As an intellectual property lawyer, I often get questions from clients that have received a cease and desist letter alleging copyright infringement. One important defense to copyright infringement is the “fair use” defense, in which you basically say, “Okay, I copied it, but the use I made of your copyrighted material was legal.” Fair use is a very fact-intensive analysis and you often can’t know whether something was actually fair use or not until a judge or jury makes such a determination after trial. Because most people cannot afford to go the distance to determine the viability of the defense, the defendant who has used the copyrighted material often settles or removes the offending material (if possible) rather than litigate. In order to avoid being accused of copyright infringement altogether, it is helpful to understand the rules of fair use, which are discussed very comprehensively in this resource from the Stanford University Libraries. I have found it be very useful, particularly the summary of fair use cases in Part C. I have also written earlier on this topic, here and here. I hope you find these resources to be useful guidance on this complicated and fact-intensive issue, which can otherwise be a complete roll of the dice. And, I hope you are never in the position of having to convince a mad copyright holder that your use was fair.
Actor Stephen Fry has confirmed that he and Sir Ian McKellen will pay a licence fee so that a Southampton pub in England can continue to use the name they’ve traded under for twenty years—The Hobbit.
The pub was threatened with legal action by Saul Zaentz Company (SZC) of Hollywood, which accused it of infringement. SZC owns the worldwide rights to several brands associated with author JRR Tolkien, including The Hobbit and The Lord of The Rings. Although half this article talks in terms of “copyrights,” I feel certain it is really talking about trademark infringement.
In an effort to get SZC to back off, the pub’s supporters set up a Facebook page, which has more than 57,000 supporters. Sir Ian, who plays Gandalf in the Lord Of The Rings films, described the film company’s actions as “unnecessary pettiness” and Fry said it was “self-defeating bullying”. The actors began tweeting about the situation and Fry ultimately offered to pay a licensing fee so that the Hobbit could continue to operate under that name.
This case is another interesting example of the little guy using the power of social media to make a trademark “bully” back down. However, as an IP lawyer, I am sympathetic to the mark owner’s plight–you either defend your mark or you lose it. However, unless the SZC folks had used the mark on a pub, I’m not sure that any confusion would be likely. At any rate, you will still be able to knock down a cold Frodo at The Hobbit after a long day in Southhampton, and that’s a good thing in anybody’s book.
Evangelists Joel and Victoria Osteen get a temporary reprieve in the copyright suit brought against them by writer of the song “Signaling Through the Flames,” courtesy of every defendant’s best friends, Twobley and Iqbal. The Texas district court granted their motion to dismiss because the plaintiffs failed to allege facts showing that the Osteens had a financial stake in the infringing activity and personally supervised the infringing conduct. The plaintiff was given leave to amend so the Osteens will undoubtedly have to face this issue again.
Oprah artfully sidestepped a trademark lawsuit when a New Jersey district court held that she made fair use of “Own Your Own Power” on the cover of her magazine when she used the phrase as a headline and a title for an area of her website. The use of the descriptive phrase in conjunction with her well-known trademarks was fair use and did not infringe the plaintiff’s “Own Your Own Power” mark, registered for “a personal brand of self-awareness and motivational communications services nationally.” Because the court declined the invitation to exercise jurisdiction over the plaintiff’s state law claims, Oprah carried the day on all issues.
On March 20, 2012, the Supreme Court issued a unanimous decision, authored by Justice Breyer, in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The court held that the process patent that Prometheus Laboratories had obtained for correlations between blood test results and patient health is not eligible for a patent because it incorporates the laws of nature. The Court found that the claimed method merely restated a law of nature, specifically the correlation between the concentrations of certain metabolites in the blood and drug effectiveness or toxicity and, thus, it was not patentable subject matter under Section 101 of the Patent Act.