Is “Fair Use” Stretched Too Far at Times?

In the simplest of terms, “fair use” refers to the defence against any claim of copying of a copyrighted or trademarked material for a limited and “transformative” purposes, such as to comment upon, to criticize, or for parody purposes.

There are four factors in deciding if there is actually “fair use” and these were decided in the well-known 1994 case of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) namely:

1] the purpose and character of use
2] the nature of the copyrighted work
3] the amount and substantiality of the copyrighted portion taken
4] the effect of the use upon the potential market for the work’s value

The classic example of fair use in trademarks is the use of another’s trademark in its primary descriptive meaning. This means that the trademark also describes a person, place or characteristic of the goods and services. In the interest of free competition, the use typically allows for some confusion. This is often referred to as Classic Fair Use. On the other hand, Nominative Fair Use is defined as the use of someone else’s trademark to refer to the trademark owner’s goods and services. This could be used when comparing the quality of products, or for example a car mechanic that fixes a specific brand of car and wants to advertise that service.

On 7 February 2014, comedian Nathan Fielder, for the fifth episode of the second season of the American television series Nathan for You, sets out to assist the owner of a struggling coffee shop by rebranding the store and making it almost identical to Starbucks, except it was called “Dumb Starbucks”[1] and he put the word “Dumb” in front of the name of every beverage in the store. Fielder argued that he was allowed to do this as he was parodying Starbucks while operating as an art gallery and as such, his actions were legally allowed. Starbucks responded by issuing a statement that while they appreciate the humour, Dumb Starbucks “cannot use our name” but did not proceed with any legal action against Nathan. Regardless, the set-up was shut down by the Los Angeles County of Public Health as it was operating without a valid public health permit within a couple of days of operation.

In the decided case of Philpot v. Media Research Center No. 1:17-cv-822 (E.D. Va. Jan. 8, 2018), a case which concerned the use of copyrighted photos of the Plaintiff by the Defendant in their news and media reports without attributing the owners, the court ruled in favour of the Defendant, in that the use of the photographs were indeed fair use whereby they were transformative as they were plainly different from the Plaintiff’s intended use of the photographs by virtue that the Defendant used the photos for commentary purposes and published them in a different context than the original, and the photographs were not commercial in nature as the Defendant received only minor amounts of revenue and donations from the articles where the photographs were mentioned.

Further in the case of Brammer v Violent Hues Productions, the US District Court accepted the defence of fair use based on factors that appeared to have stretched the normal ordinary meaning of fair use. The District Court held that the use of the photograph was “transformative” based on a few factors, namely its purpose and that no revenue was earned from it and also that the photograph was simply a depiction of a location or place. These arguments appeared to have stretched the meaning of “fair use” and if used as a precedent, could lead to the dilution of intellectual property rights by its holders. Not surprisingly, the US Court of Appeals reversed the District Court’s grant of summary judgement upon revisiting the four-pronged test of the factors determining fair use and deciding that the use of Brammer’s photograph by Violent Hues Productions failed on all counts, in that it was used for commercial purposes, was not transformative, comprised an essential part of the photograph, and affected Brammer’s ability to collect earnings from the said photograph. Interestingly, the Appeals Court went further and distinguished the case from the use of social media sites that are “specifically designed for participatory sharing of content[1]”, stopping short of saying whether such sharing can be considered “fair use”.

So this really brings us to the gist of the matter, which is that the defence of fair use has been shown to be stretched in its interpretation at times. This allows for people to circumvent trademark laws and copyrights. However, if one looks into the case laws as well as the jurisprudence on this matter, it is clear that the courts look into them at a case-by-case basis.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.