Copyright Basics: The Fair Use Doctrine

While browsing through YouTube videos I often find some of my favorite songs mashed up with video clips from movies, animations, and video games. Inevitably these videos are removed after receiving a take-down notice from Google for violating the terms of service. Of course, these mash-ups are blatantly infringing on the copyright holders works and should be taken down. One thing I notice on these mash-ups is a copyright disclaimer saying the presentation of the video is fair use and the user is claiming no rights in the intellectual property and does not own any of the copyrights associated with the works. While that is very kind of them to admit, it does not somehow insulate them from a possible infringement action. This brings us to the subject of the day, fair use. This is probably one of the murkiest and most litigated areas of the act so I will attempt to clear up the basic idea.

Fair use is nested in § 107 of the Copyright Act which outlines the general idea of fair use.[1] It states fair use includes reproduction in copies or phonorecords or by any other means…for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. The act clearly states that if you are using a copyrighted work for the aforementioned purposes it “is not an infringement of a copyright”. This is subject to several limitations, which the act takes into consideration to determine if normally infringing activity is “fair use”. These factors are:

(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.

As with any law, the statutory language is quite broad and open to interpretation. The courts have held that a fair use analysis must be done on a case by case basis and does cannot be simplified with a set of bright-line rules.[2] In Campbell vs. Acuff-Rose Music, Inc. the court reasoned the fair use doctrine “permits [and requires] courts to avoid a rigid application of the copyright statutes when, on occasion, it would stifle the very creativity that the law is designed to foster.”[3] This case provides the best analysis for the fair use doctrine because it allows for uses beyond the rigid statutory language and articulates the benefits for creating a transformative work which promotes the central purpose of the copyright act; promoting science and the useful arts. This allowed for the creation of a parody based on a previous work that the court determined was a non-infringing use, even though the strict reading of the statutes seems to show a parody wouldn’t really be a “fair use” because it is not criticism, comment, news reporting or any other factor listed in § 107. Nonetheless we have works such as Weird Al, Space Balls, and are modern transformative works such as “Girl Talk”.

So what we know from cases is the rules are not rigidly applied and allow room for some creativity and transformative works based on § 107 factors. If you are working on something and wondering if it is fair use consider the factors in § 107 and the court’s interpretation of Campbell vs Acuff-Rose Music. If you are using the work for the purposes enumerated within the act you will probably be fine, however, if you are using the work to create a mash-up of your favorite movie clips to your favorite song; you’re probably going to get a take-down notice from Google.


As with any post this is not legal advice and if you have a copyright issue please contact an attorney.



[1] 17 U.S.C. § 107

[2] Campbell vs. Acuff-Rose Music, 510 U.S. 569 (1994)

[3] Id at 577

This Week in Soft IP News

Sorry its been so long since an update, but here is this weeks top stories in Soft Intellectual Property

Rightfully so, “Against the Grain Gourmet Foods” asks a federal court to order “Against All Gain” to abandon all claims to the name. More reasons to hire a qualified attorney to help with marketing plans and brand protection. Full Story

Harper Lee sues museum in her hometown alleging Trademark infringement and cyber-squatting. How many lawsuits has the author filed this year? Full Story

Van Halen sues Ex-Wife for trademark infringement for using her own name on blankets, furniture, construction services and interior design. Full Story

Must SCOTUS give deference to the TTAB decisions in findings of Trademark Infringement? We may soon find out. Full story

Uhh, sorry no, you can’t trademark Obamacare. Nice try. Full Story

A giant finally dies, ISO Hunt shutting down operation and Gary Fung Settles for $110 million. Full Story

I guess offensive is still offensive, Portland band “The Slants” is denied trademark registration. Full Story

The Strength of a Trademark: The Importance of Being Unique

Oftentimes people ask me surprising things about trademarks, such as; hey, how the heck can Kim Kardashian and Kanye West trademark their baby’s name? Aside from being ridiculous the fashionable couple could not prevent others from giving their own baby the same name, not that normal people wish to name their baby “North”. This gave me the idea to write a series of posts about basic trademark concepts; the first addressing the categories of trademarks and their likelihood of registrerability.

Distinctive or Inherently Distinctive Marks

The strongest type of mark is known as a fanciful mark. This is a word that is not part of the English language, or any language for that matter, but was created solely for use in association with a good or service. This is a made up word that the company uses to identify itself or its products. The most well-known of these is KODAK®  and XEROX®. Fanciful trademarks are the most distinctive, and do not require secondary meaning to be registered with the USTPO or protected by common law trademark. That is, of course, as long as no one else has used it before you.

The next type of mark is an arbitrary mark. This is a word that is part of the English language but has no relation to the goods or services the company provides. Think of Delta® faucets; as an example. The word delta has no relation to faucets; it is just a letter from the Greek alphabet, a mathematical symbol, or a geographic formation at the end of a river. The arbitrary nature of the use is precisely why it makes the mark inherently distinctive and therefore registrable even without established secondary meaning.

Another type of distinctive mark is known as a suggestive trademark. These marks indicate the nature or characteristic of the good or service but do not actually describe what the good is or its purpose. This has always been a bit confusing to me and, I assume, to most people I explain it to. The best example was given by my trademarks professor. Orange Crush, as used to indicate the source of an orange flavored beverage. The mark does not describe the good itself but does describe a characteristic it has, orange flavor. Can you think of other examples?

Non-unique or In-distinctive Trademarks

This is the last category of trademarks and as you may have assumed, marks which are the weakest. These marks are either merely descriptive or have become generic though use of the mark in commerce. The latter is a dangerous situation for any trademark holder and the former tells me you should be more creative when marketing your products. Allow me to explain.

My uncle used to own a business called “Discount Window Blinds”. What do you think he sold? Well the name describes exactly what his business did and what it sold. The problem is descriptive trademarks cannot be easily protected by common law trademark and owner will have an extremely hard time getting the name registered with the USPTO. This is because it would stifle competition too much to disallow others from using the word discount, and windows blinds in commerce. The mark may be allowed registration if the mark has been used in commerce for over five years because it becomes distinctive through its extensive use in commerce. This concept is articulated 15 USC 1052(e)-(f).

The final category is generic marks. Generic trademarks, or perhaps I should just say words, are not ever protectable because everyone has a right to use such words to refer to these goods or services. Also, these are words which have become generic through their use by people over time. Did you know that Asprin used to be a name brand of headache medicine? Most people know it to generically refer to pain reliever instead of indicating a particular source of a good.  This happened because of its long term non-trademark use. Discount Window Blinds could arguably be considered generic unprotectable term as well. It is best to avoid the use of generic terms to refer to your business; so don’t name your buffet “Best Buffet” and don’t expect to get a trademark in the word “Beer” to sell beer.

Having a strong trademark is important for business and choosing one that is inherently distinctive and registerble is much better than using a non-distinctive mark. Make a plan, make sure no one else uses the mark on goods you intend to sell, and most importantly, it is a good idea to speak to an attorney when seeking trademark registration.


Nothing in this article is meant to be legal advice and it is for informational purposes only. If you need legal assistance please contact a licensed attorney.

First Circuit Court of Appeals Upholds 675,000 Judgment in Lawsuit for Illegal Downloading

The First Circuit Court of Appeals has upheld the damages against Joel Tennebaum, a former Boston University Student, in the amount of $675,000. This is stark reminder to all who think that their illegal downloading will go unnoticed by record companies and other copyright holders. While I do agree that the ruling is reasonable and well-grounded in copyright law I do not agree with the First Circuit when the judges ruled that the penalty is not; “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”

Joel Tennebaum was like many college students in the early 2000s, he downloaded music and shared it via peer to peer networks. Many of our friends did the same but Joel was unfortunate enough to get a letter that informed him he was going to be sued. According to the facts of the case he knew this conduct was wrong, ignored warnings from his father, his college, and even a letter from the recording companies. Joel nonetheless continued the activity. When faced with a lawsuit from Sony Joel lied about his activities by blaming burglars and a foster child living at his parent’s house for the activity. In the previous court ruling the jury found Joel’s activity willful. In determining the original damages the court said the jury must consider to following factors;

“the nature of the infringement; the defendant’s purpose and intent; the profit that the defendant reaped…the expense the defendant saved, the revenue lost by the plaintiff…the value of the copyright; the duration of the infringement; the defendant’s continuation of infringement after notice of the copyright claims; and the need to deter…other potential infringers.” Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

The jury awarded $675,000 which was later reduced to $67,000, Sony appealed that reduction and the court of appeals vacated the judgment and remanded to the trial court with instructions to rely on St. Louis, I.M. & S. Ry. Co. v Williams, 251 U.S. 63 (1919) in determining an award of statutory damages. Based on Williams, the original award of damages was reinstated.

Joel Tennebaum asserted the damages were unconstitutional and violated his due process rights, which brings us to the current case. The court of appeals was tasked with answering two questions. First, “[w]hat is the correct standard for evaluating the constitutionality of an award of statutory damages under the Copyright Act? Second, did the award of $675,000 violate Tennebaum’s right to due process?”  Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

In answering the first question the court decided that Williams is the appropriate standard for determining statutory damages under the Copyright Act. Williams, a decision nearly as old as my grandpa that remembers dirt roads in Minneapolis and when cars became “popular”, held that statutory damages only violate due process “where the penalty prescribed is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.” Williams at 66-77.

The second question was more fact specific and examined the purpose of damages under the Copyright Act. Apparently the advent of new technology enabled people to easily steal copyrighted works and congress thought it could lead to the loss of the value of copyrights, reduced income and profits, and job losses. The court continued and asserted that Tennebaum’s actions were egregious. His conduct carried on despite “numerous warnings” and he denied responsibility for making thousands of songs available via peer to peer networks. Therefore the court ruled that damages $675,000 did not violate his constitutional rights. Tennebaum argued that Sony suffered no more than $450 in damages. Williams, however, does not rely on calculating actual damages suffered by a party in the context of statutory damages because the damages are meant to be a punishment for the violation of public law and therefore the amount may be adjusted to address the public wrong rather than redress the private injury suffered by the plaintiff.


Does this same fair to anyone else? Could this be reasonable application of damages when the Williams standard holds that due process is violated where the penalty is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable?

True, Joel did infringe on the copyright and Joel did distribute the songs via peer to peer networks, ignored warnings, and knew it was wrong. He did this in a time when copyright law was unsure how to treat these peer to peer networks in terms of contributory infringement and other areas of the Copyright Act.  Do these damages deter others from infringing? Has the industry lost millions of dollars because of it? Did hundreds of people lose their jobs in the music industry due to peer to peer sharing? I haven’t seen news of that and I do not think that is the case.

Protecting Intellectual Property is important, what Joel did is wrong. However, I was taught two wrongs don’t make a right and by the first circuit holding that these damages were not severe, oppressive, and disproportionate to the offense is pretty unreasonable in my eyes. Although I do have less sympathy for Tennebaum after I learned he tried to blame a foster kid living at his parent’s house.

Let’s wait to see what happens with this becase Thomas-Rasset, 692 F.3d 899, is awaiting to be heard before the Supreme Court, well that is if the court says it will hear it, of course.

Full Opinion


Top Trademark and Copyright Stories from Around the Web

Here are your Top IP Stories from around the web for the week of June 24, 2013


Brooks Brothers drops trademark lawsuit against small home-based business “Bubble’s by Brooks”. An incident of trademark bullying and local lawyers helping small business. Full Story.

U.S. District Judge Joan Ericksen reopens copyright cases after incidents of fraud revealed in the Copyright Pornography troll saga.  Full Story

Sweet battle in the trademark world as Wendy’s attacks United Dairy Farmers for use of “Frosty” trademark. Now I want a frosty. Full Story

Excellent article highlights the important of Trademark registration for small businesses and start-ups. Full Story

Trademark licensing issues are highlighted in Trademark dispute between Gibson Guitars and Viacom. Sponge Bob Ukulele looks remarkably like flying V Guitar. Full Story sues Pharrell Williams’ for using “i am OTHER” claiming infringement for the use of “I AM” trademark. Since 2006 has owned the “I AM” mark. Full story

An examination of the effect of the DOMA ruling on copyright law; gay couples will now enjoy the full benefit of copyright statutory succession and renewal rights. Full Story

Artist Roger Dean seeks $50 million in damages against James Cameron and 20th Century Fox claiming the filmmaker infringed on his copyright by using his characters and art in the film “Avatar”. Full Story

Second Circuit Overturns District Court’s Decision on Marvel’s “Ghost Rider” Character.

In an excruciatingly long forty-eight page decision the second circuit ruled summary judgment was inappropriate as to the issue of ownership of the Ghost Rider copyright. The real question addressed by the court wasn’t who really owned the copyright in Ghost Rider but rather if the original author transferred his renewal rights in the copyright.

The district court granted summary judgment in favor of Marvel because the original author, Gary Friedrich, assigned all his rights to Ghost Rider by signing a work-for-hire agreement six years after the initial publication of the original Ghost Rider Comic.  Friedrich contended that he did not assign his renewal rights in the Ghost Rider copyright and was therefore entitled to the ownership of the copyright.

According to the facts of the case Friedrich was big fan of comic books and motorcycle gang movies, and first imagined of the idea of a superhero that wore black leather and rode a motorcycle. In 1968 he conceived of the hero we know today at Ghost Rider, flaming skull and all; which, apparently, he conceived after seeing his “bony-faced and red-headed” friend riding a motorcycle. After finishing the character’s concept Friedrich presented a synopsis of his story to Marvel comics whose chief editor, Stan Lee, agreed to publish to Ghost Rider story and Friedrich agreed to assign his rights in the character to Marvel. The renewal rights were never discussed.

The comic was finally published in 1972, if you’re a bit of a comic geek you know this was in Marvel Spotlight, Vol. 1, No. 5. The comic identified Marvel as the copyright holder and had a credit box which said “conceived & written by Gary Friedrich”. Ghost Rider later became a commercial success for Marvel and had a series dedicated to the character in 1973.

Work-for-Hire Agreement

In 1978, after congress introduced the Copyright Act of 1976, Marvel required all of its freelance authors to sign work-for-hire agreements. Friedrich signed the agreement on July 1978, which was a confusing mess of legal garbage, and returned it to Marvel.

The question that was raised by the court of appeals, and therefore the reason for vacating summary judgment, revolved around the interpretation of the work for hire agreement. After the court reviewed the work-for-hire agreement it determined it was not specific as to whether the author assigned his renewal rights in his copyright. Under the copyright laws an author is allowed to assign his renewal rights but there “is a strong presumption again the conveyance of renewal rights.” Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2nd Cir. 1993). If there is an express term that says the author agrees to convey his renewal rights, then the court will likely enforce it. In this case there was no express language in the agreement that indicates this intent, furthermore, any language such as “forever” that implied the intent to convey the renewal term should be interpreted by a jury.

After carefully reviewing the contract signed by Friedrich, the Court of Appeals rules that it was in err for the district court to grant summary judgment in favor of Marvel for three reasons.

First, the contract was ambiguous and often illegible. The language was not specific as to whether it covered only the work created for Marvel after contract was signed or the work Friedrich created six years prior. Additionally, there is not specific mention in the contract of the “Ghost Rider” work. Marvel relied heavily on a provision of the contract that says “grant[ing] to MARVEL forever, all rights of any kind and nature in and to the Work”. Regardless, the court stated it was not clear whether the language applied to the work created six years earlier and was not enough to overcome the strong presumption against the conveyance or renewal rights. Extrinsic evidence indicated that when the contract was signed Friedrich was unrepresented by counsel, was told the agreement only covered future work, and that he did not know about the concept a renewal rights until 2005. Finally, there was also no discussion of renewal rights when the parties signed the contract in 1978.

If you would like to read the full opinion click here. Suffice to say, there were enough questions regarding the contract and the renewal rights that the question must be submitted to the fact finder. A reminder that media and publishing companies should not haphazardly sign form work for hire agreements with writers and writers should be represented by counsel with dealing with publishers.




This article is for commentary only and nothing herein constitutes legal advice. If you need the legal help please contact an attorney.

Ready for a new Shaq Fighting Game? Shaquille O’Neal Trademarks “Shaqfighter”!

The wait is over “Shaqfighter” a possible sequel to “Shaq-fu” may be on its way as Shaqfighter is Trademarked and Shaq-fu is renewed.

At the height of the 16-bit video game craze crappy video games releases were the norm. In an attempt to get a piece of the monumental success of titles such as Mortal Kombat  and Street Fighter, a small and now defunct software company released a title which many have tried to forget, “Shaq-Fu”. The terrible game featured a cast of characters created exclusively for the game and starred Shaquille O’Neal. For the few that loved the game and have been waiting for a follow-up you may just get your wish.

On May 8th, Mine O’Mine, Inc, company owned by Shquille O’Neal, filed for a Trademark on “Shaq-Fighter”. Exciting news no doubt, does this mean another video game starring Shaq is coming to a store near you? A simple search of the USPTO TESS system reveals that Shaq-Fighter is a trademark which will be used on electronic game software, online gaming software, a website, and printed manuals for electronic games. The applications shows that Mine O’Mine has filed the mark on an “intent to use” basis, which means that they have not filed for full registration but filing for protection in case the company and Shaq decide to go forward with plans selling a video game under the mark.  The application is the only document on file with the USPTO at this time so we don’t know if Shaq Fighter will actually be granted ITU (intent to use) protection.

In addition to Shaq-Fighter, it seems the Shaq-Fu trademark is in the registration process as well. Shaq-fu has also been filed as an ITU application and under the same classes as Shaq-Fighter. Who knows when you will see these titles at your local gaming boutique but at least we can track the application process.  Your probably won’t see Shaq Fighter at this year’s E3. Darn!