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Fair Use Reference Guide 1.0
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Will Fair Use Survive?

Intellectual Property and Free Speech in the Online World (a report about online service providers and takedown notices)

Major Cases

U.S. Supreme Court Cases

Cases from the U.S. Supreme court are binding precedent, meaning they establish rules that other courts must follow when they have similar cases. However, unless a case is very similar to a Supreme Court case, it may still be difficult to predict the outcome. And because Supreme Court cases typically only look at one or two issues in a given case, they may not look exactly like cases that most people go to court with, where there are several different legal issues — for instance, a lawsuit when it is first filed might make copyright, trademark, trademark dilution, and right of publicity claims. See also First Amendment U.S. Supreme Court cases at the First Amendment Center.

Burrows-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)
The U.S. Supreme Court held that photographs were copyrightable.
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994)
The U.S. Supreme Court held that a commercial parody was likely protected as a fair use. The Court sent the case back to the lower court to see whether too much of the original was taken, but noted that it was not necessary for parodists to restrict themselves to the minimum necessary copying to evoke ("conjure up") the original.
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
The U.S. Supreme Court held that the term "origin" in § 43a of the Lanham Act (the federal trademark law) refers to the manufacturer of the actual goods being sold, and does not include creators of underlying works that those goods embody. Protection for such creators is instead a matter of copyright law. Dastar re-edited and distributed a television series that was in the public domain, without giving credit to Fox, the original producers, or asking their permission. The Court held that Dastar was not liable for misleading consumers about the origin of the goods they were selling, because such a broad reach of "origin" would be inconsistent and unreasonable, creating "a species of mutant copyright law".
Eldred v. Ashcroft, 537 U.S. 186 (2003)
The U.S. Supreme Court affirmed the constitutionality of the 1998 Copyright Term Extension Act (CTEA), which extended the duration of copyright for 20 years. The Court held that Congress could extend the copyright term for existing works retrospectively to maintain historical consistency, even if doing so did not directly "promote the Progress of Science and the Useful Arts". Congress could also reasonably extend the copyright term without violating the "limited times" requirement so long as the term was limited, not perpetual. Finally, the Court held that the CTEA did not violate the First Amendment, although it noted that changes to "the traditional contours of copyright protection" would require courts to scrutinize the law to make sure it did not violate the First Amendment.
Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991)
The U.S. Supreme Court held that alphabetic listings in a phone book were not "original" and therefore not copyrightable, thus rejecting the "sweat of the brow" doctrine that compilations were copyrightable simply because of the effort put into developing them. Rather, compilations of facts are only copyrightable if their selection or arrangement are original enough for copyright; and then the copyright extends only to the selection or arrangement. In the case of Feist, the selection (all relevant businesses in a geographic area) and arrangement (alphabetical) were not "original".
Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985)
The U.S. Supreme Court held that The Nation's publication of a short but critical excerpt from an about-to-be-published memoir, effectively scooping the publisher as well as a magazine that had already bought "first serial rights", was not protected as a fair use. The Court held that the third fair use factor, the amount and substantiality taken of the work, included inquiry not just into the quantity or percentage taken, but its "substantiality", and that where, as here, the "heart of the work" was taken, that weighed against fair use.
Hustler Magazine, Inc. et al v Jerry Falwell, 485 U.S. 46 (1988)
Falwell sued Hustler for intentional infliction of emotional distress stemming from their publication of a parody ad featuring him. Applying the same First Amendment protections used for defamation cases, the Supreme Court held that public figures like Falwell could not recover without showing "actual malice", which requires the publication of false facts with reckless disregard for their truthfulness. The Court upheld the jury's determination that the parody could not "reasonably be understood as describing actual facts," so Hustler could not be liable.
Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938)
Nabisco was unable to keep Kellogg from using the phrase "Shredded Wheat" to describe its product because it was the generic term for both parties' products. However, because the term had acquired secondary meaning connected to Nabisco, Kellogg did have to take reasonable care to distinguish its product from Nabisco's. This case was the beginning of the modern "genericide" doctrine, which recognizes that trademarks lose their source-identifying function once people use the term to generically describe the class of product. Once a trademarked term has become generic, the trademark-holder may no longer enforce trademark laws against those who use the term in its generic sense.
KP Permanent Make-Up, Inc. v. Lasting Impression I. Inc., 543 U.S. 111 (2004) (the "Microcolor Case")
The U.S. Supreme Court held that the possibility of consumer confusion does not preclude a trademark fair use defense, although it can be weighed in that determination. Lasting Impression, a company that developed "permanent makeup" (cosmetic tattoo inks), had a mark on on the term "micro color" to identify its products. KP argued that the term was descriptive, and that KP's use of the term, in its descriptive capacity, was therefore a fair use. The Supreme Court agreed with KP, explicitly stating that "some possibility of consumer confusion must be compatible with fair use ..." where "an originally descriptive term was selected to be used as a mark." The Court also noted the "undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first."
Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003) (the "Victoria's Secret Case")
The U.S. Supreme Court held that the federal trademark dilution claim requires evidence of actual dilution. In 2006, Congress passed the Trademark Dilution Reform Act of 2006 (TDRA) to reverse Moseley.
Stewart v. Abend, 495 U.S. 207 (1990)
The producers of the movie "Rear Window" licensed a story whose author promised them the renewed movie rights when he renewed the story's copyright, but he died before renewing. The plaintiffs then received the renewed rights from his heirs, and sued the producers for distributing their movie during the renewed term. The Court held for the plaintiffs, reasoning that the promise the producers received was only conditional, and that fair use did not protect them because there was evidence of interference with the markets for the story.
New York Times Co. v. Tasini, 533 U.S. 483 (2001)
The U.S. Supreme Court held that independent authors owned the rights of electronic reproduction, where they had not explicitly assigned those rights along with other rights.
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)
The Supreme Court held that Taco Cabana's design and decoration of its restaurant space was entitled to trademark protection of its "trade dress", because the trade dress inherently distinctive, not just descriptive. No showing of a secondary meaning, i.e. a source-identifying function, of the trade dress was required. The Court found no distinction between trade dress — essentially, the product packaging — and other types of trademark protection under § 43(a) of the Lanham Act.
Universal City Studios v. Sony Corp., 464 U.S. 417 (1984) (the "Betamax Case")
The U.S. Supreme Court held that recording broadcast TV programs at home on VCRs (then called "VTRs") for later personal viewing at a time convenient to the user was a permissible "fair use". This has been described as "time-shifting" and analogized to "format-shifting". The Court also held that manufacturers whose equipment was used for copyright infringement would not be secondarily liable for copyright infringement, so long as the equipment was "merely capable of a substantial noninfringing use". Here, because the VCR could be used for a fair use, its manufacturer (Sony) was not contributorily liable for copyright infringement.

 
 

 
 

US Federal Circuit Court of Appeals Cases

Appellate cases may be very influential, but they are not necessarily the rule throughout the country; they are, however, usually the rule for that Circuit's Court of Appeals. Appellate-level cases are also more likely than Supreme Court cases to examine several different legal questions — for instance, both the copyright and trademark claims.

A listing of "cert. denied" means that the U.S. Supreme Court was asked, but refused, to review the case. This does not mean that the Supreme Court has approved the decision or the outcome, and does not give an opinion any extra "weight".

Abdul-Jabbar v. GMC, 85 F.3d 407 (9th Cir. 1996)
Kareem Abdul-Jabbar sued over the unauthorized use of his former name, Lew Alcindor, in an Oldsmobile ad. Based on the common use of celebrity endorsements in television ads and the comparisons in the ad, the court held that the use was probably not a fair use.
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)
Hunting World's use of the term "Safari" to describe its own boots was a fair use because it was used "only to describe ... [their] goods and services", not to garner the good will that Abercrombie & Fitch had developed in their trademarked "Safari" boots.
American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Cir. 1995)
In a copyright case, Texaco's institutional and systematic photocopying of scientific articles for its research scientists was not fair use, because scientists were mostly copying articles for future reference, and so the primary purpose of the practice was to avoid purchasing more copies for the scientists. The possible impact on the market for journal subscriptions was not weighed heavily, though; it was the market that the publishers had previously established to license individual articles that was found to be most affected. The court limited the consideration of such potential licensing revenues to "traditional, reasonable, or likely to be developed markets". The court also noted that, while Texaco was using the copies for research and not directly exploiting them for profit, their use was still primarily commercial because they benefitted financially, even if indirectly.
Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir. 1964)
Mad Magazine printed parody lyrics sung to the tune of Irving Berlin songs. The court found this was a fair use, not copyright infringement, because Mad took the necessary amount to "conjure up" the original and did not provide a market substitute.
Bill Graham Archives v. Dorling Kindersley, Ltd., (2d Cir. 2006)
Reprinting reduced-size versions of concert posters in a pictorial history of the Grateful Dead was a fair use and did not infringe the concert posters' copyright.
Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005)
In a case involving the sampling of three notes, the court ruled that any digital sampling of a copyrighted sound recording was copyright infringement, and that the de minimis rule does not apply to sampling recorded music. (See 17 U.S.C. § 114(b).) Thus, the court advised musicians to "get a license or do not sample". However, the court acknowledged that fair use still applied to claims of copyright infringement by sampling.
Brookfield Communications v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999)
West Coast's use of the term "moviebuff" was held likely to lead to "initial interest confusion" with Brookfield's trademark for "MovieBuff". While the phrase "movie buff" is descriptive, West Coast and Brookfield were close competitors for consumer information about movies. Inclusion of the phrase "moviebuff" in website metatags, therefore, could readily cause "initial interest confusion", leading consumers to click on the West Coast link from a search engine page.
Brother Records v. Jardine, 318 F.3d 900 (9th Cir. 2003), cert. denied 540 U.S. 824 (2003)
An ex-member of The Beach Boys was enjoined from touring under the name "Beach Boys Family and Friends". His defense of nominative fair use failed because he was using the Beach Boys mark to suggest sponsorship or endorsement by the trademark holder.
  • full text (PDF) at Cornell Legal Information Institute
Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002)
Franklin Mint's use of Princess Diana's name and image in marketing its memorabilia about her was held to be a "nominative fair use" under trademark law, because the company used only what was reasonably necessary to identify her and did not imply her endorsement.
Cosmetically Sealed Indus. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997)
Defendant's use of "Seal it with a Kiss!" as an exhortation to actually kiss a promotional postcard was held not to infringe on its competitor's trademark "Sealed With a Kiss" because the words were used in their ordinary descriptive sense.
Dr. Seuss Enterprises L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir.), cert. dismissed, 521 U.S. 1146 (1997)
The Ninth Circuit held that "The Cat NOT in the Hat!", which used the rhyming scheme and images of the Dr. Seuss book, "The Cat in the Hat" to tell a satiric version of the O.J. Simpson trial, was a copyright and trademark infringement, and not protected by fair use. The Court said that the new work was not sufficiently transformative to be a fair use because it had "no critical bearing on the substance or style of" Seuss's work, and therefore was not a parody. The court also found a possible likelihood of confusion with Seuss's trademark, noting that "the claim of parody is no defense where the purpose of the similarity is to capitalize on a famous mark's popularity for the defendant's own commercial use".
Elsmere Music, Inc. v. National Broadcasting Co. (NBC), 623 F.2d 252 (2d Cir. 1980)
The Second Circuit upheld the reasoning of the District Court that Saturday Night Live's parody of "I Love New York" was a fair use because it did not compete with the original. The District Court explicitly denied that the parody had to be targeted at the original work.
Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986)
"When Sonny Sniffs Glue", a parody of the '50s song "When Sunny Gets Blue", was held to be a fair use and not an infringement of copyright. The court reasoned that "conjuring up" a song required more taking from the original than if it were a comic book, and the defendants only took what was necessary in using the first six bars of the song.
BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005)
Downloading for personal use from a peer-to-peer network, with the intent to keep the files indefinitely, constituted copyright infringement. The innocent infringer limitation on damages was not available because the downloader could have gone to a record store to review the copyright notices on individual songs.
Horphag Research LLG v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003)
Pellegrini, which used Horphag's trademarked term "Pycnogenol" in the meta-tags for its website, infringed Horphag's trademark. The Court held that Pellegrini's metatags were not a nominative fair use, because they were attempting to "appropriate the cachet" of the mark.
Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986)
Hustler Magazine sued for copyright infringement when its parody targeting Jerry Falwell was reproduced for fundraising purposes by the defendants. The court said the use was fair because Falwell was entitled to copy the whole work in rebutting a derogatory attack, and the copy did not compete with the original or interfere with potential licensing markets.
Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018 (7th Cir. 1979), cert. denied 447 U.S. 924 (1980)
Gardner's use of Ideal's trademarked size numbers for its electrical connectors would be fair if Gardner confined its use to the description of sizes, but it must avoid using the sizes for their secondary meaning as indicators of the product's origin.
Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003)
Arriba included thumbnails of photos from Kelly's website in its search results. The court found the use fair because it was for a different purpose than the original, therefore transformative; and because it did not harm the markets for the photos.
Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997)
In a copyright case very similar to Mirage Editions the court came to an opposite conclusion and held that mounting prints of works on ceramic tiles did not violate the copyright owners's right to make derivative works. (The District Court opinion is Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D. Ill. 1996).)
Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998)
A movie poster featuring Leslie Nielsen in an imitation of Annie Leibovitz's famous portrait of a pregnant Demi Moore was held to be a fair use, because it commented on the original work by parodying it. While Paramount took more than necessary to "conjure up" the original, the use was still fair because there was no effect on the market value of the original work. Leibovitz's claim of a lost opportunity to license the work to Paramount was unsuccessful because if the use is fair, no license is required.
Lyons Partnership v. Giannoulas, 179 F.3d 384 (5th Cir. 1994)
The Famous Chicken's use of a Barney look-alike in his act at evening baseball games was fair because it was clearly a parody, and children who did not understand that could have it explained by their parents.
Mattel v. MCA, 296 F.3d 894 (9th Cir. 2002)
The song "Barbie Girl" did not infringe Mattel's trademark because the song was critical First Amendment expression. The title had artistic relevance and was not explicitly misleading about the source of the work. The court found no trademark dilution because it held that the "noncommercial use" exception in trademark law applies to everything outside of purely commercial speech.
Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003)
Decision of the U.S. Court of Appeals for the 9th Circuit holding that artist Tom Forsythe's series "Food Chain Barbie", which parodied the Barbie Doll, was a fair use of the copyright in Barbie, and a nominative fair use of the Barbie trade dress. "Food Chain Barbie" did not infringe the copyright in Barbie because it was a parody, and therefore highly transformative, the amount that the artist took was justified, and the infringement had no discernible impact on Mattel's market for derivative uses. The Court particularly noted that "the benefits to the public in ... allowing artistic freedom and expression and criticism of a cultural icon [] are great." The Court found that the use of the Barbie wordmark in the title of the works accurately described the works and their parodic content, did not explicitly mislead as to Mattel's sponsorship of the works, and that the public interest in free expression was not outweighed by the public interest in avoiding consumer confusion. The use of the Barbie trade dress — the doll itself — was a nominative fair use. The artist's use was reasonably necessary to conjure up the product, and he took only so much as was reasonably necessary to reference the work: to create his artistic commentary, he had to use Barbie dolls. The artist was not required to affirmatively disavow sponsorship to avoid causing confusion.
Maxtone-Graham v. Burtchaell, 803 F.2d 1253 (2d Cir. 1986)
Extensive quotation from a pro-choice collection of interviews in a pro-life essay was fair use. The Court looked at all the factors, including the factual nature of the original work and the purpose of the use for commentary, but a key factor was the fact that the original work was out-of-print, and there was therefore no market substitution.
M.B.H. Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50 (7th Cir. 1980)
M.B.H.'s service mark of "I Love You" in radio was not infringed by WOKY's slogans claiming that it loves Milwaukee, because the slogans were clearly using "love" in its ordinary descriptive meaning, even though the word has many meanings.
Mirage Editions, Inc. v. Albuquerque ART Co., 856 F.2d 1341 (9th Cir. 1988), cert. denied, 489 U.S. 1018 (1989).
Cutting pages out of a set of Patrick Nagel prints, mounting them on tiles, and selling them, constituted copyright infringement (a violation of the exclusive right to derivative works). Even though the set of prints was lawfully purchased, the First Sale Doctrine did not protect this use because it was a derivative work.
Munoz v. Albuquerque ART Co., 38 F.3d 1218 (9th Cir. 1994), affirming 829 F. Supp. 309 (D. Alaska 1993)
Munoz applied the Mirage decision (see above) to prints of art that were sold loose. The court ruled that mounting original prints of art, sold loose, constitutes a derivative work.
New Era Publications, Int'l v. Carol Publishing Group, 904 F.2d 152 (2d Cir. 1990)
A critical biography of L. Ron Hubbard that used quotations from Hubbard's work was fair because it was criticism, the original work was published and mostly factual, the heart of the originals were not taken, and the market for a favorable biography was not harmed.
New Kids on the Block v. News Am. Publishing, Inc., 971 F.2d 302 (9th Cir. 1992)
Two newspapers that referenced the music group New Kids on the Block in their online polls were not liable for trademark infringement, since their use was fair. The Ninth Circuit articulated the doctrine of "nominative fair use", which, it said, requires that the use of someone else's trademark be necessary to describe the original product, that only those aspects of the trademark necessary to actually identify the original product be used, and that the borrower not suggest endorsement by the trademark holder.
Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2003)
The Beastie Boys sampled a recording of Newton's with a license for the sound recording but not the underlying musical composition. The court held that the sample did not infringe because the four notes used were a de minimis taking from the composition, i.e. they were not a substantial element of the original.
Packman v. Chicago Tribune Co., 2001 U.S. App. LEXIS 21047 (7th Cir. 2001)
Packman's trademark "the joy of six" was not infringed by the Tribune's promotional memorabilia about the Chicago Bulls' sixth NBA Championship, because the Tribune used the phrase only in a descriptive manner, not to designate the source of its products. The court found that the Tribune acted in good faith even though it had prior knowledge of Packman's claim to the trademark.
Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002)
A former Playboy Playmate of the Year used that trademarked term on her website in the meta tags, title, banners and background for her website. All but the background were found to be nominative fair use because she used only what was necessary to describe herself and did not imply endorsement.
Princeton Univ. Press v. Michigan Document Servs., 99 F.3d 1381 (6th Cir. 1996), cert. denied 520 U.S. 1156 (1997)
A commercial copy service's production of production of "coursepacks", without copyright permission, was infringing. The court rejected the argument that the copy service's use was "educational" because its customers were students, and noted that Princeton University Press had established a market for permissions, and most of the copy service's competitors paid.
Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992), cert. denied, 506 U.S. 934 (1992).
The court found copyright infringement when Koons "translated" Rogers' photograph into a sculpture. Koons's use was not fair primarily because the court did not believe the copied work was targeted for commentary and they believed he acted in bad faith by removing the copyright notice from the photograph before giving it to the contractors making the sculpture.
Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987)
The court stopped the publication of a biography that quoted from Salinger's unpublished letters. The unpublished nature of the letters weighed heavily against the author's claim of fair use, as did the amount taken, which included close paraphrases as well as direct quotations. While the court said that unpublished works would "normally enjoy complete protection against copying", Congress rejected this position by amending the copyright statute to say that "[t]he fact that a work is unpublished shall not itself bar a finding of fair use." (17 U.S.C. § 107.)
G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837 (3rd Cir. 1983). (the "Metamucil" Case)
Metamucil's competitor redesigned their product packaging to mimic the Metamucil container and used the Metamucil logo in the phrase "Equivalent to Metamucil" on it. This infringed plaintiff's trademark because it was likely to confuse consumers, but the court held that some mention of Metamucil on the container would not necessarily be confusing, and therefore would be permissible comparative advertising.
Shakespeare v. Silstar, 110 F.3d 234 (4th Cir. 1997)
Silstar's two-toned fishing rod was held to be a fair use of Shakespeare's registered trade dress because the two tones were the natural colors of the materials the rod was made of, and therefore the use was descriptive. The court further held that a finding of likely confusion would only be a factor in considering fair use, not a complete bar to it, an opinion which was uphold by the Supreme Court in 2004 in KP Permanent Make-Up.
Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968)
Smith's use of the "Chanel #5" trademark in promoting its own imitation perfume did not infringe Chanel's trademark, because it was permissible comparative advertising. The court found that the ability to use another's mark to make a claim of equivalence for a legitimate copy was essential to effective market competition.
Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178 (5th Cir. 1980), cert. denied 450 U.S. 981 (1981)
Shell's use of the term "larvicide" was a fair use of Soweco's trademark "Larvacide" because it was purely descriptive. However, Soweco's trademark was still valid, because while the term was generic for larvae-killing products, Soweco's product was intended to kill more than just larvae, so "larvacide" described only an aspect of the product.
SunTrust Bank v. Houghton Mifflin, 268 F.3d 1257 (11th Cir. 2001)
Alice Randall's The Wind Done Gone, a re-telling of Gone With The Wind from the perspective of Scarlett O'Hara's enslaved Black half-sister, was held to be likely a fair use, not copyright infringement. The Wind Done Gone was a highly transformative parody that was "principally and purposefully a critical statement" on the original work. The court indicated that even if Randall took more from the original work than was necessary to evoke it, such "extraneous" taking was acceptable if it did not negatively affect the value of the original work or its potential derivatives.
Sunmark v. Ocean Spray Cranberries, 64 F.3d 1055 (7th Cir. 1995)
Sunmark's "SweeTARTS" trademark did not entitle them to a preliminary injunction prohibitng Ocean Spray's use of the phrase "sweet-tart" in advertising because the phrase was used in the purely descriptive sense to refer to a characteristic of Ocean Spray's product, and therefore it was a classic fair use. The court noted that had Ocean Spray used the phrase as a trademark, the fair use defense would have been unavailable.
Ty, Inc. v. Publ'Ns Int'l, 292 F.3d 512 (7th Cir. 2002), cert. denied 537 U.S. 1110 (2003) (the "beanie babies" case)
The court overturned summary judgment against the defendant, noting that some of their Beanie Babies books were collector's guides, which are not derivative works and are likely protected by fair use, while others might be just collections of photographs, which are derivative works and unlikely to be fair uses. The court's fair use analysis was focused primarily on the market substitution effect.
Venetianaire Corp. v. A&P Import Co., 429 F.2d 1079 (2d Cir. 1970)
Defendant copied plaintiff's logo for its competing product, only changing the word "Hygient" to "Hygienic". Even though "Hygienic" was descriptive of the product, it was not a fair use because it was used as a trademark, to identify the source, and in such a way as to potentially confuse consumers between the two products.
Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 342 F.3d 191 (3d Cir. 2003), cert. denied 540 U.S. 1178 (2004)
Video Pipeline's use of 2-minute clips of Disney movies on its website was not likely to be fair because the clips harmed the value of the official trailers for those movies. Even though the court saw no direct market for trailers, they accepted that other values, e.g. for promotions and marketing, were harmed. The court also recognized the possibility of a copyright misuse defense, but did not find it applicable to Disney because their behavior was not contrary to the goals of copyright law.
Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001)
Virtual Works' registration of the vw.net domain was a violation of the Anticybersquatting Consumer Protection Act (ACPA) because their acknowledgement of the potential for sale to Volkswagen at the time of registration, combined with their eventual threat to auction it off if Volkswagen did not buy it from them, was convincing evidence of a bad faith intent to profit from possible confusion with Volkswagen's trademark.
WCVB-TV v. Boston Athletic Assn, 926 F.2d 42 (1st Cir. 1991)
WCVB's use of the words "Boston Marathon" in their unlicensed broadcast of the race was a fair use of BAA's trademark because it was a descriptive use and there was no suggestion that BAA had endorsed the broadcast.
Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973)
The National Library of Medicine's photocopying of articles from plaintiff's journals was held to be a fair use largely because the court did not see sufficient harm to the plaintiff's markets, and thought any market harm was outweighed by the benefit to scientific research. The court considered the broad issue of photocopying to be one for Congress, which was engaged in updating the 1909 Copyright Act.
  • full text (HTML) at Stanford University Libraries
Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000), cert. denied, 532 U.S. (2001)
PCG's copying and distribution of WCG's out-of-print book was not fair use despite its non-commercial nature. The court found that the reprint completely superseded the purpose of the original as a marketing tool for WCG and harmed the value of WCG's planned release of a future edition.
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir 1983)
Zatarains' trademark "Fish-Fri" was found to be a descriptive term, but it had acquired a secondary meaning as a trademark, so that secondary meaning could be protected. Defendants' use of the term "fish fry" was fair because they used it for its descriptive meaning, they acted in good faith, and there was no likelihood of consumer confusion. (The Supreme Court, in KP Permanent Make-Up, later held that a use could be fair even if there were the possibility of consumer confusion.)

 
 

 
 

U.S. Federal District Court Cases

These cases are listed because they are influential or new and interesting. District Court cases are not binding, but may be influential, especially if they are the first or best analysis on a particular issue.

Bridgeman Library v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999)
A federal district court held that reproducing color transparencies of public domain artworks was not copyright infringement, because the color transparencies lacked "the modest amount of originality required for copyright protection".
Religious Technology Center v. Netcom On-Line Communication Services, Inc., 923 F. Supp. 1231 (N.D. Cal. 1995)
The Church of Scientology sued an online bulletin board because one of its subscribers had made unauthorized postings on a newsgroup of church documents, some of which had previously been unpublished. The court held that this was not likely to be a fair use because the defendant had used too much of the original works, given that he posted full copies of many of them and did not add much criticism or commentary. After Netcom, ISPs lobbied Congress to create the DMCA§ 512 conditional "safe harbor" against secondary liability" for online service providers.
Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal. 2006)
In a case similar to Arriba Soft, a court enjoined Google's creation and display of thumbnails of Perfect 10's images. The court said that Google's use was commercial because it had an affiliate advertising program, and that Google's use could substitute for Perfect 10's licensing of thumbnails for mobile phones.
Time v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968)
A book using sketches of frames from the Zapruder film was fair because of the strong public interest in understanding the Kennedy assassination and the lack of injury to the plaintiff. The court noted that the book was likelier to enhance the value of the film (and future derivative works) than decrease it.
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