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.

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.

Flea Market Operator vs. Coach Inc. Who do you think won?

In an endless and well justified quest to prevent others from selling knock off bags, Coach, Inc. won a giant settlement against a Flea Market Operator in Tennessee; not just any judgment but a judgment worth over five million USD. The case presented a novel issue for the Six Circuit Court of Appeals. Could an operator of a Flea Market be held liable for contributory trademark infringement when the vendors operating in the market sell counterfeit goods? The answer was a resounding “yes”.

The defendant in this case, Frederick Goodfellow, operates the Southwest Flea Market in Memphis. Goodfellow rented around seventy-five booths to vendors who sold various goods. During operation of the market Goodfellow had ultimate control over operation of the market as well as the power to decide who may sell goods in the market. Apparently several of these vendors made the fatal mistake of selling “Coach” bags, a fact which it appears Goodfellow was well aware.  It is quite obvious that he was aware because Coach sent a letter to Goodfellow notifying him of the sale of Counterfeit Coach products at the market. He received an additional letter from the District Attorney notifying him of the sale of the goods. As if these presumably strongly worded letters were not enough to put him on notice the police conducted two raids on the premises and seized the counterfeit goods. (According to the opinion the second raid involved around 150 law enforcement officers).

Adding to the facts mounting against him, it seems Goodfellow did not do much to rectify the problem. He posted a sign which clearly stated “counterfeit is prohibit”, sporadically distributed pamphlets to vendors, and met with vendors to discuss the problem. However, communication with the vendors was difficult due to language difficulties and the meetings were not well attended.

Coach Inc. moved for summary judgment and Goodfellow failed to respond; even in viewing the record in a light most favorable to him the court held Goodfellow liable for contributory trademark infringement.  When the question of damages was tried in front of a jury; Goodfellow suddenly had a judgment of $5,040,000 looming over his head as well as a permanent injunction and nearly $187,000 in fees and costs. Not fun for Goodfellow.

This is a pretty clear cut example of trademark infringement, as the court said “a party proves trademark infringement by showing (1) that it owns a trademark, (2) that the infringer used the mark in commerce without authorization, and (3) that the use of the alleged infringing trademark ‘is likely to cause confusion among the consumers regarding the origin of the goods offered by the parties.” Leelanau Wine Cellars, Ltd. V. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir. 2007). Goodfellow defended that he could not be held liable for trademark infringement because he was not in a partnership relationship with the vendors, the vendors and Goodfellow did not have power to bind each other and they did not exercise joint ownership or control. The court of appeals agreed with this contention but pointed out that this was the standard required for vicarious liability; in this case the court found that Goodfellow was liable for contributory trademark infringement which is different than the former. The court explained that contributory infringement is where a “distributor intentionally induces another to infringe on a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, [it] is contributorially responsible for any harm done as a result of that deceit. ” Inwood Laboratories Inc., v. Ives Laboratories Inc., 456 U.S. 844 (1982). This standard has been applied against flea market owners throughout several circuit courts but never in the sixth, that is, until last week.

Goodfellow knew of the activity but continued to allow the counterfeit goods to be sold at this market. While Goodfellow will likely appeal I don’t see any way he could win. People are not allowed to freely sell counterfeit goods and it is obvious owners of strong marks will police their brands with the ruthlessness of the Galactic Empire. It is a good idea for any flea market operator to take note of this case. Pay attention to what is being sold in your market if there are third party vendors present, when one of the biggest names in the fashion industry sends you a letter advising you of infringing activity; heed the warning, and be more diligent about informing vendors what they may and may not sell in your market. For the full opinion check here: Goodfellow v Coach.

This article is a case review and my opinion only and is not intended in any way to be legal advice. If you need legal advice please contract an attorney.

The Sad and Untimely Demise of the Art Car “La Contessa”

This is a bit old but remains one of my favorite copyright cases.

Artists Simon Cheffins and Gregory Jones brought an action against Michael Stewart, land owner near the area where the Burning Man Festival takes place. The action stems from the destruction of the plaintiffs beloved “sculpture” known to patrons of the Burning Man Festival as “La Contessa”. La Contessa is an “art ship” built around the frame of an old bus and made to be a replica of Spanish ships of yesteryear. The plaintiffs are two artists that conceived of the idea of creating a land roaming ship. The artists received a $15,000 grant to design and build the magnificent vessel. Cheffins v. Stewart, 2011 WL 196932. It took several months and over seventy volunteers to construct the large replica. The ship had several decks, room for dozens of people, two bars, and was beautifully decorated.

The La Contessa was indeed a gem of the Burning Man Festival and had no equal among other roaming “art cars”. Sadly, after several years of use at the festival the ship sustained damage during a battle with wayward sand dune (to its credit, it survived a battle with a whale art ship before it met the dune).  The damage, perhaps, could have been avoided had the driver been able to see. You see, there was no way for the driver to see, so a navigator sat above decks and relayed directions via radio communications. Crippled and immovable, the derelict vessel was left on the property of Michael Stewart. Stewart was known locally for his angst against the attendees (hipsters) of the Burning Man Festival (probably, because they left giant pirate ships on his property). Stewart, annoyed at the presence of the sailing ship, decided to burn it to the ground.  The result was the destruction of the La Contessa, the art ship lay in ruins, sadly, it would never sail again.

Cheffins and Jones filed suit under 17 U.S.C. §106A and an action in conversion for the destruction of their ship. Unfortunately for them, § 106A of the copyright act is usually a losing battle and almost never enforced.

Visual Artists Rights Act

The opinion notes “[N]ot every artist has rights under VARA, and not everything called “art” is protected by such rights” Cheffins v. Stewart, 2011 WL 196932. “VARA protected only things defined as ‘works of visual art,’ a definition that is a ‘critical underpinning of the limited scope of the Act.’” Id.

The issue for the court was whether the ship was a work of art that fell under the protection of VARA. The plaintiffs contended that the ship was protected because it was a sort of “applied art” and therefore sculpture. Applied Art is defined as “[T]wo-and [T]hee-dimensional ornamentation or decoration that is affixed to otherwise utilitarian objects.” Carter v. Helmsley-Spear. 861 F.Supp 303, 315. (2nd Cir. 1995). The problem here was that the ship was not a traditional sculpture and VARA does not define “applied art” in any of its provisions. However, the legislative history of the Copyright Act defines works of applied art as “all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles”, for example, a piece of furniture that could be called a sculpture. Cheffins v. Stewart, 2011 WL 196932.

The court ruled that the ship was a utilitarian object with the purpose of transporting people. Because the ship could transport people, accommodate bars, concerts, and house dozens of people, it was not considered art subject to protection by VARA. The unique functionality of the art barred its protection and therefore the plaintiff could not sue Stewart under VARA. The court granted summary judgment for the defendant on the VARA claim but allowed the conversation claim to remain.

Apparently karma caught up with Mr. Stewart as his Yacht mysteriously sank to the bottom of a lake shortly after the verdict.