Copyright Fair Use Cases that aren’t Google v. Oracle

Fair use is a common yet complicated defense against copyright infringement. And it can be difficult to predict the outcome. Content creators often creatively transform existing copyrighted material for purposes like commentary, criticism, research, or education. Because such use of copyrighted material is ultimately in furtherance of the overall objective of copyrights, would-be infringers can evoke the fair use defense to avoid liability in certain narrow instances. What is and isn’t covered under fair use is often confusing and involves defining “transformative use” for different situations. This can be complex, albeit interesting due to the people and works involved. A roundup of cases sheds some light on recent developments in this area of copyright.

Dr. Seuss Enterprises, L.P. v. ComicMix, LLC

An unlicensed book titled Oh the Places You’ll Boldly Go! (“Boldly”) drew Dr. Seuss Enterprises to take action in 2016. The book was a mash-up of the popular Dr. Suess work Oh the Places You’ll Go! and science-fiction material from the Star Trek universe.

A trial judge initially ruled that due to the “highly transformative” nature of the work, the mash-up was allowed under fair use. However, on appeal to the Ninth Circuit, Dr. Suess Enterprises prevailed on its copyright infringement claim. ComicMix, LLC, the entity behind Boldly, argued that the work was a parody, i.e. commentary and criticism of Dr. Suess’s original work. The Ninth Circuit rejected this defense finding that Boldly was not a transformative use, but merely a “repackaging” of the Dr. Suess world for commercial gain.

This case drew attention from those in the copyright arena since it helps clarify the Ninth Circuit’s views on protection of mash-ups. While ComicMix argued that the combination of elements from the two distinct creative works was inherently transformative, the Ninth Circuit strongly disagreed, finding that all four factors of the fair use test weighed in favor of Dr. Suess Enterprises.  This is a notable decision and content creators in the mash-up space should proceed with caution.

The Andy Warhol Foundation v. Goldsmith

What do Andy Warhol, Prince, and a 1984 issue of Vanity Fair have to do with intellectual property in 2021? A whole lot more than you might expect. These were the subject of a recent ruling by the U.S. Court of Appeals for the Second Circuit that, like the Dr. Suess case above, drew a narrow boundary around transformative use. In this case, the court determined that Warhol’s use of a famous photograph in his artwork did not meet criteria for a fair use defense.

Lynn Goldsmith is a prolific professional photographer known primarily for her work with celebrities and musicians, among other achievements. In 1981, she took a series of portrait photographs of Prince in her studio. Vanity Fair legally used one of these photographs as an artist reference in 1984, and that artist happened to be Andy Warhol. Warhol subsequently made several more works from the photograph without Goldsmith’s knowledge.

After Prince’s passing in 2016, Goldsmith learned about Warhol’s unlicensed use of her work. Soon after, she asserted a copyright claim. The Andy Warhol Foundation contended that the works were not infringement, and the district court agreed. The court reasoned that Warhol’s works constituted transformative use of Goldsmith’s photographs in part due to their immediate recognizability as a ‘Warhol.’  Upon appeal, the Second Circuit reversed the original decision, reasoning that the work did not constitute transformative use. Notably, the opinion included the distinction that if they were to uphold this ruling based on Warhol’s recognizability that it may create a “celebrity-plagiarist privilege.” Like the Dr. Seuss case, this decisions narrows the availability of a fair use defense.

Georgia v. Public.Resource

Public.Resource is a nonprofit advocacy group that focuses on making public domain content accessible to everyone. The group is particularly invested in making United States Federal Government documents accessible, often through digitizing records. Generally speaking, government produced materials are in the public domain. However, Georgia v. Public.Resource brought to light questions surrounding how states should use copyright. The State of Georgia published some state code online, but annotated versions were only available to paying users. Public.Resource spread these annotated – and copyrighted – versions online without permission, which led Georgia to sue them in 2015.

The Eleventh Circuit ruled in favor of Public.Resource, reasoning that the codes were part of state law and therefore could not be copyrighted. The state assembly of Georgia appealed this decision to the Supreme Court. In April 2020, the Court ruled in agreement with the Eleventh Circuit that Georgia does not have copyright over its legal code. The majority opinion held that copyrighting official works of the Georgia legislature could deprive citizens the full knowledge of the laws.

Do these recent rulings change the nature of Fair Use?

Many in the field are looking to these and other relevant rulings to see what can be garnered about the nature of fair use. Unfortunately, as can be seen here, there isn’t a one-size-fits-all approach to determining what is and is not fair use. With factors that must be analyzed on a case-by-case basis, fair use defenses are difficult to assess and content creators should not assume they have a viable defense when using another party’s content. If you’re concerned about infringement, contact Gavin Law Offices today.

 

Interested in copyright? Read here!

 

Hidden Risks of the Side Hustle

If you’ve ever searched online for ways to make extra money, you’ve likely come across a multitude of “side-hustles.” The side hustle has become an increasingly trendy topic, especially with the recent changes in remote work. These ways of increasing your cashflow can be benign, but several popular avenues come with hidden risks.

Domain Name Marketplace

You may be thinking that it’s profitable to buy and sell domain names. That can be true! But you face risks in that process that you need to be aware of. Namely, if you are purchasing a domain name that is valuable specifically because it trades on the brand of a well-known company, you could be infringing someone’s trademark, violating anti-cybersquatting laws, and generally making a lot of people really angry.

Buying and selling domain names is also referred to as domain flipping. This is a side hustle because people can buy domain names from registrars such as GoDaddy and attempt to later resell them for a profit. Whether the flipper builds an actual website with the domain is up to them. “Domain parking” refers to flippers that do not build a site tied to the purchased domain(s). Another strategy is to invest in the site and increase traffic to make it more valuable. This practice can be lucrative – investing.com was sold for $2.45 million in 2012. But like most headline grabbing stories, it’s not as safe or simple as it sounds.

One of the major risks with purchasing domains is the potential to infringe on someone’s protected intellectual property. Even with research, you could purchase a domain name that is too similar to an existing brand and wind up paying the price. It’s a good idea to consult a lawyer to make sure a domain name doesn’t gain value from an existing source.

Finally, domain flippers must be aware of the dangers of cybersquatting. Although cybersquatting as a practice is often intentional, even unintending flippers can violate anti-cybersquatting policy. The Anticybersquatting Consumer Protection Act covers a range of domain buying and selling practices that could get side hustlers in real trouble.

Options for Trademark Owners

Cybersquatters – and potentially unknowing flippers – commonly obtain exact or confusingly similar domain names to protected marks. Since infringement is so frequent, it’s important to monitor your protected property. An experienced legal team can build the best strategy for your situation and help you keep an eye on the marketplace.

Trademark owners worried about potential infringers or cybersquatters have options. There are different types of actions mark owners can take if they find out a domain registrant is making money off of the owner’s mark. The general first course of action is to send a cease-and-desist letter. This addresses trademark ownership, how the domain name is infringing and causing damage, and your willingness to take the appropriate legal action if the infringement does not stop. If no action results from a cease-and-desist letter, you may wish to involve an attorney who can guide you and implement the correct course of action to stop the infringement.

Side Hustle Risk: Creative Infringement

People can make a lot of money selling and designing creative t-shirts, but you are better safe than sorry when it comes to designing shirts that are valuable because someone else has created the content it is based on. Using online platforms such as Etsy or Instagram means that your activity is subject to federal regulation. Goods that use characters, slogans, or even inspiration from protected works risk both trademark and copyright infringement.

Using the content of businesses commercially without express permission or license is trademark infringement. A common example is personalized goods with college or university logos. These are protected intellectual property so commercial use on your t-shirts without permission is infringement. Another example is fan gear for professional sports teams. A quick search of these online marketplaces shows plenty of stores using infringing material which might make you feel safe. However, just because other stores are selling these doesn’t mean it’s legal. Or the the trademark owner won’t shut that store down. The risk of infringement outweighs any potential gain from unauthorized use.

This type of side hustle also risks copyright infringement. T-shirts with popular tv characters or quotes from a new bestselling movie may fly off your shelves, but remember: their value comes from someone else’s work. And federal copyright infringement claims come with a hefty price tag.

Another common mistake is using pictures from Google. Without checking the source, it’s highly likely that you do not have permission to use that property commercially. No matter what good you’re interested in creating and selling, make sure it’s your original design. If what you’re selling gains value from established content – and you don’t have permission to use it – think twice. Like trademark infringement, copyright infringement can lead you into a mess of legal trouble.

To sell or not to sell

The public domain refers to a collection of works without exclusive intellectual property rights. For instance, the works of William Shakespeare are in the public domain. This means that if someone wanted to do a theater reenactment of Shakespeare’s work, they wouldn’t have to have a license or permission to do so unlike a copyright protected work.

Another type of side hustle involves publishing work from the public domain. There’s always a demand for classics such as Little Women, Treasure Island, or The Great Gatsby, which entered the public domain as of January 1, 2021. Entrepreneurial side hustlers have filled this demand by turning these public domain works into e-books on platforms such as Amazon Kindle. Due to the lack of copyright protection of works in the public domain, infringement can disappear if you are using or inspired by works in the public domain. There are enterprises which have successfully used this hustle – such as the man who sold 64,000 Anne of Green Gables e-books.

However, if you’re thinking this is the new trick for you, don’t dive in too fast. Calculation of the time a copyright is active can be complicated. One version of a work may be in the public domain, but another is not.  It’s important to err on the side of caution and contact a lawyer to be safe if you feel conflicted. No matter what side hustle you’re thinking of pursuing, always do your research and be aware of the hidden risks. If you’re a trademark or copyright owner worried about potential infringers, remember you have options.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Kat Gavin, Esq.

Intellectual Property of the Galaxy Far Far Away

May the 4th Be With You

Any casual fan of Star Wars would assume the that the words “Star Wars” are registered trademarks. What many people may not realize is just how much of the galaxy is protected intellectual property.

Lucasfilm, the film and television production company responsible for creating and producing Star Wars, has a long history of protecting its brand and securing its intellectual property. George Lucas himself opted for future merchandising rights over a rise in salary in the 1970s (Fieldfisher). The Star Wars universe has continued to expand and evolve, especially since Walt Disney Studios acquired the production company in 2012.  As of 2019, Lucasfilm has over 1,100 federally registered trademarks and 3,952 federally registered copyrights (Suiter Swantz).

Many people contribute Disney’s and Lucasfilm’s widespread financial success to their merchandising strategy. Their expanding involvement beyond television and movie production leads to an increased need for intellectual property protection. Whether you want Star Wars themed clothing, household goods, games, books, or entire theme park experiences – there’s an officially licensed option for you.

Are these the droids you’re looking for?

It’s no surprise that STAR WARS is trademarked, but what else of the galaxy far far away has been protected? Due in large part to Lucasfilm’s, and now Disney’s, penchant for merchandise, many sayings, slogans, and design elements have been federally registered.  For instance, the cast of recognizable faces may not all be on the same side of the force but they do share this in common: characters like Darth Vader, Chewbacca, Princess Leia, and R2-D2 all have their own trademark registrations. These are used in connection with goods such as toys and costumes.

One registered trademark that may not be as obvious as the protected title or characters is the word “Droid.”  Lucas himself developed the phrase in the original 1977 film.  It refers to the humanized machines such as C-3PO and R2-D2.  Although now a common word, other companies have to pay Lucasfilm to use “droid” due to its trademark status. If other companies avoid this license, they must be prepared for possible legal action. Both Lucasfilm and Disney are no stranger to infringement disputes.

I got a bad feeling about this

While many times a cease-and-desist letter informing the infringer about his or her mistake is all it takes, some other cases require further action.  In 2016, after multiple cease and desist notices, Lucasfilm filed a lawsuit against Michael Brown.  Brown operated multiple businesses such as New York Jedi and the Lightsaber Academy.  His services included training, classes, and even certifications centered on lightsaber combat.  Further, the design of his logo was “confusingly similar” to the trademarked JEDI ORDER logo.

Brown’s webpage did include a disclaimer that his operation had no affiliation with Star Wars, Lucasfilm, or Disney.  However, disclaimers do not protect companies from trademark infringement.  It’s a common misconception that including this type of language will protect you from legal trouble.  Additionally, as Star Wars has become a household name and brand, many of its trademarks have almost certainly risen to a level of fame that protects them from trademark dilution, a claim that can be brought against any infringer of a famous mark, even if the infringer is using the mark with unrelated goods and services.

There are many instances where entities infringe upon Disney’s protected material.  Small businesses and fans often unknowingly use protected IP in unauthorized manners.  Such a large company cannot shut down every case of infringement, but they have an obligation to try. It is intellectual property owners duty to police their trademarks and copyrights.

To be continued…

With a decades long enterprise, thousands of devoted fans, and an ever-expanding universe, it’s likely the number of registered copyrights and trademarks for Star Wars will continue to increase. When it comes to both Star Wars and intellectual property, we have you covered. Rina Van Orden is not only an IP expert, but is also a huge Star Wars fan. If you’re concerned about infringement or curious about protecting your own work, Gavin Law Offices has the answers for you.

May the 4th Be With You!

IP Strategies for Your Online Business

Transitioning into an online business may feel daunting. From operations to technology, there are so many potentially new processes. Business owners currently operating online can also benefit from a review of their operations and how they can best protect their work. Don’t let your intellectual property strategy hinder your success! Here are five perspectives of what you need to consider when engaging online:

Advertising and Marketing 

  1. Marketing your product or service is an integral part of any business, especially when operating online. Creating an advertising strategy that abides by legal guidelines may sound confusing but there are a few easy tips.
  2. Firstly, make sure that all claims are truthful and substantiated. If you’re selling socks, don’t say that they can fix a broken bone.
  3. Don’t forget that this also applies to social media. Not only you and/or your business, but anyone you may work with such as content influencers, with must adhere to these rules.

Trademarks

  1. Select a strong name and/or logo for your business. What is a strong name? A good rule of thumb is, if it describes what you’re selling, it’s probably not distinct enough.
  2. Make sure you take steps to decrease the likelihood of infringement. Before committing to a name to use commercially, consult with a legal team to search existing marks and assess potential risks.
  3. Will you conduct business in multiple countries? Keep up to date with individual country’s trademark requirements so you understand how to file.
  4. Lastly, make sure to review your contracts to be aware of which rights you have and which rights you are granting. You cannot grant any rights that you don’t have! If you need help deciphering a contract, reach out.

Copyright

  1. Is there content that you use on your website, social media, or mobile apps? Make sure you know whether you can use media like music, text, photos, art, video, or other content in various ways- personally, commercially, within whatever geographic restrictions. Additionally, follow “proper credit and/or attribution” requirements for the content.
  2. Are third-parties able to post content on your website? You may want to limit your liability against their potential copyright infringement by taking advantage of the Digital Millennium Copyright Act (DMCA)’s Safe Harbor. Let us know if you need help navigating these requirements.
  3. Is there a person whose name, likeness, or image you are using in connection with your business? There are right of publicity laws that you must follow as well as applicable state laws.
  4. An online entrepreneurs’ website is like their online storefront. Do you have a clear agreement with your website or software developer? Make sure any other tools created for the operation of your business, like mobile apps, are included in your strategy. A well-written contract is a good way to take preventative measures before the work is done to avoid later infringement or theft.

Privacy and Other Legal Considerations

  1. Be in the know when it comes to changing data privacy and internet laws. Specific state laws may apply to your business even if you are not physically located there.
  2. The California Consumer Privacy Act (CCPA) and Californica Public Records Act (CPRA) grants California residents greater control over their personal data and how businesses use that information. If you want to prepare your businesses for CPRA compliance, start by reviewing how your company collects data, and then contact a professional about how to make sure everything is above board and complies with the new laws.
  3. Virginia recently passed similar legislation known as the Consumer Data Privacy Act (CDPA). There are some differences compared to California’s legislation such as which businesses apply to the regulations.
  4. Finally, set up your online presence to comply with other regulations such as the Americans with Disability Act (ADA). For example, make online offerings available to those with disabilities. Other important legislation includes the Children’s Online Privacy Protection Act (COPPA) and the Communications Decency Act (CDA).

Protection Strategies

  1. Last but certainly not least, educate yourself and pursue all routes to protect your content.
  2. Seeking registration with the Copyright Office and/or the USPTO is a great first step in protecting your business and intellectual property.
  3. Another strategy which helps to prevent improper use is to include notices on your website, social media, and /or mobile applications.
  4. If you are concerned about improper use, explore all monitoring tools and consult with your legal team.

Whether you already conduct business online or not, the internet is here to stay. It’s become an invaluable economic resource, especially with the need for remote options in the past year. As such a fast and accessible way to work, make sure you take into account all your legal and commercial options as an intellectual property owner.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Protect Your Brew: National Beer Day and IP

It’s no secret that Virginia loves a good brew. Virginia boasts an impressive selection of craft breweries and cideries, with more than 30 breweries in Richmond alone! But, did you know that several other states have an even higher proportion of breweries per capita? Vermont, Maine, and much of the Pacific Northwest carry an even denser selection of craft beer.  With so many small and mid-size independent brewers emerging in Virginia and across the country, it’s important for those in this increasingly competitive industry to understand their intellectual property rights. This National Beer Day, we wanted to share important legal considerations for those in the industry.

Our legal team tailors our established expertise in the field of intellectual property to assist in the protection and success of brewery-specific concerns.  From business formation to naming your brews, to protecting specialty artwork and maintaining local partnerships we offer assistance so you can focus on your craft.

Trademark Law:

How much have you attached to your brand’s name and logo? A trademark represents all the hard work you have put into your business and sets you apart in the field.  We can assist you with protecting your business/brewery name, beverage names, and taglines or slogans and enforce your rights in the same.  It is important to take steps to solidify your brand and ensure that your product is not confused with others.  Additionally, working with counsel prior to using a new trademark can help protect you from infringing upon others’ rights, and could avoid a costly infringement scenario.

Trade Secret Law:

How important are your recipes to your business? The recipes for your unique ciders and brews are only as valuable as they are kept in confidence. Trade secrets can be vital to a company’s survival, and are often among a business’s most valuable corporate assets.  Failing to properly protect trade secrets (for example, by filing a patent for a recipe that then discloses the details to the public) can prove disastrous for businesses.  Trade secret law provides an avenue to protect your valuable intellectual property while allowing it to be kept secret and potentially protected forever (while a patent only lasts for 20 years, a trade secret will last for as long as it is kept secret). Fortunately, there are measures you can take as well as policies and contractual provisions we can help you put in place to help protect your trade secrets.

Copyright Law:

Do you have artwork on your label? Did an artist create your logo or website? Alcohol brands dabble in copyright law more than you may expect. Brands should recognize the importance of filing and registering copyrightable subject matter to protect their hard work. Copyright registration and strong contracts and/or copyright assignments when necessary can help avoid preventable issues such as ownership disputes and infringement actions.  For example, under copyright law the author of the artwork, logo, website, etc., could own that material instead of the business unless the business has agreements in place that state otherwise. Our team can help ensure rights to commissioned works are transferred appropriately and provide the best copyright enforcement approach.

Licensing Law:

Do you want to partner with a local bakery for a wheat beer? How about a local coffee place for a stout? These kinds of deals can involve the sharing of proprietary information, and the parties may need to obtain permission to use the other’s trademarks and/or copyrights to market the product. Ensuring that proprietary information is kept confidential, and that certain guidelines are followed by the other business using your trademark, are smart measures to take.

Contract Law:

One of the best ways to safeguard against the various intellectual property issues mentioned above, as well as other legal issues impacting breweries, is a well drafted contract. Do your existing contracts cover all the bases with your vendors, business partners, or other third parties? How about your employment agreements?  Are they protective enough of your company in the event of a disgruntled employee? Thinking through these issues and contacting an attorney for assistance is not cynical – it’s a smart step towards safeguarding your business and ensuring its success.  Companies in the alcohol industry have significant need of contracts due to the many moving components needed to operate, and there is no one-size-fits-all contract.  Notably, brewers conducting business in certain states including California and Virginia should consider whether data privacy laws apply to their businesses that may impact their contractual requirements (The forthcoming  Virginia Consumer Data Protection Act may affect your business, which you can learn more about here.)

Celebration of National Beer Day on a brewery patio in Richmond, VA

This National Beer Day, we would like to raise a glass to the love and dedication that Virginia brewers pour into their craft.  Craft breweries, cideries, and wineries in any state should explore how considering these legal issues and putting protections in place can benefit their business. No matter what your specialty is, we want to help you protect it.

(This blog post is not intended as legal advice.  Please contact us for more information and assistance regarding your particular situation.)