The Set Up

As we discussed earlier, courts look at the purpose and character of the use for both the original owner and the derivative use.  Courts look at how the party claiming fair use is using the copyrighted work.  Is the derivative use meant to make money?  If so, it is more likely to be found infringing, but if it is not intended to bring profits to the copier, then it has a better chance to be found as fair use.

While courts are more likely to find that nonprofit, educational and noncommercial uses are fair.  This does not mean, however, that all nonprofit, educational and noncommercial uses are fair.  Nor does it mean just because you make money on it that all commercial uses are not fair.  Rather, courts balance the purpose and character of the use against the other factors.

Additionally, “transformative” uses are more likely to be considered fair.  Transformative uses are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work.

This can be closely related to another aspect:  The effect of the use upon the potential market for or value of the copyrighted work.  In this factor, courts review whether, and to what extent, the unlicensed use harms the existing or future market for the copyright owner’s original work. Questions asked include:  Is the use hurting the current market for the original work, and whether the use could cause substantial harm if it were to become widespread?

Next time, we’ll look at some specific cases looking at how these factors are reviewed in real life.

By the way, if you want to learn more about trademark and copyright, we have some upcoming webinars.  Register here!

Only Three Fairs in the World

Jeff likes to say, “There are only three “fairs” in the world: The county fair, the state fair, and the World’s Fair.”  However clever that is, in copyright law, we also have fair use.

I’ve been getting asked a lot of forms of, “If I do X, am I doing something wrong with someone else’s copyright?”  Most of the time, the answer is, if you are using something without the creator’s permission, yes, you are infringing.  But, I said “most of the time,” which means not all of the time.  When aren’t you doing something wrong if you are using someone else’s copyrighted creation?  One common answer is when it is “fair use.”  However, “fair use” is a really big concept with very few times when it actually applies.  It is a common defense, but not a common winner.  But it isn’t always a loser, so let’s explore a little bit of what fair use is and what it is not.

The fancy legal language says, “Fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances.”  Uh-huh.  So what does that mean?

First, it is a defense.  That means that someone doing something that is judged to be fair use is doing something that would be considered infringing, but because the action is determined to be fair use, it is not.  That means you are playing with fire a little bit.  You know you are using someone else’s work without their permission.  You just think you have a reason not to have to get their permission.  This sounds like an argument that you wouldn’t want your high-schooler to present to you.  “I know it would normally be wrong to do what I did and not to ask your permission, but I thought that this was an exception.”  Therefore, you probably want to think it through a bit rather than just claiming fair use on a whim.

In determining whether the use made of a work in any particular case is a fair use, Section 107 of the Copyright Act lets you know that “the factors to be considered shall include”:

  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.

None of these are clear-cut, stand alone things.  They are each looked at independently and in conjunction with each other.  In other words, just because you “only used a teeny-tiny bit,” it doesn’t mean you are in the clear.  I also wouldn’t want to stand only on the argument that “I didn’t make any money on it.”  That being said, sometimes those arguments go a long, long way.

To determine whether a particular use is a fair use, you have to balance each of the factors.  Ultimately, the only way to know for sure is to have a judge tell you, and judges have a great deal of freedom putting weight on different facts when making their determination about fair use.  Each case is very fact dependent, but, yes, I’ll discuss each factor in more detail in later posts.  So get ready for Faireys, Apologies for Parties, and a Pretty Woman.

So That’s Why It Says That

The Food and Drug Administration (along with the FTC and FCC) regulates the claims that dietary supplements can make for their products.  Dietary supplements are those things that people take to enhance their health but aren’t drugs.  If the substance is “intended for use in the diagnosis, cure, mitigation, treatment, or prevention of disease” or “to affect the structure or any function of the body of man or other animals,” it is considered a drug and is subject to considerably more regulation.  If a substance is not a drug, it can avoid a lot of expense, testing and regulation, but then it cannot make a lot of claims relating to the usefulness of the substance.

Dietary supplement labels may carry certain types of health-related claims. Manufacturers are permitted to say, for example, that a dietary supplement addresses a nutrient deficiency, supports health or is linked to a particular body function (like immunity or heart health). However, such a claim must be followed by the words, “This statement has not been evaluated by the Food and Drug Administration. This product is not intended to diagnose, treat, cure, or prevent any disease.”

The federal government can take legal action against a company or website that sells dietary supplements if and when the company makes false or deceptive statements about the products sold, if they promote them as treatments or cures for diseases or if their products are unsafe.

Also, once a dietary supplement is on the market, the government agencies monitor information on the product’s label and package insert to make sure that information about the supplement’s content is accurate and that any claims made for the product are truthful and not misleading.

So be very, very careful if you are making claims about helping treat or prevent any conditions unless you are ready to jump through the hoops of drug regulations.

Top Marks For Serving Goods

Companies use words, designs, logos, colors, sounds and smells to help customers find and remember the company’s wares.  If you want to buy a cold, caffeinated, carbonated beverage, you may choose a distinctively shaped bottle with cursive writing.  If you are looking for tax preparation services that has its own online software, you may choose one with a big, green square.  In either case, you are looking to their marks to help know that you are buying what you want to buy from the correct source.  But are they trademarks or service marks?  And how do you know?

These are questions that I actually hear a lot, and it is mostly because people are overthinking it.   If the distinctive “thing” is used on goods (for example: coffee, software, board games or socks), it is a trademark.  If the distinctive “thing” is used on services (for example: legal services, consulting, tour guiding or car repair), it is a service mark.  Yeah, really, that’s it.  Service mark = services; trademark = goods.

If you are claiming common law rights on trademarks, you can use a TM like so: POWER GRIDTM  granola.

If you are claiming common law rights on services, you can use an SM like so:  POWER GRIDSM  personal training.

“But, but, I see TM on services all the time.  And you, Ms. Ogden, often say ‘trademark’ when talking about services.”  Yup, guilty as charged.  Because we tend to use trademark as shorthand to reference all of those indicators of source whether it is technically a trademark or service mark.  I admit it.

So don’t get flustered if your printer put ‘POWER GRIDTM  electron polishing services’ on your business cards instead of ‘POWER GRIDSM  electron polishing services’.  You are still claiming rights in the POWER GRID mark even if it has a T instead of an S.  It happens.  I can’t imagine too many cases being won or lost on the use of a TM versus an SM if you are truly using the POWER GRID mark on your premier atomic cleaning services.

That’s Some Pig

In order to obtain a trademark registration, you have to show your mark actually being used on the goods or services being claimed in the application.  It’s called providing a specimen of use.  Sometimes, that is really easy.  Nike claims their “Swoosh” on shoes, and there it is on the side of the shoe (and the tongue and likely the back, too).  It is also on the box in which the shoes are housed, and on the bag that holds the box on the way out of the store.  It’s kind of hard not to connect the Swoosh to the shoe.

But what if you aren’t Nike?  Do you have to find where to print labels, boxes, tags, bags, and maybe tattoo some people?  No, but you do have to make it easy for people coming into contact with your goods to also come into contact with your mark.  Let’s pretend instead of selling shoes, you are selling bacon.  You probably don’t want to emblazon your mark directly on the bacon. (If you do, no judgment here, but don’t be surprised if you aren’t at everyone’s breakfast table.)  Instead, you can put it on the plastic wrap around the bacon or on a hangtag connected to it.  A customer can’t pick up the chunk ‘o smoked pig without seeing your mark.

Let’s contrast that to just putting that logo on your website or social media pages.  Because eat-o-vision hasn’t been invented yet, people likely can’t access your bacon directly from your Instagram posts. If you try supporting your application with just some Instagram posts of your bacon sizzling in the pan and creatively arranged on a plate, the USPTO will likely determine that those photos don’t show the mark being used on the claimed bacon goods.  Rather, they are just advertisements for the bacon. We have to show actual use on or near the product (like a point of sale display) rather than advertisement separated from the product itself.

If the photo was on your website, with the bacon and your mark with a good old “Buy Here” button that takes actual orders – not just a map to where I have to drive out in the cold, wet rain to pick up your bacon.  Then you have that connection again.  My thought as a consumer goes, “Oh, I know that brand.  They make my breakfast greasier but better with their awesome bacon.  Yay, I can get it right now!”  Ta-da! Specimen of use level complete.

However, if I have to say, “Oh, I know that brand.  They make my breakfast greasier but better with their awesome bacon. I better write that down so I remember to pick it up later.  Now where did I put that pen? And my phone? Maybe I’ll just eat eggs.”  Boo. Specimen of use fail.

Let’s recap.  If I have an ability to fulfill my need to purchase bacon immediately upon seeing your mark (even if it isn’t instantly delivered) = Good specimen of use!  If I have to rely on memory when I am faced with many choices of slabs of cured pork to remember yours = Bad specimen of use.  Now let’s go get some breakfast!

Talking to Potted Plants

I have had a few people tell me lately that I am a “good networker” and ask what groups I am a part of and what events I go to.  I reeled off a few of them, but upon further reflection, I didn’t help those people by doing that.  I should have told them that they were asking the wrong questions.  If they want to build good networks, and hopefully due to that, more clients, they can’t just do what I did.  After all, they aren’t business and intellectual property attorneys.

Better questions to ask would have been: Why did I pick those type of activities? How did I choose those specific ones?  What else do I do to build or support those networks? Since they didn’t ask those questions, I’ll try to answer them now.

Why did I pick those type of activities? 

First, I am comfortable going to happy hours and events and talking to random people.  Other people are not.  If I wasn’t comfortable with it, I’d pick a different route.  Perhaps I’d focus more on different events or not events at all.  Jeff Glazer likes to write articles and be on committees.  If you find him at a happy hour, it will likely be in the corner people-watching.  I’ll be the one striking up a conversation with whoever looks my direction.  Or as I like to joke, the nearest potted plant.

I also am involved on non-profit boards.  I pick causes that I care about, not necessarily boards with names I recognize.  In fact, even better if I don’t know many people on the board.  I want to want to help and be an active board member.  On one hand, it is the reason I joined – I care about what is going on and want to make an impact.  On the other hand, it shows that I am trustworthy, hard-working, and hopefully, not dumb – exactly what I want potential clients and referral sources to see.

How did I choose those specific ones?

The most important thing is to identify your target market.  Who are you trying to meet?  Where are they going?  Get yourself in front of them.  Maybe that is a speaking event if that’s your thing, maybe it is a happy hour, or maybe it is an article in whatever it is your target market reads.

Partly, it is trial and error to get the right mix.  Go to an event.  If it stinks, don’t go back. Make sure it actually stinks and not sure you were just in a bad frame of mind.  This is a good one to ask others what they are doing, but make sure you are going for the same target market or they are a part of the target market.  Then re-evaluate every once in a while.  Are you still getting good return on that time investment?

What else do I do to build or support those networks? 

This isn’t a one time thing.  It isn’t “Here’s my card. Now let the benefits roll in!”  You have to keep in touch with those contacts.  Follow up with any card collected.  Connect on social media.  Set up a coffee date.  Recently, I was talking to someone about their awesome business card and how different people choose what their card is.  On the way home, I was listening to NPR.  Marketplace was talking about business cards, too.  So a follow up email was easy.  “On the way home last night, I heard this story about the evolution of business cards on NPR!  https://www.marketplace.org/2018/02/08/business/business-cards-are-getting-weirder”.

Yeah, networking is work.  It can be fun, but you get out what you put into it.  There is no magic potion other than elbow grease.

But…But, It Wasn’t Me

We discussed infringement last week, but what we didn’t say was this is “direct infringement.”  This is when the party who is held responsible is the one who actually engaged in infringing activities. OK, that makes sense, but you’re thinking, “If you are saying that, then there is something else? Someone can be held responsible for infringing indirectly?”  Yes. Yes, one can.

Indirect, or secondary, infringement is a thing.  For example, contributory infringement is when one who knowingly induces, causes or materially contributes to copyright infringement, by another but who has not committed or participated in the infringing acts him or herself is held liable for that infringement.  Notice the word “knowingly” is included for copyright so that the contributory infringer is liable if he or she had knowledge, or reason to know, of the infringement and acted anyway.

Trying to figure out how that would work?  An easy example is to take you back to that lovely time of flannels and grunge music:  The late 1990’s.  Remember good old Napster and its ilk?  Napster didn’t provide the music to be copied by others, nor did it copy the music.  But it did provide the vehicle to make it easy.

Another company besides Napster that did that was Grokster, and Grokster got sued.  Not only did they get sued, they lost.  The U.S. Supreme Court found that “One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, is liable for the resulting acts of infringement by third parties using the device, regardless of the device’s lawful uses.”

Yeah, so if you make it possible for others to infringe, and you know that is what is happening, then “It wasn’t me” is likely not going to work.

In the Fringe

NASAESA and the Hubble Heritage Team (STScI/AURA). Acknowledgment: J. Gallagher (University of Wisconsin), M. Mountain (STScI) and P. Puxley (NSF).

Infringement is a fancy word that pretty much means “used without permission.”  We talked about what copyright owners had the right to do.  That means others don’t have the right to do those with the copyrighted item without the owner’s permission.  If they use it without permission – ding, ding, ding = Infringement!

For example, let’s say that you really like our blog posts.  So much so that you want to repost them in full on your website.  It’s easy, right? You copy, paste, and voila!  You have successfully infringed my copyright on my posts.  If you have included the photos or drawings, then you also infringed the copyright of that creator, too.  That means possibly two different claims infringement per post.

Now, I know that you’d never do that, but if you did, what can I do about it?  First, I may be able to enjoin you from use.  That’s legal-ese for stop you from continuing to use it.  Then, let’s say you actually printed books of my posts, I may be able to have any physical copies of the books impounded then destroyed.  Finally, I can get cold, hard cash.

An infringer of copyright is liable for either:

(1) the copyright owner’s actual damages and any additional profits of the infringer; or

(2) statutory damages.

Notice that is either/or, not both.  In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.  That’s a pretty good head start.  For statutory damages, the copyright owner may elect, to recover, instead of actual damages and profits, an award of statutory damages of not less than $750 or more than $30,000 as the court considers just per infringement. For the purposes of this, all the parts of a compilation or derivative work constitute one work.

Now if the infringement was committed willfully (that is that you knew you were infringing), the court may increase the award of statutory damages to a sum of not more than $150,000. On the other hand, in a case where the infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court may reduce the award of statutory damages to a sum of not less than $200.

That means I can stop you, destroy your inventory, and take your money – perhaps even more than you made.  So let’s make a deal instead.  How about you ask permission first, and I won’t ask $150,000.

Creativity and Control is Baked in to Copyright

Copyright is a form of intellectual property law.  That means it protects the intangible aspects of a creative product that are fixed in a tangible form of expression. Specifically, it protects original works of authorship, which is defined pretty broadly to include literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, paintings, sculpture and architecture. So yeah, you are can be an author of a building. Copyright doesn’t protect acts, ideas, systems, or methods of operation.  Rather it protects the creative expression of many of these things.

However, Copyright, although broad, doesn’t cover everything.  Copyright does not protect, for example:

  • Ideas, procedures, methods, systems, processes, concepts, principles, or discoveries (Hello, patent!)
  • Works that are not fixed in a tangible form (such as a choreographic work that has not been notated or recorded or an improvisational speech that has not been written down)
  • Titles, names, short phrases, and slogans (Hello, trademark!)
  • Mere listings of ingredients or contents (a/k/a recipes)
  • Blank forms that are designed to record information

What does that boil down to?  Copyright protects the creative output, not the thing that the output was recorded on.  And it has to be creative.  In other words, it protects the story, not the single copy of the book the story is printed in.  It protects the painting, not the canvas.

Copyright provides the owner of copyright with the exclusive right to:

  • Reproduce the work in copies or phonorecords
  • Prepare derivative works based upon the work
  • Distribute copies or phonorecords of the work to the public by sale or other transfer of ownership or by rental, lease, or lending
  • Perform the work publicly if it is a literary, musical, dramatic, or choreographic work; a pantomime; or a motion picture or other audiovisual work
  • Display the work publicly if it is a literary, musical, dramatic, or choreographic work; a pantomime; or a pictorial, graphic, or sculptural work. This right also applies to the individual images of a motion picture or other audiovisual work.
  • Perform the work publicly by means of a digital audio transmission if the work is a sound recording

Copyright also provides the owner of copyright the right to authorize others to exercise these exclusive rights, subject to certain statutory limitations.

Put all together, that means if you didn’t write it, then you can’t make photocopies of the book and sell those copies.  If you didn’t paint it, then you can’t take a photograph of a painting and make prints.  You can’t cut and paste that photo on someone else’s website even if it is functionally possible to do so.  However, if you did write, paint, or otherwise create it, you can protect your creative hard work as long as it is somehow recorded to be seen by someone else at a later date and time.  You can control what is to be done with it whether it is done by you or others.