Copyrights & Trademarks

SaltYou know you’ve chuckled at a few of them–the  ubiquitous internet meme.  But, have you ever wondered whether all this sharing, changing and going “viral” is legal.

Protecting or commercializing your meme

If you create or are the subject of a meme, it can be difficult to commercialize it or protect it. There are generally two “rights” that can be associated with a meme—trademark and copyright.

Copyright:  Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. As the person who created a work, you have a copyright regardless of whether you file it with the U.S. Copyright Office.  To sue over a copyright, you need to register it, but your lack of registration does not otherwise lessen the right to claim something you created as yours.  If you take the picture, then generally you own the copyright. But, if you add a few new words to someone else’s picture, your addition does not likely transform ownership to you.

The point of internet memes, however, is that they be shared.  If you are aggressive and enforce your copyright, the meme won’t become, well, a meme.

Trademarks:  A trademark protects a word, phrase, symbol and/or design that distinguishes the source of the goods. These are brand marks that give a particular product or service a distinct identity or help consumers distinguish between various products or services. Could your meme be a source indicator for your goods or services?

Grumpy CatsIt does not happen often, but it has happened before.  Grumpycats.com turned its meme into a business by selling books, shirts, posters and even Christmas decorations. The trademark holder is the family who originally took the picture of the cat and posted it online. The original trademark registration listed the goods associated with the mark Grumpy Cat as “stuffed and plush toys, action figures, dolls and toy animals, all based on a real cat that is an internet meme.”

So what about the risk of using memes?

Most creators launch their memes for the love of the meme and want people to share and tweak. But, there have been claims in the past. Getty Images, which has a reputation for strictly enforcing their intellectual property, has enforced the use of one of its images in a meme.

The Socially Awkward Penguin was a short-lived meme that was shared and people would socially awkward oengineoften change the text to include awkward sayings. The original image of the penguin came from a National Geographic photographer and Getty Images enforced their rights and demanded money from people who used the image in memes.

But what about fair use?

Capture

Fair use is the most obvious defense to a claim. The problem with fair use is that there is no bright line test and no lawyer can guarantee you that a court would find that your use of the meme was a fair use.

The fair use factors 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.

Because most memes are meant to be parodies or include critical comments in a non-commercialized way, fair use will likely save the day. If you use it in a commercial way in advertising or try to sell items using someone else’s images for Captureyour meme, then you will likely find yourself in trouble.

 

For the most part, internet memes are harmless fun. If you are sharing with your friends and commenting on current events, you likely don’t have much to worry about. Share the Salt Bae image to celebrate your buddy’s epic bottle flip. On the other hand, if you are using a meme to sell products, you may want to think twice.

If you created the original image that has gone viral and you want to sell products or otherwise monetize it, you may want to take the right legal steps to protect yourself.

What do I need to do to protect my mark after it is registered?

Unlike copyrights and patents, trademarks can last forever if you take the right steps. Once properly registered, you will have to file your first Declaration of Continued Use between the 5th and 6th anniversary date of your filing. Your next renewal will fall between the ninth and tenth year. After that, you have to renew the mark every ten years.

At the five year mark, assuming you have continued to use the mark, you will want to file a “Declaration of Incontestability” giving you the greatest protection under trademark law. This will prevent others from contesting your trademark on grounds often subject to attack such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using before you; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What do I do if someone is infringing?

Often a trademark owner will send out a cease and desist letter demanding that the infringing party stop using the mark. Many times, the infringement is not done on purpose and the infringing party will stop when notified that their conduct is in clear violation of another’s rights.

Sometimes, the infringing party will ignore the demand or take the position that they are not infringing. At that point, you may have to consider a trademark infringement lawsuit. To prevail, you would have to prove:

  1. You are the owner of a valid mark – which is presumed if you have a federal trademark registration; and
  2. The other side is using the mark without authority in connection with the sale of goods or services in a manner that is likely to cause confusion to reasonable consumers.

If you can prove those elements, you may be entitled to an injunction, or court order that requires the defendant to stop using the mark, an order requiring the destruction or forfeiture of infringing articles; your damages or the infringer’s profits, and, sometimes, recovery of your attorneys’ fees.

What Happens After My Application is Filed?

After your application is filed, you should receive an email from the USPTO confirming the submission. In a few business days, the USPTO will confirm the application has the necessary information to be considered. On average, it is then taking about two to three months for an application to be assigned to an attorney within the USPTO. If there are no issues, the USPTO will publish the mark to see if anyone in the public challenges the mark. If no one timely challenges the mark after it is published, then your mark will be registered approximately three months later.

If the USPTO has an issues with your application, it may issue a letter to you which is referred to as an “Office Action.”  At that point, you can respond to the USPTO or abandon your efforts. You may want to consult with qualified counsel about the appropriate response. Usually, there is a deadline to respond, so taking the Office Action seriously is important. If the USPTO continues to challenge your application, you can eventually file an appeal with the Trademark Trial and Appeal Board which is commonly referred to as the TTAB. You may also end up before the TTAB if a third party challenges your mark. If you find yourself involved in a TTAB proceeding, you may want to hire an attorney. You can represent yourself, but the TTAB is just like a trial and there are procedural rules you will be expected to follow that may trip you up.

What are some common issues raised by the USPTO about trademark registrations?

The USPTO may raise an issue through the issuance of Office Action for a number of reasons including: (1) your mark is generic or descriptive; (2) your mark is too similar to someone else’s; (3) you need to disclaim part of your mark; or (4) you need to move from the principal to the supplemental register. As explained above, you may want to consult with an attorney about any one of these issues. You are free to challenge the USPTO’s initial decision on these issues. We will briefly describe the latter two issues: disclaimer and the supplemental register.

Disclaimers

Many times your mark may be a group of words together with one or more of them describing the product (e.g., tires) or be merely descriptive (e.g., great). While it may be appropriate to register the mark, as a whole, the USPTO may raise questions if you try to claim some of the individual product or descriptive terms. Thus, you may want to disclaim those words without giving up on registering your mark as a whole. For example if you try to register “Great Turtle Tires,” the USPTO may ask you to disclaim the terms “great,” and “tires” so that you cannot claim exclusivity to those terms within your appropriate category.

The disclaimer does not remove the unregistrable part of your mark or affect its appearance. The disclaimer will be on the USPTO database and it lets the world know you are not making an exclusive claim to that particular part of your mark. If you choose not to disclaim part of your mark, it may be cause for rejection. Often times, you can simply consent to the proposed disclaimer, but you may want to consult with a trademark attorney before doing so.

The USPTO uses the following examples to illustrate when you would need to use a disclaimer:

  • Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
  • Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
  • Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
  • Business Type Designations: Disclaiming “Corporation”, or “Inc.”
  • Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
  • Well-known Symbols: Disclaiming the “$” for a financial services company.
  • Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
  • Compressed compound wording: Disclaim “Cool Pack.com” from the brand CoolPack.com because CoolPack is a compressed compound term and .com provides no indication of the source of the goods or services.
  • Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. The example the USPTO uses is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
  • Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

The Supplemental Register

Another common issue raised by the USPTO is whether you should be on the Supplemental Register as opposed to the Principal Register. If your mark is descriptive, a surname or a geographic term, then you may have to try and register it on the Supplemental Register. Often times, the USPTO will deny your right to file on the Principal Register and suggest you file on the Supplemental Register.

Even if you are on the Supplemental Register? You can still:

*          Use the ® symbol

*          Put others on notice that you are already using the mark

*          File a trademark infringement suit in federal court

*          Prevent others from obtaining confusingly similar marks from the USPTO – even on the Principal Register.

Unfortunately, you are not the presumed owner of a valid mark if there is a lawsuit. You can’t use a Supplemental Register mark to prevent the importation of counterfeit goods. Finally, regardless of how long you have your mark registered on the Supplemental Register, it will never become incontestable like a mark on the Principal Register can. If your mark obtains secondary meaning, you can refile for acceptance on the Principal Register even if you first filed on the Supplemental Register.

Common Questions During the Application Process

Have you used your mark in commerce and what is the impact of that?

If you are already selling your product or service with the mark on it, you are “using” your mark in commerce. As a result, you will need to provide proof that you are already using it. You can still register your mark even if you have not started yet.  You can file what is referred to as an intent to use application to hold your place in line. You will have to make another filing when you actually start using your mark or file extensions to hold your place in line.

What do I use for a specimen?

As mentioned above, if you are using your mark in commerce, you will have to provide proof which is referred to as a specimen. The specimen can’t just be your logo in a vacuum. It needs to be something that shows you are actually using it like scanned or digitally photographed tags, labels, instruction manuals, or containers that show the mark on the goods. The USPTO warns that invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods. If you are selling services, acceptable specimen are signs, photographs, brochures, websites or advertisements that show the mark used in the sale or advertising of the services.

Are you selling goods or services?

For trademarks, you have to distinguish between whether you are selling goods or services. Goods involve the sales of actual physical products. Services, on the other hand, are activities you perform for others such as professional services. In many cases it will be easy to distinguish between goods and services. Sometimes, it won’t be as easy. For example, renting goods to others means you are providing a service.

The USPTO uses shirts as an example. If you sell shirts with your own logo, you sell goods. If you allow others to bring you shirts and you put their logo on there for them, then you provide a service. If you sell shirts to people, but put your customer’s designs on them, then you may provide a good and service and may need to file in two classes and pay two class fees. If you operate an online store where you sell other people’s shirts to customers, then you are likely involved in the retail service.

Software can be both a good and service. If you are selling actual software purchased by customers through a disk or download then you are selling a good. But, if you are selling SaaS from your website, then you are selling a service.

What category do I use for the goods and services associated with my mark?

As part of the application process, you will have to select a category for the goods and services from a pre-selected list. This is used by the USPTO to help determine whether you are selling similar goods and services as someone else who might be using a similar name. If you use your mark in multiple categories and want it protected for each category, you may have to make multiple $275 payments to the USPTO.

Your selection of a category is important because it identifies the types of goods or services where you may have the exclusive right to use your mark. At the same time, you also need to make sure you actually sell products and services in that category because if you don’t, your registration could be invalidated. Also, changing the category designation can be difficult and require an additional filing fee.

How do I describe my goods or services?

In addition to picking a category, you will have to provide some more details about your goods and services. This is anywhere from a one-word description (t-shirts), to a sentence-long description. Your description, or identification of goods and services, provides the public and the USPTO the necessary information they need to determine whether your mark may interfere with a similar mark. While you have some latitude, the USPTO disfavors using open-ended phrases such as “including,” etc.” and “such as.”  You cannot simply repeat the same broader category name.  By way of example, if you sell t-shirts, you would pick the category “Clothing” and then use the description “t-shirts.”  If you sold a variety of clothing items, your description might be “t-shirts, collared shirts, pants, shorts and shoes.”

Do I trademark my name, my logo or both?

You can register just your name, your logo, or you can do both. The logo and the name constitute two separate trademark registrations and would require two separate payments to the USPTO of $275.

If you need to choose, then, generally speaking, companies start with trademarking their name. Protecting your name gives you the broadest protection because it prevents any use of it that causes confusion, even if someone tries to use your name within their logo. A mark for your logo protects the exact shape, orientation, stylization and sometimes color in that particular logo. The company name can, but does not have to be part of the logo. Registering the logo protects it and prevents others from using a logo that is confusingly similar.

You’ve picked your mark, now search to better assess its availability

Once you have picked your mark, you should do some searches to see if others might be using it before you invest the time and money trying to register it. A search will help avoid obvious duplications of pre-existing marks. If the USPTO rejects your application, the fees to the USPTO are not refundable. If your company is just beginning, it’s also better to make name changes now rather than invest years building a brand only to learn that you have to change the name and lose all of your goodwill.

Searches can range from a basic exact-match searches on the USPTO database to global and common law searches for the use of the mark by others although they may not have registered it as a trademark. While the more robust the search, the better assurances you will have, a “clean” search does not mean someone will not claim they were using the mark before you. Nevertheless, you should consider running a search before filing.

Now, it is time to apply

To apply, you will need some basic information. For a typical application, be prepared to provide at least the following:

  1. The full legal name and address of the owner of the mark.
  2. If you are using the mark, an example of how you are using it to actually sell goods or services.
  3. Information on how you are using it or plan to use it.
  4. The dates you first began using the mark.

In the most general sense, getting a trademark protects your brand. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another. By registering your trademark, you will be entitled to a presumption of ownership of the brand on a national level and a presumed right to use the brand nationwide. It prevents someone from registering a confusingly similar mark after you and allows you to sue in federal court if someone infringes on the brand you have worked hard to build. Once registered, you can also present yourself as an established and serious business because you can start using the ® symbol after your name, logo or slogan.

Making your mark a good one

The United State Patent and Trademark Office will not approve every name for a trademark. Under trademark law, names can be described as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” You are more likely to receive a registration and be protected as you move from left to right or from generic to fanciful.

Generic names are almost never given protection. For example, you could not trademark the name “The Screwdriver Company” if you made screwdrivers. Almost as problematic as generic names are merely descriptive names. “The Metal Screwdriver Company” is also not likely to pass muster because it merely describes your screwdriver as being made of metal.

Descriptive marks are only entitled to trademark protection if they have gained secondary meaning. That is a legal term of art that means the name has become so famous that despite the generic nature, the public associates the product with a specific company. Examples include International Business Machines or IBM. Obviously, if you are just starting out, you shouldn’t rely upon a secondary meaning to get your generic name through. While a descriptive mark may obtain secondary meaning, generic names cannot and therefore they should always be avoided.

Your chances of getting approved improve dramatically as you move toward a suggestive mark. These hint at the quality or another aspect of the company such as “Herculean Screwdriver Company.” It is better than “Strong Screwdriver,” but conveys the same meaning. These you can usually register, but you run the risk that the USPTO says what you thought was suggestive was actually descriptive. Some popular examples include Microsoft which makes software for microcomputers or Citibank for financial services. Brand owners often like these names because it gives the consumer a good idea of what the company does without having to educate them or spending a lot on advertising to get them used to the name for the particular product or service.

Next on the list are arbitrary marks. These are existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers – not to be confused with Apple Records.

Finally, fanciful marks are the easiest to get approved. A fanciful mark is a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. You are likely familiar with Yahoo!, Google, Exxon and Spotify which would all be considered fanciful marks.

In addition to being rejected because the name is generic or descriptive, your name may be rejected for a number of other reasons including:

  • it is too similar to another name already registered.
  • it is a surname.
  • it is geographically descriptive of where you are doing business.
  • it is disparaging
  • it is a foreign term that translates to a generic or descriptive English term.
  • it uses an individual’s name or likeness, or is the title of a single book or movie.

Guest Post: Gray Reed intellectual property attorney David Lisch provides this two part Lisch_111x105series on Basics of Intellectual Property Law for Start-Ups. Part one focused on trademarks and entity formation. This part focuses on patent law.

Patent Protection

A patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” 35 U.S.C. § 101. Unlike trademarks, which protect a brand name and recognition, a patent protects an invention, including functionality or design thereof. A patent gives the owner the exclusive right to manufacture products or employ processes covered by the patent for 20 years from the earliest priority date.

1. Do a Prior Art Search

Prior to filing a patent application, a business may elect to perform a prior art search to become informed of possible prior art which may be cited against the invention and/or preclude patentability. Moreover, it may assist the drafting attorney to craft claims which capture the invention but avoid overlapping with potential prior art, thus (hopefully) reducing the likelihood of the application being issued one or more office actions which will incur additional costs for the attorney to draft a response to.

2. Know your deadlines

The urgency of filing for a patent application wholly depends on when the first public disclosure, public use, or sale occurred. See 35 U.S.C. § 102. In the United States, there is a one-year grace period after such occurrence to file either a provisional or nonprovisional patent application. A provisional patent application may be filed to establish a “filing date,” and usually costs significantly less than a nonprovisional due to requiring less time to draft. Filing a provisional application will give the business one year to test the market and explore if filling a nonprovisional patent application is worthwhile. However, the follow-on nonprovisional patent application must be filed within that one year timeframe of filing the provisional application and claim benefit thereto, or the provisional application will become prior art to any future patent applications for the same invention.

3. Know what is not patentable

There are a few judicially created exceptions which preclude patentability, including if a claim is directed to a law of nature, a natural phenomenon, or an abstract idea. This last exception of being an abstract idea is particularly relevant to web based companies due to the likely desire of patenting search or coding algorithms and other software and/or business method related inventions. More specifically, these areas have received significant attention since June 19, 2014, when the Supreme Court decided Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 1247 (2014). This article (Wave Of USPTO Alice Rejections Has Cos. Tweaking Strategies) succinctly explains the current state of the U.S. Patent and Trademark Office, and the likelihood of obtaining a software or business method patent. A few quotable comments include:

“In recent months, USPTO patent examiners who handle applications in the area of e-commerce have been rejecting more than 90 percent of applications under Alice”

“It has become clear from the statistics that applications for patents on ways of performing business methods more efficiently using a computer face a difficult or nearly impossible path at the USPTO.”

While keeping this article to the fundamentals, it is worth noting some exceptions to the above may apply depending on the timeline of development of the part or invention being claimed, along with if any public uses were “experimental,” however that is beyond the scope of this article. Moreover, it is a best practice to not have to rely on these exceptions in the first place. Additionally, while the one-year grace period applies to the United States, such first disclosures may bar protection in other jurisdictions, such as Europe, Japan, and China, which employ a worldwide “absolute novelty” rule (any disclosure worldwide prior to filing the patent application, even a disclosure by the applicant, may be cited as prior art, thus possibly barring patentability).

 

 

Lisch_111x105Guest Post: Gray Reed intellectual property attorney David Lisch provides this two part series on Basics of Intellectual Property Law for Start-Ups. Part one focuses on trademarks and entity formation

Trademarks

At one point or another, all companies will be faced with the decision if, and how much, to invest in intellectual property protection. Let’s start with trademarks.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A “service” mark distinguishes the source of a service, rather than a good, but the two are typically simply referred to as a “trademark” or “mark”.

There are two typical methods of filing a trademark: 1) when the mark is in use, filing a “use-based” or “Section 1(a)” application; and 2) when the mark is not in use yet (e.g., prior to forming the company or selling finished product), filing an “intent-to-use” or “Section 1(b)” application. For the latter, an “extension of time” must be filed every 6 months (for up to a cumulative time of 3 years) until the trademark is in use, otherwise the application will expire and a new application must be filed. The policy behind this is to avoid people “squatting” on a trademark for extended periods of time. Once the trademark is in use, a “statement of use” is filed with a specimen (example) showing the mark as used in connection with the described goods or services.

One should file a trademark prior to, or near the conception of a business. A trademark is relatively inexpensive, typically costing $225 in USPTO fees plus some time for an attorney to do brief search for potentially conflicting marks, search for which “classes” the mark should be filed in, and actually filing the mark. It is advantageous for a business to file a trademark early in the business cycle to assure (to the extent possible) that their mark is not conflicting with another’s mark. If such a conflict does occur, it is substantially cheaper to change the company name and perform rebranding early on. Moreover, if there are no conflicting marks, the company assures others will be precluded from filing “confusingly similar” marks.

While possible to file a pro-se trademark application, it is highly recommended to hire an attorney due to inflexibility of the rules regarding trademarks. For example, importantly, in general, the trademark should be filed under the entity name, not an individual’s name. This is because, while an individual may be the sole owner, CEO, President, etc. of a company, it is the company which has an intent-to-use, or is currently using the trademark. Should the later occur, where the mark is filed in the name of an individual, the trademark may later be deemed void. 37 C.F.R. § 2.71(d); TMEP §§ 803.06, 1201.02(b) (“An application is void if it was filed in the name of a party who did not own, or was not entitled to use, the applied-for mark on the application filing date.”). Moreover, unfortunately, such an error cannot be cured by amendment or assignment. TMEP §§ 803.06, 1201.02(b). There are also rules limiting recourse and future actions after filing the above-mentioned statement of use and specimen which an attorney will be integrally familiar with.

In sum, it is highly advantageous to register for a trademark soon after formation of an entity or early in the business cycle to assure both availability and protection of the business name, logo, slogan or services.

P.S. We would be remiss by not mentioning that there are some common law and/or state law remedies available without filing a federal trademark, however those will be saved for another discussion.

Form an Entity First

As discussed above, but worth reiterating, it is advisable to form an entity prior to filing any intellectual property. With trademarks, the mark should be filed with the entity as the owner due to the law essentially prohibiting assignment or correction of an intent-to-use application. If filed incorrectly, the application may be deemed void, and all money and efforts are lost and a new trademark must be filed which can only claim a newer filing date, thus allowing a greater possibility of other preceding marks being conflicted.

A patent (further discussed in the next segment of this series) is slightly different in that the initial owner of the patent are the (joint) inventor(s). While a proper employment agreement will require the employee to assign rights to the company, such is not always the case, especially with startups who are likely focused on tackling other initial challenges when just opening shop. Even if this isn’t the case, assuming the inventors are still cordial and willing, the patent application (or granted patent) can be assigned to an entity at any point in time. It is advantageous to have this assignment executed earlier rather than later to assure the inventors are still on good-terms with each other and the company and will easily comply.

Lastly, having all intellectual property held by the entity enables a cleaner presentation to current and potential investors. The entity, or anyone representative thereof, can state there are no hurdles to owning the IP, and the IP can be easily transferred in a merger or acquisition of the entity.

In the next segment, David will provide the basics of patent law and its importance for a start-up.

 

Yesterday, the Ninth Circuit ruled copyright owners must consider the fair use doctrine before sending a takedown notice under the Digital Millennium Copyright Act in Lenz v. Universal Music Group. Read the case here: Lenz v. UMG – 9th Circuit

The case centered on this video.

As a father of two kids, the scene is very familiar. After the innocuous video was posted, Universal Music Group, the holder of the rights to Prince’s “Let’s Go Crazy” sent a takedown notice under the DMCA.

The DMCA is a powerful weapon, but this is the first time a court has warned that copyright holders need to use it with some care. Generally, the DMCA works like this: a copyright owner sends a takedown notice to YouTube or wherever the infringing material is being hosted or displayed. To avoid any liability for the infringement, sites like YouTube immediately take it down and send a notice to the person who originally posted it. That person can challenge the takedown notice by going to court which is what happened in this case where the Electronic Frontier Foundation helped the mother.

The mother won at trial and recovered her attorneys’ fees under a rarely enforced section 512(f) process that allows for counter-challenges to prevail if the takedown was done in bad faith.

According to the Ninth Circuit, before sending the notice, a copyright holder is supposed to consider whether the allegedly infringing material is a fair use and only send a takedown if there is a good faith conclusion that the targeted upload is not a protected fair use of the copyrighted work.

While that sounds good, fair use is not easy for laypeople to understand because judges and lawyers have a hard time with it. Fair use is a factually-specific inquiry and there is no bright line test. Courts consider these four factors:

(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.

There are a lot of close calls when it comes to fair use – the “dancing baby” was not one of them. I certainly would not re-play that racket to avoid having to pay to download “Let’s Go Crazy.”

The court recognized, on the other hand, that with rampant and easy infringement on the internet, a rights holder does not have to do an exhaustive fair use analysis, as long as there is some.  The court wrote it was “mindful of pressing crush of voluminous infringing content that copyright holders face in a digital age” and that the analysis “need not be searching or intensive.”

Application Today

There is little doubt that the DMCA is subject to abuse. For example, disgruntled politicians use it to remove content that is otherwise clearly a fair use. Ahsley Madison used it to remove the posting of its data online. With this new case, people may think twice before quickly sending the takedown notice.