Fair Use

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UIC John Marshall’s Center for Intellectual Property, Information and Privacy has another excellent program, this one focuses on two key copyright issues – fair use and copyright data protection. Every practitioner can use some time working through the complexities of fair use. This program promises to be excellent. It will be led by McDermott Will’s…

Illinois Tamale Co. v. El-Greg, Inc., No. 16 C 5387, Slip Op. (N.D. Ill. Mar. 29, 2018) (Kennelly, J.).

Judge Kennelly denied plaintiff Illinois Tamale’s and defendant El-Greg’s cross-motions for summary judgment in this Lanham Act dispute regarding Illinois Tamale’s PIZZA PUFFS trademarks.

As an initial matter, the Court refused to consider any crowd-sourced…

Sorenson v. WD-40 Co., No. 12 C 50417, Slip Op. (N.D. Ill. Sep. 9, 2014) (Kapala, J.).

Judge Kapala granted defendant WD-40 summary judgment as to plaintiff’s Lanham Act and related state law claims regarding plaintiff’s THE INHIBITOR and related design marks (the “Inhibitor Marks”) and WD-40’s Specialist product line.

WD-40’s use of the …

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 7, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant MBHB’s motion to compel document production and request for admission responses in this copyright case involving alleged infringement based upon MBHB’s use …

Timelines, Inc. v. Facebook, Inc., No. 11 C 6867, Slip Op. (N.D. Ill. April 1, 2012) (Darrah, J.).

Judge Darrah denied defendant Facebook’s summary judgment motion arguing that plaintiff Timeline’s TIMELINE trademark was generic or descriptive, and that Facebook’s use of the mark was fair use.  Timelines presented evidence that it used TIMELINE as …

Bryan Cave’s art law blog has an excellent post by Jonathan Pink discussing eleven copyright myths — click here to read it. Every corporate executive and small business owner needs to be aware of how the copyright laws impact their business, especially the intersection of copyright law and the internet. I developed a presentation as an element of a corporate copyright compliance program and I am amazed by the results every time I give the presentation to a new corporate division or small business. People are routinely, and largely accidentally, violating copyrights. But the worst part is that a little education, such as my presentation, followed by a few days of generally simple, inexpensive fixes resolves most accidental copyright infringement issues and provides a significant measure of protection for any business, large or small.
Pink’s eleven copyright myths, written in multiple choice format, are a great start toward improving copyright compliance and they are written both humorously and in plain language. Here are two of my favorites:
Myth 4:
If it’s on the Web, it’s free for the taking.
a. No. Stealing is stealing.
b. Sure, why not?
c. This is true, but only if I use a 28KB modem, and the copyright expires before I finish downloading it.
The answer is a. Unless the work falls under a generally recognized exception to the copyright law, if it’s on the Web, copyright protection attaches, and you can get hit with an infringement lawsuit for misappropriating it. See 17 USC §501(a). Nothing about the Web strips otherwise protectable work of its copyright protection.
Myth 5:
Copying just a little bit does not constitute copyright infringement.
a. Maybe.
b. Maybe.
c. Maybe.
The answer is all of the above. Though the “fair use” doctrine allows for some limited copying of a small portion of some works-for example, quotes for use in educational or scholarly works, criticism, parody, and news reporting-there is no bright-line rule as to how much is too much.
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That means that if you take your kid’s Darth Vader action figure, give it Barbie-like hair, and dress it in platform shoes, you’re going to get hit with an infringement action when you try selling it at Toys-R-Us as Ella Vader. You also risk getting hit with a morals charge.
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Continue Reading Copyright Myths Debunked

Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).
Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises’ (“LEYE”) motion for a temporary restraining order against defendants’ use of a banner reading “Let us be!” flanked by images of lettuce heads (the “Banner”) on a building in which defendants plan to open a salad bar restaurant to be named “Lettuce mix.” LEYE filed this suit seeking the removal of a “Lettuce mix” sign (the “Sign”) defendants placed on the same building. As an effort at resolving the dispute, defendants replaced the Sign with the Banner. After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE’s LETTUCE trademarks used in connection with LEYE’s operation of more than seventy restaurants throughout the Chicago area and nationwide. The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE’s likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted.
The Court held that defendants’ Banner was a fair use of LEYE’s trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims. Defendants were not using the Banner’s combination of the phrase “Let us be!” (which the parties agreed sounded like “Lettuce”) and the lettuce images as a service mark. “Lettuce mix” may have been a service mark, but “Let us be!” and the lettuce images were used to draw attention to this case and were meant to say “Hey, Lettuce Entertain You, leave us alone!” And the use of the “let us”/lettuce pun was intended to parody LEYE’s use of “lettuce” in place of “let us” throughout LEYE’s website and other materials. The Court explained that the Banner was not used to identify defendants’ services, but to make a statement of protest:
The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, “Leave us alone!” Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.
The Court also noted that this decision had no bearing upon the question of whether defendants’ Lettuce mix restaurant name infringed LEYE’s LETTUCE marks.
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Continue Reading Protest/Parody Use of Mark is Fair Use

Americash Loans, LLC v. AO Ventures, LLC, No. 08 C 5147 (N.D. Ill. Mar. 19, 2009) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan denied defendant AO Ventures (“AOV”) motion to dismiss plaintiff Americash Loans’ Lanham Act and related state law claims. Americash Loans alleged that AOV infringed Americash Loans’ “Americash Loans” mark by advertising confusingly similar mark on AOV’s website. First, the Court held that Americash Loans’ prior settlement of a trademark dispute with a third party did not preclude this suit. The prior suit involved a different mark, “Americash,” and Americash Loans did not allege that AOV was acting as an agent of the third party involved in the earlier settlement when it allegedly used the infringing marks.
The Court also held that the fact that AOV was not accused of using the exact mark, but a confusingly similar mark was not grounds to dismiss the complaint. The Court noted that customer confusion between similar marks was a recognized part of trademark infringement analysis and that suits were routinely filed alleging infringement based upon the use of marks that were not identical to the asserted trademark.
Further, the Court held that whether AOV’s display of a third party’s advertisement was a use of the accused mark was a question of fact that could not be resolved by a Rule 12 motion. Finally, the Court held that it could not decide whether AOV’s alleged infringement was a nominative fair use of Americash Loans’ mark because any fair use analysis involves questions of fact.
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Continue Reading Fair Use & Similarity of Marks Not Issues for Motion to Dismiss

Here are some interesting IP-related posts and because everyone (at least in Chicago) still seems to have last week’s election on their minds, the first is election related:
* The MTTLR Blog’s Dorothy Eshelman has an interesting post on whether the use of debate clips by, among others, the candidates involved is fair use — click here to read it. I agree with Eshelman’s conclusion that it is probably not fair use. And I agree that debate footage should be dedicated to the public domain, at least on a limited basis. It would be an easy matter for debate commissions to require that for the privilege of filming the debate networks agree that their footage be available in the public domain so long as it is not used near in time to the debate itself (perhaps within an hour) and so long as clips are limited to no longer than a few minutes or one question and set of answers.
* The MTTLR Blog’s Sherri Nazarian looks at the application of the Computer Fraud and Abuse Act (“CFAA”) to hacking VP candidate Sarah Palin’s email and argues that the CFAA needs to be modernized — click here to read the post. Nazarian explains that the email hacking was not enough to trigger the CFAA, enacted in 1984. Perhaps it is time to update the 24 year old CFAA to meet the massive changes in technology.
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Continue Reading Post-Election IP News

Matteo v. Rubin, No. 07 C 2536, Slip Op. (N.D. Ill. Dec. 3, 2007) (Kendall, J.).
Judge Kendall denied defendant’s motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff photographed defendant’s daughter’s wedding pursuant to a contract between plaintiff and defendant’s wife. Defendant was allegedly unsatisfied with plaintiff’s photographs and, therefore, allegedly created numerous website regarding plaintiff’s photographs including defamatory comments about both plaintiff and his photographs. The Court held that plaintiff stated a claim for copyright infringement because he pled that he owned copyrights in his photos and that defendant infringed those copyrights by posting the pictures on websites. Plaintiff was not required to plead that defendant received any economic benefit from his alleged infringement. Additionally, plaintiff did not have to register his copyright before defendant’s allegedly infringing acts. Finally, the Court held that defendant’s fair use defense was not grounds for dismissal. Fair use is a factual inquiry best resolved on summary judgment or at trial.
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Continue Reading Economic Benefit to Defendant Not Required for Copyright Infringement