By Benjamin R. Imhoff and Thomas R. Knight
Despite the exclusive rights bestowed on owners, copyrights and trademarks are important elements of everyday language and expression. Since the origins of these intellectual property rights, the law has recognized exceptions to provide the public limited use of these otherwise-protected materials. These exceptions enhance our ability to communicate and promote a culture of creativity and innovation. However, even in the case of excepted fair use, credit must still be given to the proper owner of the asset.
Copyright Fair Use
Trademark Fair Use
The “First Sale” doctrine provides another exception to the exclusive rights of copyright and trademark owners. In particular, lawful owners of goods containing copyrights or trademarks may freely sell of transfer the goods at will. In other words, the copyright or trademark owner’s rights are largely exhausted after the original sale of the good.
Frequently Asked Questions of Everyday Use
While these exceptions may appear intuitive and logical, the legality of many everyday copyright and trademark uses are not so clear, as illustrated by some of the frequently asked questions on the topic:
Is it legal to . . .
. . . include a trademark on a vanity license plate?
. . . purchase material containing protected logos/copyrights and sell again in a finished good?
. . . use a trademark if the use isn’t generating money (i.e., use by a non-profit or charity)?
. . . to replicate another person’s item for oneself (i.e., woodworking or a quilt)?
. . . use another person’s copyrighted work as long as X% is changed?
. . . to use another person’s photograph in social media postings?
. . . to display a photo of a person without consent? Against that person’s wishes?
. . . use a # hashtag as a trademark?
Before answering these frequently asked questins, it is instructive to provide additional context regarding infringement of copyrights and trademarks.
Avoiding Infringement of Copyrights
In addition to Fair Use as described above, the First Sale doctrine generally provides that once rights to a copyrighted work have been purchased, those rights remain with the good. For example, when a consumer purchases a book, that person is free to resell that same book without infringing the author’s copyright. Thus, even where Fair Use does not apply, a copyright owner’s rights in the work are largely terminated after the initial purchase (note that Fair Use does not require on original purchase, such as with news reporting).
However, there is one critical limitation to a First Sale defense that may leave the uninformed consumer at risk for infringement liability. While the First Sale doctrine permits free transfer of ownership following the initial purchase, these rights are limited to the exact copy of the work purchased (“notwithstanding the provisions of section 106(3), the owner of a particular copy . . . is entitled, without the authority of the copyright right owner, to sell or otherwise dispose of that copy.” 17 U.S.C. § 109(a)). In one respect, this is obvious—a person cannot purchase a film on Blu-Ray and legally sell duplicated copies of that work. However, it is also critical to note that the First Sale doctrine does not terminate a copyright owner’s ability to prevent others from creating derivative works based on the purchased copy. Briefly, a derivative work is a transformation, modification, or adaptation of an existing work that has its own original, creative content added. Therefore, while purchasers may freely resell copyrighted works, copyrighted goods cannot be legally sold in “modified” form (the degree of modification is highly relevant and is determined on a case by case basis).
Avoiding Infringement of Trademarks
When it comes to trademark use, the primary question is whether the use is likely to cause confusion. The general purpose of a trademark is to designate the source of the goods or services offered under that mark. Since trademarks allow consumers to identify particular producers or products, the law prevents others not only from using an identical mark, but any mark likely to cause confusion with an existing mark. For example, PepsiCo may prevent others from using names similar in sight, sound or meaning to “Pepsi” with the sale of goods and services in which Pepsi is used. Even beyond related goods and services, a trademark owner may prevent others from using the mark in a manner that diminishes the value of the mark, such as diluting recognition or creating “unsavory or unflattering associations.” (Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 2d 495, 504-505 (E.D. Va. 2006)).
In the context of everyday use, much of the risk for confusion is dependent on transparency. For example, re-purposing vintage oil cans containing trademarks into a novel lunch box is not likely to cause consumers to believe the oil companies are now in the lunchbox business. By contrast, purchasing an automaker’s emblems to create automotive accessories has been held likely to cause confusion among observers. (“VW” license plate holders, Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc., 603 F.3d 1133 (9th Cir. 2010)). Colleges and universities have largely handled use of their logos and insignias through licenses to users, often referred to as “Crafter’s Licenses.” As such, licensed users are not liable for infringement despite the high likelihood of confusion often created by using the logos and insignias on their goods. While the facts of each use vary, the principle concern of trademark infringement remains whether an unauthorized use would create a likelihood of confusion with the trademark owner as to the source or sponsor of the goods or services being offered.
Assessment of the Frequently Asked Questions
With the general foundation for legal use of copyrights and trademarks, we can generally assess the frequently asked questions proffered above (though specific facts may change outcomes).
Is it legal to . . .
. . . include a trademark on a vanity license plate?
Likely, but it depends upon the facts. If the license plate “DOMINOS” is on a car used to deliver pizzas from another pizzeria, this could cause confusion and may be infringing. However, there is likely no issue using the same license plate if the owner simply enjoys Dominos-brand pizza.
. . . purchase material containing protected logos/copyrights and sell again in a finished good?
Often not. While the First Sale doctrine permits the purchaser to resell the goods as purchased, the defense does not apply when these goods have been modified (i.e., a derivative work of copyrights). Further, the courts have not applied the First Sale doctrine to avoid infringement liability where the new goods create a likelihood of confusion as to the source of the new goods. For example, source confusion may be created when selling a hat made of GREEN BAY PACKERS ® fabric, despite the fact that the fabric was legally purchased.
. . . use a trademark if the use isn’t generating money (i.e., use by a non-profit or charity)?
No, revenue is not necessary to infringe an existing trademark. As such, a school or church has no more right to market a singing competition as “American Idol” than a profit-seeking TV network. In each case, an observer may be confused and come to assume an association between the event and the trademark owner.
. . . to replicate another person’s item for oneself (e.g., woodworking or a quilt)?
It depends what was replicated, and how closely. Generally, copyrights and trademarks only protect an item’s non-functional features (patents protect functional features). Thus, replicating the way that a table collapses, or that something is closed by a drawstring, can generally only be protected by a patent. However, if the ornamental attributes of an item are copied (i.e., color schemes and other aesthetic design choices), the replica may be infringing. This may result in a copy or derivative work, or cause a likelihood of confusion of originating from the first source.
. . . use another person’s copyrighted work as long as X% is changed?
No, there is no set percentage of use that designates a threshold for infringement. In other words, a copyright is not limited to an entire piece, but may affix to any portion meeting the threshold of creativity required of a copyrighted work. Thus, copying a single paragraph from Tolstoy’s original War and Peace would constitute only 0.025% of the entire work, but would still be infringing if the original copyright were still in effect (it’s not).
. . . to use another person’s photograph in social media postings?
Often not—many uses in social media are technically infringing. Quite simply, displaying a photograph taken by someone else is infringement without permission or a fair use exception (e.g., educational use, commentary, etc.). This is true whether the photographer was a professional, or was simply a friend using a smartphone. Furthermore, even with permission or a fair use basis, the image owner should still be credited.
. . . to display a photo of a person without consent? Against that person’s wishes?
Sometimes, depending on photo and the nature of use. Most states recognize a “Right of Publicity” that prevents using another person’s name or likeness for commercial purposes. Similarly, the law recognizes a right to privacy. Therefore, a person can prevent either uses that appear to endorse the sale of goods or services, or uses that reasonable people would consider “highly offensive.” However, photos that are merely unflattering or embarrassing do not likely violate a right to publicity and the photographer usually possesses exclusive rights in the photo.
. . . use a # hashtag as a trademark?
Yes, if it designates a source of a good or service (and for federal trademark registrations, satisfies all requirements). Adding ‘#’ or “hashtag” to a mark is much like ending a mark with a “.com” suffix. These additions will generally not make an otherwise-unregisterable mark registerable, but can nevertheless be included. The primary issue is that most hashtags are not actually used to designates a source of goods or services (the purpose of a trademark), but instead denote commentary. For example, “#hashbrowns” can be a trademark for breakfast products, but does not create rights for a person coining its use as popular slang for having breakfast.
Conclusion
Copyrights and trademarks continue to pervade our everyday language and culture as a society. While the law protects many everyday uses of these intellectual property assets, it is important to understand the limitations of these rights to avoid infringement and the consequential liability. If you have any questions regarding the specific facts of your own proposed or current use of legally-protected material, please do not hesitate to contact us.
Andrus was included on the 2015 U.S. Utility Patent Toteboard, U.S. Design Patent Toteboard, and U.S. Trademark Toteboard assembled by the Ant-Like Persistence blog written by Carl Oppedahl of Oppedahl Patent Law Firm LLC.
Andrus was proud to again be an event sponsor of the Milwaukee Bar Association’s Judges Night event held at the Grain Exchange in Milwaukee on February 23, 2015. The popular event allows MBA members an opportunity to interact with members of the federal and state judiciary as well as with other bar members.
In March, Andrus employees once again participated in a Workplace Giving Campaign in support of the United Performing Arts Fund (UPAF).
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