Shirts announces corporate smackdown... Fox sends a cease and desist. Owner asks for help trying to get a contact at Fox for licensing rights.

Cruelly ironic.

Also, "cease and desist" is now my new favorite tag.
This seems weird to me, it seems to me that selling copies of the Fighting elves t-shirt is like selling copies of the Jayne hat. Just because something appeared on screen doesn't mean that it is covered by copyright, does it? That seems to me to be pushing the copyright law beyond the legal limits, but of course I'm not a lawyer and I wouldn't want to waste money challenging the point.
Can't really fathom why Fox is getting any panties in a bunch over Blue Sun Shirts. Really, you would think the intellectual rights fall with Joss or the scriptwriter who did the episode where the conglomerate's name is mentioned or referred to.

Or the costumer who designed Jayne's T-shirt for "Ariel."

Or the set designer(s) who made the mock-up food packets and drink bottles with the Blue Sun logo.

So...I am just not seeing the point. If it blatanly said "Firefly," then yeah...the logic would be more comprehensible (though moronic). But Blue Sun is something Joss & co. conjured up, so...yeah.
Jeez, ain't it just perfect, in that horrible "life imitates art" way? My condolences to Alex of bluesunshirts.com. God forfend anyone should get something out of a "product" they're not using. (Or perform OMWF or something...) Kinda has a "chilling effect" on me.

I decided to google "cease and desist" to see what came up, and found this sample DYI "cease and desist" letter. Send one yourself to someone and see what happens! Fun for all! (Read more about "cease and desist" here and here.
Technically, if it was designed for a show and appeared on screen, the intellectual property (IP) rights are the property of the producers and/or the network.

The fact that Joss has personally indorsed the concept and products of bluesunshirts.com does not mean Fox has lost the IP rights.

It is a risky move to go after fans of oneís product, but that hasnít always stopped IP owners from doing it (Lucas Film Ltd. Springs to mind).

I know Iím not going to wait 2 weeks before ordering more Blue Sun t-shirts.
That's not how intellectual property and copyright works. Legally, Fox owns everything related to Firefly, period. Not Joss, and not the designers. Anything that a designer, writer, etc. worked on in an official capacity is owned solely by Fox, end of story.

There might be a silver lining here, though. For Fox to take an interest in something this small could signal a good reason for protecting the property, ie., a possible future development of the franchise, either in terms of licensed merchandise or potentially more Firefly content, in whatever form.
Lucasfilm Ltd. actually does not go after fans; they pretty much encourage fan films and fan-made computer game modifications, not to mention costumes and stuff.

I can understand why Fox would get jumpy though; trademark devaluation and stuff like that.
Blue Sun shirts were always the easiest to reproduce for free in your own home (copy, mirror image, print on iron on paper, put on old t-shirt), but the 'trouble maker' and 'fighting elves' t-shirts are a lot more complicated and I've been happy that they were available to buy (I bought my Fighting elves t-shirt over a year ago). I really wonder why, so many years after the fact, Fox is trying to protect images which only showed briefly on screen. They certanly aren't worried about endearing themselves to the fandom are they? It would make more sense if Universal was doing it, but they actually encouraged fans to make copies of character costumes back when the BDM was being produced.
BlueEyedBrigadier, I never realized till your post that someone who purchased an original t-shirt from the costume designer would be a costumer customer. For some reason looking at that typed makes my head hurt.

Maybe Alex should protest he's actually violating the copyright of the real Blue Sun Corp., which was linked to here some time ago.
I think that is one of the saddest things I've ever read. OK, just for old times, say it with me now, Wahh, Wahhhh. SNL? Debbie Downer? Anyone? OK, I'm done.
This isn't right. Fox haven't touched Firefly since they released the DVDs and all of a sudden they're getting in people's faces about it? What gives?!?
If it's their intellectual property, it's their right to protect it.
Long post cut to simply point upward at what Simon said.
Simon, of course, is right. And I don't think the timing suggests some sort of new FOX interest in the property in terms of developing anything related to it. Rather, I suspect that now that actual licensed Blue Sun merch exists, or has existed, via Hot Topic, they may consider it off-limits now.
Very funny FOX. The Blue Sun logo appeared in the Serenity Movie. In neither Firefly or Serenity were the words Blue Sun ever even uttered. So the images are both under Universal and FOX products. So does FOX really have the authority to demand what they are demanding? When they sold the rights to make a movie did they also sell merchandise? Blue Sun logo is also Universal property if it appeared in their film.

Just something to think about because if Joss doesn't own the images and the costume designer doesn't own it and FOX owns it because it appeared in their production, then Universal would technically own it.
If a company, or person, owns an intellectual property, it not only has the right to defend that property, it has a legal duty/obligation to do so -- whether or not that infringer meant any harm. If the IP owner does not defend its trademark against infringers, the owner runs the risk of losing that right. The trademark may become so diluted it loses its distinctive meaning or association. Did you know that aspirin and escalator were at one time trademarks for specific products? However, since the individual owners did not police their marks, they each lost their trademarks because the terms became common and descriptive in the public mind rather than distinctive.

Another risk that the owner of the mark runs in not policing its mark is that an infringer will make inferior goods using the trademark and the quality will suffer and the value of the mark is therefore decreased or lost. This is in addition to the fact that someone else is capitalizing on a trademark he/she/it does not own.

The U.S. intellectual property laws are designed to protect the owner but only if that owner shows due care for its property. The fact that Universal or Fox are asserting its intellectual property rights does not make the company evil -- just sensible business people.
Still sucks. I own a few of Blue Sun's designs. I wear them often at the very busy restaurant I own. I get asked about them all the time and have referred MANY people to the series, which in turn has probably gotten Fox more DVD sales. In essence, I am a walking billboard for Firefly.

Fox should make an attempt to license out the images to folks like Alex if theyíre not going to do it themselves.

Again, still sucks.
I like fan made shirts as much as the next torso'd person. But Erico is right, this is cut and dry.

Many Firefly/Serenity licenses are active now. The shirt license was bought by Ripple Junction, the book license was bought by Titan Books, the ornament license was bought by Dark Horse, the statue license was bought by Diamond Select Toys, the comic book license was bought by Dark Horse, etc.

The studios will protect these licenses. That's their obligation to these companies, as well as to themselves.
Though from what I remember, back in the early days of the fandom Chris Buchanan made the Blue Sun logo available to fans (i.e. like an open source thing). I'm trying to dig through various archives at the moment to find the exact wording of what was said. And for all I know it may be an old wive's tale.
The trademark may become so diluted it loses its distinctive meaning or association.

True. I think you'll have a hard time arguing that a Blue Sun shirt dilutes the meaning of the Firefly name though.


Another risk that the owner of the mark runs in not policing its mark is that an infringer will make inferior goods using the trademark and the quality will suffer and the value of the mark is therefore decreased or lost.

Again true, and again it will be hard to prove that the poorly manufactured Blue Sun shirts are making people enjoy the Firefly tv series any less.


This is in addition to the fact that someone else is capitalizing on a trademark he/she/it does not own.

Last I checked Whedonesque doesn't own the trademarks to Buffy, Angel, Firefly, etc. Also, Whedonesque accepts donations. Also, Whedonesque has pictures of the previously mentioned unowned trademarks at the top of the site.

I'd say Whedonesque dilutes the meaning of a trademark more than a t-shirt. I mean, the topic above this one containes the text

"There's even a Buffy-oke (best new word of the day) contest before hand."

I think that using the word 'Buffy' to refer to Karaoke dilutes the meaning of the Buffy trademark than the BS tshirt dilutes the Firefly name.

Also, I'd say that Whedonesque could affect the quality of the Firefly series more than a crappy tshirt. If someone were to post a 'Top 10' of bad Firefly scenes or Buffy plot holes, it would probably cause more harm than a bad tshirt.

I suppose that the main difference between the two is that the BS shirts are sold for a profit while Whedonesque isn't run for profit. I'm going to guess that the site doesn't make a profit on the donations. If Whedonesque started receiving a few more donations though, and started turning a profit, would it all of a sudden become a bad thing? It would probably be hard to convince anyone that selling a Blue Sun tshirt could have more impact on the Firefly trademark than Whedonesque could.

Just because you CAN do something doesn't mean you SHOULD do soemthing. Yeah, Fox CAN send a C&D letter to bluesunshirts.com. Yeah, the RIAA can continue to terrorize people with lawsuits. Now convince me why they should.
Simon - I thought that too, but it might be an old wives tale as you say. To be honest, actually fighting the lawyerbots(tm) even if that was true would be near impossible - they won't let you speak directly to FOX for legal reasons, so the people who need to hear it won't.

Just because something appeared on screen doesn't mean that it is covered by copyright, does it?

It does. If a company fails to enforce it's IP (property), then it can be ruled invalid -- this is why companies often go after select targets, so if they have a real misuse of Firefly copyright in the future, they can say "Look! We enforced this copyright in the past!" to strengthen their case.

Because Hot Topic recently paid for the license to Firefly shirts from FOX, which included the Blue Sun logo, that's probably the cause of this.

IcedTea - I don't think anybody here is saying lawyerbots(tm) are a good thing. C&Ds for Firefly is not a good thing, and never will be for indiviual people. However, FOX is owned by one of the world's biggest companies, and actually fighting them - unless you're River Tam, Malcolm Reynolds or Angel - is not easy. Basically, you can't.

It's also worth noting that although Whedonesque makes use of copyrighted graphics, there is a fair use clause. There are no copyrighted items for sale (on tshirts), which would be the problem.

[ edited by gossi on 2006-09-15 12:11 ]
Many moons ago I read that the original Fox Network Firefly website had a very high resolution GIF of the Blue Sun logo for visitors to download, which fans took as an open invitation to make things displaying the logo.
By the way, Fireflyfans.net had a mirror of the old FOX site which had the Blue Sun Logo thing on it, but they've taken the mirror offline now.
Legally, Fox owns everything related to Firefly, period.

Interestingly, I think this is only true in the US where writers usually operate on a 'work-for-hire' basis, meaning the employer (in this case Fox) owns the rights to all their work.

Elsewhere (UK and possibly Canada ?) the writer automatically owns the rights to their work (and, I think, derivative works).

In actual fact though, it works in US writers favour because, since they're technically employees, they can join unions and bargain with studios in numbers (i.e. American writers usually get paid much more and have better perks than UK/elsewhere writers do).

It's not big and it's certainly not clever of Fox to do this kind of thing but it is legal so unfortunately there's not a lot to be done. You can't, as they say, fight city hall and Fox (and companies like them) kinda own city hall these days.
I'm just glad I got my shirts when I did. Poor Alex--he's a good guy.
Trademark != copyright. Any original work is automatically copyrighted. (Like this comment.) You do not have to defend copyright to retain copyright. Fox has every right to defend their copyright here, but they are under no specific obligation. Maybe there's some language in contracts with licensees. But in any case, this is completely different from trademarks like Aspirin, Kleenex, etc. (Unless Blue Sun actually is trademarked by Fox. Which wouldn't make sense because Fox does not use Blue Sun as an identifier of the company.)

(Of course, IANAL. :-P)
Here I was, worried about the Wolf, the Ram and the Hart. Now the Sun is setting, I'm blue, and it's the Fox that's doing it.
From what I recall, the Blue Sun graphic on the site was the original design that was changed to be more accurate, so the one we were given was not the screen version and we were told, more or less, to go wild with it.

However, I doubt that would hold up for long. It could be used by a fan to defend having made the designs up till now, but if FOX is asserting their rights to the products I suspect they would win.
KernelM - you are correct, and I'm wrong. I'm mixing up trademarks and copyright.

By the way, I just googled "Firefly t-shirts", and this site is the 2nd one. I think they might be targeting anything which appears, at a guess.

[ edited by gossi on 2006-09-15 14:29 ]
Alex only mentions Fox Corporate, I wonder if that means just the Fox Network, or it means the Fox Production Studio, or both, as Newscorp companies.

I've known from close experience that Fox tend to be very Jumpy on protecting their IP, even if just a simple fan initiative to help them, promote something.
A few years ago (must be 5 or 6, can't recall the specific) a friend of mine got "buffy.com.br" so she could start a sort of ultimate Buffyverse website in Brazil, cause most of the sites back then were being hosted at those free hosts such as hpg or geocities. She didn't even get much time to start building the site, very soon she got a "cease and desist" (that's definetely a nice tag) letter from Fox.

But at the end, it's exactly what Simon said, If it's their intellectual property, it's their right to protect it.

I just think that they'd gain more by supporting fan incetive, instead of just making it harder. But as Gossi pointed, the fact that Hot Topic got the licence from Fox, must have something to do with it.
Just how far-reaching are Fox's rights? Does this mean that they can go after artists who draw the characters? I'm thinking of prints of a certain Firefly painting that have been for sale on the con circuit for some time now.
Just how far-reaching are Fox's rights?


I recall C&D orders for fanfic sites and even spoiler sites back in the golden days of the Buffyverse fandom. So fairly far-reaching I'd say.

And if fan prints are being sold at conventions, I think Fox (in the form of 20th Century Fox) might be interested.

Just because something appeared on screen doesn't mean that it is covered by copyright, does it?


Funny you should say that. It's about to get crazier than one could ever imagine. It seem that if the broadcast industry gets their way, the answer to that question would be YES.
You podcasters and/or webccasters...or artists...might want to check this out:
WIPO.
I'm thinking of prints of a certain Firefly painting that have been for sale on the con circuit for some time now.

If it's Jasons one, he has the license from Universal Licensing LLC for it, which in turn has the character rights for Firefly licensed.

Fox own the characters, universe and just about everything else. If they choose to enforce something to do with it, you could contest that it's part of the Universal Serenity universe - but without the help of a lawyer, ultimately, there's not much you could do.
Well, it's one thing to say "FOX should support the fans' efforts" but they're hardly the types (imo) to understand the fan perspective. They see us as walking dollar signs. For companies that work with them, the problem is "well if you're letting them get away with something like that..." and it may create disloyalty. Their responsibility is to protect their assets and their holdings, and maintaining a good relationship with the companies they work with.

As far as Fox knows, they aren't seeing a dime of this, regardless of how small of a difference it makes in their bottom line. We know how small of a market the Blue Sun shirts are, compared to the general public. But they don't. If, like Simon said, they were being sold at cons, they may see more of a reason to invest, but if they're not seeing a dime and can't track how many shirts are being sold, it's the same (to them) as selling the movie on bootleg dvd. No matter how great or little fans may purchase bootleg dvd copies, to Fox it might be the same.

[ edited by Browncoat on 2006-09-15 15:42 ]
If it's Jasons one, he has the license from Universal Licensing LLC for it, which in turn has the character rights for Firefly licensed.


He has the license for the Serenity prints, but does that cover the Firefly-specific prints (for example the one depicting scenes from Shindig)? I hope so, because it would be sad if his work were no longer available.
Oh, er, dunno about that MalNourished.

Hopefully, anyway, it's just an isolated C&D order.
Firefly licensing and Serenity licensing are definitely two different things. Firefly is FOX, and Serenity is Universal.

FOX is not licensing any more Firefly products, according to an interview The Signal episode 16. They did an interview with the prop company QMX, which has a license to make Serenity swag, which will be available any day now.

In the interview, they said that they approached FOX to get licensing rights for Firefly, but FOX declined, giving the reason as something like "you would be the only current licensee for Firefly and our legal department can't do that." (I am paraphrasing. Check the interview for the details.)

Which doesn't make entire sense to me, as the Firefly visual companion has come out, and wouldn't that be a FOX license? Perhaps there are legal differences between books and T-shirts that account for the discrepancy.

Anyway, wanted to share that info, as it pertains to the issue at hand.
20th Century Fox *is* licensing new material for Firefly at the moment, gobluegirl, but it depends exactly what you are after. You need to contact somebody like Michael Peikoff at their domestic division.
Copyright is a funny thing. They reportedly moved the airtime of the show around, pre-empted the show for anything, only made half a season and did not air all the shows. Yet they seem to feel the need to protect their rights. I suppose a sort of small cottage industry is easier to push around than a company with Gross National Product size resources.
Yet they seem to feel the need to protect their rights.


I would imagine the lawyers don't care if Firefly ran for 7 seasons or not even one season. As far as they are concerned someone is selling a product of theirs with out seeking permission and they are exercising their legal rights to stop it. That's the risk people in the fandom have to be aware of.
I'm the last one to defend Fox, but its also true that if you aren't seen actively defending a copyright/IP, it can come back to bite you in the ass later. If they don't send out these C&Ds on thigns that aren't super important, then they would be on shaky ground if there was ever a serious lawsuit regarding this property/these copyrights. Of course, IANAL.
I don't think anyone really disputes FOX's right to enforce copyright and trademark protection. But it's also true that determined copyright infringement from fans have helped make this franchise far more valuable than it would have been otherwise, on a scale unseen since the original Star Trek.

I think FOX, as a good PR move and as a source of extra income, needs to go ahead and set formal guidelines for fan use. Place no restrictions on the amount or variety of images, audio, and text from the show that can be used. But, say, no film or audio clips over a certain length, or a certain filesize, and no text beyond accepted Fair Use percentages so as not to compete with commercial releases. No pictures or screencaps over a certain size or resolution so that printing becomes impractical. No trademarked logos or character likenesses on sold items (much like CafePress's existing copyright rules, and the same restrictions New Line placed on their recent Snakes on a Plane/CafePress promotion). Maybe a restriction on the number of individual designs sold, you could sell 25 of any given shirt before you had to pull it, or something.
I'd even like to see a streamlined licensing system set in place for fan-created merchandise; FOX would lose a bit of quality control, but a buck from each fan shirt sold would certainly add to their bottom line. Hell, let them set up their own CafePress knockoff site where fans would create the designs and get a cut of sales and FOX would get the rest, or work up a partnership with CP with the same result. I'm sure there are legalistic and tax code nightmares involved I'm blithely unaware of, but it would be a step towards the current reality: fans are part of what they watch, and networks should be working with them to everyone's advantage.

FOX has a rep for quirky shows that small groups of fans embrace with frightening intensity. They need to be out in the lead with new ways to court those fans, and an initiave like this would help. I have no doubt Browncoats could (and have) done amazing things even under clearly-understood restrictions, and we'd go on acting as thousands of unpaid marketers.

[ edited by C. A. Bridges on 2006-09-15 18:17 ]

[ edited by C. A. Bridges on 2006-09-15 18:18 ]
Thank you C.A. Bridges I couldn't have said it better.
Actually, that would be a heck of a project for legalistic Browncoats. Draft language and contracts that encode this structure and spell out clearly what can and can't be used, and for what purposes, with outs for FOX to make changes at any time and protection for fans from retroactive changes, and then present it to FOX as a suggested new system. Might be more effective than just wishing they would do it, since that's asking a lot from an entrenched bureacracy.

Operation Fanbase.

Any shiny legal eagles out there with some time to kill?
C.A. Bridges, I'd doubt very much that would actually happen -- especially with tshirts -- as companies such as Hot Topic *PAY* for that license. It'd make the paid license useless (and it's also probably too late in the day to do it).

If you get a C&D letter, they don't even tell you what to remove. They just say the site, usually. Many Buffy sites had to entirely close because the lawyers wouldn't say what on the site was the problem.

At the end of the day, the lawyers in these situations (there's been hundreds for Buffy) are usually external companies, and they get paid a fortune to send C&D notices. The end result is to try to make the official licenses sell, which leads to money for FOX. It's the traditional business model which Firefly has never really fit.

I'm waiting to see the extent of the lawyer involvement here. If no more letters, emails or faxes turn up in within a month, we're fine. If loads turn up, they've been asked to pull the plug on the sites which could be a significant problem. Hopefully they aren't that dumb - but I think it's far more likely a situation than fan licensing.

[ edited by gossi on 2006-09-15 18:45 ]
So, let 'em kill the sold items. It'd be a pain but we'd survive. I'm more worried about the fansite crackdown a la X-Files, Simpsons, and Buffy, and a codified "Fair Fan Use" model might help.
That's what I'm talking 'bout, Chris.

I'd be thrilled if fans actually managed to get anywhere with Fox Licensing. To be honest, though, even if you're trying to legitimently purchase business licensing from them it's hard, so I can't see them doing something for the fans.
Everyone, everyone, stop arguing. You're missing the silver lining here! We've just witnessed the first evidence in almost three years that Fox knows Firefly exists!

Rejoice! This is a great victory!
Wow, Resolute, talk about looking at the tiny amount of good in a whole bag full of...well crap. And as CA Bridges mentioned, from what I read up, just look at the fans of the show Simpsons and what the fansites had to go through. Neverminding legalese and whether FOX SHOULD allow these things to happen, if history is any indication, FOX won't change... and its probably best not to "engage" them.
KernelM - you are correct, and I'm wrong. I'm mixing up trademarks and copyright.


This may be a small point or it may not. I'm not a lawyer, but I remember doing quite a bit of research in this area a few years ago, and there's a very substantial difference between trademarks and copyrights. Copyrights obtain from the moment of creation (or practically, that which can be proved), while trademarks have to be published and fought for, as much discussed above. Copyrights can certainly be surrendered by contract, and the contracts might be difficult to get. But it seems there could (maybe not likely) be multiple copyright holders, rather than just Fox, and contacting the original creators might be fruitful. They might not even be aware of this happening.

I agree it's probably not a good idea to stir up Fox more on behalf of the product makers than this. But perhaps there could be some investigation done quietly?

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