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“Fair Use”: One Term, Two Different Meanings

Button labeled "OK", symbolizing fair use

Fair use” is a legal term that does not necessarily mean what people often assumes it means (a free pass to use other people’s intellectual property). Indeed, the term has two different meanings, depending on whether copyrights or trademarks are at issue.

Copyright

Copyright protects works of authorship. See Copyright Protection in One Easy Lesson. The copyright owner has the exclusive right (as applicable) to reproduce, distribute, publicly perform, publicly display, and make derivative works of the copyrighted work.

Copyright infringement is the unauthorized exercise of one of the exclusive rights by someone other than the copyright owner. Thus, for example unauthorized copying of someone else’s music or movie constitutes copyright infringement.

The fair use defense to copyright infringement is set forth in 17 U.S.C. Section 107. It is designed to protect such activities as criticism, comment, news reporting, teaching, scholarship, and research. Section 107 specifies that the determination of whether the use made of a work in any particular case is a fair use will be based on the following 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.
  4. The effect of the use upon the potential market for or value of the copyrighted work.

There are no mechanical rules for determining how the four factors will be applied. Each case must be decided on its own merits. For example, reproduction of a short poem in its entirety may constitute fair use in an article by a literary critic. On the other hand, reproduction of that same poem solely for circulation among fans of the poet likely would not constitute fair use.

Trademark

A trademark or service mark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods (trademark) or services (service mark). See Trademark Protection in One Easy Lesson. (Throughout the remainder of this post, the term ?trademark? is intended to include service mark, as well.)

Unauthorized use of a trademark or a confusingly similar mark by someone other than the trademark owner may constitute trademark infringement. For example, there are many federal trademark registrations for “COCA-COLA”. Unauthorized use of that trademark by anyone other than the trademark owner would constitute trademark? infringement.

The fair use defense to trademark infringement is intended to protect reasonable, good faith use as a term that describes a good or service rather than as a mark, per se. See, e.g., 15 U.S.C. Section 1115(b)(4). For example, while Kellogg has a trademark registration for “ALL-BRAN” dating back to 1923, another company may truthfully refer to its cereal as containing “all bran” without concern about infringing Kellogg’s trademark.

As with copyright fair use, there are no mechanical rules for determining trademark fair use. Each case must be decided on its own specific facts.

Photo credit: Emilien Auneau via stock.xchng

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

  1. 5/20/2011 | 1:56 pm Permalink

    I have a similar question i’m really having a hard time finding the correct answer for, maybe you could help me out. I have a new web based app startup called My Social Rolodex which I have a TM for. I found a pretty good amount of other companies using the word rolodex in their names and url’s so i’m wondering if down the road Rolodex might try to come after me. Thank you for your time!

  2. 5/20/2011 | 6:18 pm Permalink

    @Bobby
    It is not possible to provide a definitive answer.

    Berol Corporation, a subsidiary of Newell Rubbermaid, has several trademark registrations for “Rolodex”, though they pertain to physical, rather than electronic, products.

    In 2003 Berol’s counsel sent a cease and desist letter to the registrant of a domain name that allegedly infringed the Rolodex trademark (http://www.chillingeffects.org/domain/notice.cgi?NoticeID=707).

    There is widespread use of “Rolodex” as a generic term – including in mobile apps – and no indication I can find that Berol has tried to stop that use since 2003. Perhaps Berol figures that there is no cost-effective way to reverse the generic use, and that it isn’t worth trying to obtain a trademark registration for apps. On the other hand, Franklin sells (e.g., at Office Depot) electronic organizers under the Rolodex? registered-trademark brand.

    So while the indications appear to be that Berol is no longer protecting the Rolodex mark, there can be no guarantee that you will not receive a cease and desist letter.

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