Nonprofits and the Fair Use Defense

It is a common misconception that nonprofit organizations have special rights to use copyrighted works without permission. This misconception arises from the first fair use factor, which considers “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”  As explained below, “nonprofit educational purposes” is very narrowly defined. Even if a use is actually included in “nonprofit educational purpose” the use may not qualify as a fair use if the other fair use factors weigh against fair use. While the law does not generally grant nonprofit organizations the right to use copyrighted works as a fair use, the U.S. Copyright Act does grant several statutory exemptions in limited situations.

The “nonprofit educational purposes” element of the first fair use factor examines the character of the use, not the status of the organization using the work. This is not a blanket exemption that confers fair use protection to any work used by a nonprofit organization. An organization’s status as a nonprofit will rarely help it qualify for fair use. Most uses of a copyrighted work will be of a commercial nature, even uses by nonprofits where no fee is charged. During the drafting of the 1976 U.S. Copyright Act, Congress considered granting nonprofit organizations an exemption from U.S. copyright laws or creating a presumption that nonprofit use was fair use. Instead, the final version of the Copyright Act included “nonprofit educational purposes” as a component of the first fair use factor to allow for a very limited range of nonprofit uses. 

A “nonprofit educational purpose” has a narrow meaning. Case law is inconsistent about what qualifies as a “nonprofit educational purpose,” but it generally involves use for scholarship or research or use in a classroom setting on works unavailable in the commercial market. However, just because a work is used in a classroom does not mean that the use will qualify as a “nonprofit educational purpose.”  A school district recently lost a multi-million-dollar judgment for making copies of a study guide and distributing them through its classrooms. Any use of a work by a school or for any other nonprofit educational purpose should be evaluated by all four fair use factors, which could cause the fair use analysis to weigh against fair use.

Nonprofit organizations should not conclude that just because they are a “nonprofit” that any use of a copyrighted work is a fair use. In most situations, use of a copyrighted work by a nonprofit will not be a fair use. Before using a copyrighted work, nonprofit organizations should obtain the written consent of the copyright owner or obtain competent legal advice concluding that the use is a fair use or qualifies for a statutory exemption. We discuss the statutory exemptions in more detail in a separate article.

This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.

©2020 Bea & VandenBerk

Brexit Changes European Trademark Registration Strategies

With the United Kingdom’s withdrawal from the European Union becoming official on January 31, 2020, trademark owners should evaluate their trademark registration strategies to ensure their marks remain protected throughout Europe. While the U.K. was a member of the E.U., trademark owners were able to protect their marks in the U.K. and all other E.U. member states with a single, European-Union trademark registration. The U.K.’s withdrawal will not bring any immediate changes to the trademark registration process, as E.U. trademark registrations will continue to be valid in the U.K. until the end of the transition period on December 31, 2020.

After this transition period, E.U. trademarks will no longer confer protection in the U.K.  However, all valid trademark registrations in the E.U. as of December 31, 2020 will be accorded trademark registrations in the U.K. This eliminates the need to file separate trademark applications in the E.U. for those owning valid E.U. registrations. Trademark owners will still need to maintain those registrations in the same manner as any other U.K. registration. After December 31, 2020, E.U. registrations will no longer confer trademark protection in the U.K. To protect a new mark or to expand protection for an existing mark, trademark owners will need to file separate applications in the U.K. and the E.U. to register their marks throughout the rest of Europe.

We have worked with legal counsel throughout the world to help clients protect their trademarks.  Please contact us if you would like our assistance registering a trademark in the U.K. or E.U.

This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.

©2020 Bea & VandenBerk

Supreme Court to Hear “Not-So-Generic” Case Regarding Generic Trademarks

The U.S. Supreme Court will hear a case that could have profound implications for owners of generic marks.  In United States Patent and Trademark Office v. B.V., the U.S. Supreme Court will decide if adding the term “.com” to a generic word creates a protectable trademark for an online business.  This case arose when the U.S. Patent and Trademark Office (USPTO) refused registration of “” as a trademark for an online travel website.  The USPTO determined that the word “Booking” was generic for hotel reservation services.  Adding the top-level domain “.com” to the generic word, the USPTO reasoned, did not create a distinctive mark because top-level domains do not ordinarily serve a source-indicating function.

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Supreme Court to Decide Epic 10-Year Copyright Infringement Case

The “copyright lawsuit of the decade” is finally coming to a conclusion, as the U.S. Supreme Court granted certiorari to Google LLC v. Oracle America, Inc.  The Court’s decision is immensely important to the computer software industry since the Court will decide if a software application programming interface (API) is protected by copyright. The Court may, for the first time in 25 years, address the copyright fair use doctrine by deciding if use of an API is a fair use. This case has a long and convoluted history, but it started in 2010 when Oracle sued Google, alleging that Google committed patent and copyright infringement by using Java application programming interface declarations in its Android platform. The patent claims were resolved, leaving the copyright infringement claim. After several rounds of decisions, the U.S. Court of Appeals for the Federal Circuit held that APIs were protected by copyright and that Google’s use of them did not constitute fair use. Google appealed to the Supreme Court seeking reversal of those decisions.

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Proposed Legislation Would Create a Small Claims Court for Copyright Disputes

The U.S. House of Representatives recently passed legislation that would create a small claims court for copyright disputes.  If enacted into law, the U.S. Copyright Office would house a dispute resolution system known as the Copyright Claims Board as an alternate forum to resolve copyright disputes when the amount in controversy is less than $30,000. Under the legislation as currently worded, the Copyright Office would be responsible for setting up a filing system, enacting rules to govern proceedings, and appointing panels of copyright experts, called Copyright Claims Officers, to decide disputes.  Many details still need to be worked out, but all disputes would be decided based upon written submissions and Internet-based communications with no in-person appearances in court. Intellectual property practitioners are likely familiar with the Trademark Trial and Appeal Board (TTAB), which decides federal trademark registration disputes.  Trials before the Copyright Claims Board could share similarities with the TTAB.

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Beware of Copyright Trolls

Have you ever copied a photograph from a website thinking that the photograph was free to use?  You may have thought this because the photograph did not contain a watermark or copyright notice. Maybe the photograph claimed that it was “royalty free,” and you assumed that meant it was free to use for no charge.  Or, perhaps you were aware that using the photograph was not authorized, but you figured it would never be discovered. These are common mistakes that can prove to be costly.

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New Rule Requires U.S. Counsel to Represent Foreign Trademark Applicants and Registrants

The U.S. Patent and Trademark Office (USPTO) issued a new rule that requires foreign trademark applicants and registrants to be represented by an attorney licensed in the United States. Under the U.S. counsel rule, codified at 37 C.F.R. § 2.11(a), any trademark applicant or registrant domiciled outside of the United States must retain U.S. counsel to file any document before the USPTO.  This rule change is an effort to combat the unauthorized practice of law as well as the use of fake or suspicious specimens. The rule change was prompted by the USPTO’s examination of foreign trademark applications. In some cases, foreign applicants filed hundreds of trademark applications in their own names.  After reviewing those applications, the USPTO discovered that those applications were, in fact, filed by foreign practitioners.

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Avoid Copyright Infringement

How to Properly Use Music and Images During Worship Service

Churches today use a variety of intellectual property during worship services, such as music, photographs, quotes, and video clips.  These materials can be important to a worship service by increasing engagement, illustrating a point, or adding extra meaning to the service.  However, most materials are protected by copyright laws.

Using intellectual property without the permission of the copyright owner or other legal authority is copyright infringement and can result in significant monetary damages.  Churches need to know the legal issues that apply to using intellectual property so they can take steps to get permission when needed and avoid copyright infringement.    Continue reading “Avoid Copyright Infringement”

Pilot Program Updates Trademark Registrations with New Technology

What do phonograph records, cassette tapes, CDs, and downloadable mp3 files have in common?  They are all products whose trademarks are registered in class 9 (class 9 covers scientific and electronic goods).  They also embody sound recordings on media that are in varying stages of obsolescence.  Forty years ago, a record company may have sold music on phonograph records but today sells them as downloadable mp3 files.  The product, music, is the same – only the format has changed. Continue reading “Pilot Program Updates Trademark Registrations with New Technology”

Copyright Office Announces Requirements for DMCA Protections

The Digital Millennium Copyright Act (DMCA) provides valuable liability protections for service providers and website operators.  The DMCA protects service providers and website operators from liability for copyright infringement due to content posted by third parties.  To take advantage of the DMCA’s safe harbor protections, website operators must designate an agent to receive notices of claimed copyright infringement (DMCA Agent).  The name, address, phone number, and e-mail address of the DMCA Agent must be posted on the website and also submitted to the Copyright Office. Continue reading “Copyright Office Announces Requirements for DMCA Protections”