What Defenses are there for Improper Use of Intellectual Property?
Sometimes, a party needs to defend itself against use of intellectual property.
Trademark law – Nominative Use
In some cases, use of a trademark is nominative. The use of a trademark is to refer to the genuine goods or services associated with the mark.
As explained by one U.S. federal court of appeals:
“With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute, and a problem closely related to genericity and descriptiveness is presented when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).
Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark is used as is reasonably necessary to identify the product or service and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner.
Fair Use – Copyright Law
In its most general sense, a fair use is any copying of copyrighted material done for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work. Such uses can be done without permission from the copyright owner.
Notwithstanding the provisions of sections 17 U.S.C. § 106 and 17 U.S.C. §106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
Purpose and Character
The purpose and character of your intended use of the material involved is the single most important factor in determining whether a use is a fair use. The question to ask here is whether you are merely copying someone else’s work verbatim or instead using it to help create something new.
The second factor looks at the creativity of the work. Creative works have more protection than factual ones, so the more creative a work is the less likely the use will be considered fair under this factor.
The more material you take, the less likely it is that your use will be a fair use. As a general rule, never: quote more than a few successive paragraphs from a book or article, take more than one chart or diagram, include an illustration or other artwork in a book or newsletter without the artist’s permission, or quote more than one or two lines from a poem. However, there are times when the use of even a small amount of a work can be too much if it can be considered the heart of the work.
A court will look closely at a use that deprives a copyright holder of income, regardless of whether the new material is competing in the same market. Important factors include the current market and the potential market.