Well, the Supreme Court has done it again.  Under trademark law, a generic term is a term that the relevant purchasing public understands primarily as the common name for particular goods or services.  SOCKS™ for socks, GROCERY STORE™ for grocery store services, and PLUMBERS™ for plumbing services are all examples of generic trademarks.  In fact, “generic trademark” may be a contradiction, because generic terms may never be protected as trademarks.  Trademark protection is also withheld from other ubiquitous terms that fail to identify a single source of goods and services, such as grammatical articles: “The Grocery Store” is treated the same as “Grocery Store,” and “The” does not add any extra trademark significance.  Another example includes various business entity designations, such as Inc., Ltd., or LLC – so “Grocery Store, Inc.” would be just as unprotectable as “Grocery Store” as a mark for grocery stores.  A third example involves top-level domain names for websites (.com, .net, .edu, etc.), with “Socks.com” being treated the same as “Socks.”

However, the Supreme Court recently upended the prevailing wisdom, as well as long-standing Trademark Office policy, by holding that “Booking.com” as a mark for services involving booking hotel reservations is not generic.  The Court rested its decision in part on the fact that only one entity may own a particular domain name at a time.  Only one company can have “Booking.com” for its website, so consumers may identify www.booking.com with a single source of booking services.  The court also refused, as a general matter, to create a bright-line rule that any combination of generic elements is per se generic.  Instead, the Court held that such a combination is generic only if it “yields no additional meaning to consumers capable of distinguishing the goods or services” (emphasis removed).  Because consumers identified “Booking.com” as a source of services, and not merely as a series of generic terms strung together, the combination became more protectable than the sum of its parts.  In essence, the Supreme Court changed the answer from “No” to “Maybe.”

The Court has allowed for the registration of so-called “generic.com” marks.  The opinion also suggests the possibility of registering “Generic, Inc.” or “Generic LLC” marks.  The key is whether the consuming public would recognize the term as a trademark, i.e. as identifying the source of goods and services.  This, in theory, allows businesses that use generic.com or Generic, Inc. to protect such names as trademarks.  It also means that similarly-named businesses need to be careful not to commit trademark infringement. 

We’ve all moaned and wailed and gnashed our teeth about copyright fair use.  But what some people don’t know is that there is also a fair use doctrine in trademark law.  And it’s an entirely different thing than the copyright version, in some ways clearer, and in other ways not.

When it comes to trademark fair use, there are actually two different varieties.  The first is statutory fair use, or “classic” fair use, which allows a third party to use someone else’s trademark to describe the third party’s goods.  The trademarked term must be used (1) other than as a trademark, (2) in a descriptive sense, and (3) fairly and in good faith.  For example: at present, American Airlines is a registered trademark of American Airlines, Inc.  However, it is nevertheless accurate to say that Delta Air Lines and Alaska Airlines are both “American airlines,” that is, they are headquartered in the United States and offer air travel within the United States.  In this context, it is not wrong for Delta to describe itself as an American airline.

Fair use is a defense even if some consumer confusion arises.  The Supreme Court has stated that risk of confusion “is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well-known descriptive phrase.”  KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004).  However, the degree of consumer confusion may have an impact on whether the use was truly made “fairly and in good faith.”

The other type of fair use is called “nominative fair use,” and it consists of using a third party’s mark to refer to that third party and its goods and services.  This is the case, for example, in cases of comparative advertising (“Four out of five dentists prefer the taste of Acme-brand soda over Coco-Cola!”).  If the statements are accurate, then the Acme may have a defense in the event that the Coco-Cola Company were to sue.

However, nominative fair use is a judicially-created defense, and those courts that recognize the defense do not agree on how to apply it.  To date, the Third Circuit is the only federal appellate court that styles nominative fair use as an actual affirmative defense.  The Ninth Circuit, by contrast, applies a three-factor test that replaces the standard likelihood-of-confusion analysis: (1) The use of the mark is necessary to describe both the plaintiff’s and the defendant’s goods or services; (2) Only so much of the plaintiff’s mark as is necessary was used;  (3) Defendant’s conduct or language reflects the true and accurate relationship between the products or services.

Conversely, the Fifth Circuit uses a two-factor test (omitting the Ninth Circuit’s first factor) that does not replace likelihood of confusion, but is used in conjunction with it.  The First Circuit, for its part, has recognized the principle underlying nominative fair use but has not endorsed any particular formulation.  The Seventh, Eighth, Tenth, and Eleventh Circuits have never addressed the issue at all, although the Northern District of Illinois (within the Seventh Circuit) has shown an openness to considering it.

Ultimately, like copyright fair use, fair use in the trademark context is a fact-dependent inquiry. 

If you get sued for copyright infringement, the case may all come down to an affirmative defense of fair use. A lot of people on the Internet, and even in real life, think that they know what fair use is. Most of them are wrong. It’s time to debunk some of the popular myths about fair use.

“Parody is a fair use.” This is incorrectly stated. First, fair use is a multi-factor balancing test, in which judges or juries weigh a number of relevant issues. The first of those factors is “the purpose and character of the use.” This is sometimes stated as analyzing whether the work is “transformative,” and parody, when done properly, is a transformative use. So, if a defendant has actually created a parody, then this factor will weigh in favor of a fair use defense. However, it is only one factor among many.

“I didn’t make any money, so it’s okay.” Unlike the first myth, this is just flat-out wrong. An additional part of the first factor looks at “whether the use is of a commercial nature or is for nonprofit educational purposes.” So, not making money isn’t the issue, nor is intentionally not making money. Rather, a defendant must be not making money for the right reasons. And even then, it’s only a help to a fair use defense, not a guarantee.

“It’s just a history book. No one can copyright history.” The second fair use factor looks at “the nature of the copyrighted work.” Works that are more creative, like symphonies or science fiction novels, are more immunized from fair use than biographies or science textbooks. Nevertheless, while it’s true that facts, in themselves, are not copyrightable, the way that people recount those facts is protectable by copyright. No two history books are going to look exactly alike. And if they do, then there’s probably a lawsuit involved.

“You can copy 10 seconds/5 lines/etc. without it being copyright infringement.” With even a moment’s thought, this is silly on its face. A creative video may only be 10-20 seconds long. A poem may be five lines long – or fewer. They are still perfectly valid as copyrightable works. But even in longer works, there is no “safe” amount that one may copy and have a guaranteed fair use defense. The third fair use factor is “the amount of the portion used in relation to the copyrighted work as a whole.” So, yes, all else being equal, taking 10 seconds from a 2-hour movie is less bad than taking 10 seconds from a 30-second video. However, not all 10-second increments are created equal, and copying really important moments, however short, can be very bad for a fair use defense.

“The copyright owner wasn’t doing anything with it, anyway.” Again, there is a hint of accuracy here. The fourth factor is “the effect of the use upon the potential market for or value of the copyrighted work.” In essence, the court looks at the harm to the copyright owner’s bank account. But the focus is not only on actual uses in the present, but also on likely market avenues in the future. If the copyright owner could easily enter a particular market, then his failure to do so is not likely to be counted against him. Also, one never knows what a publisher or studio has planned behind closed doors. In today’s entertainment industry, reboots and remasters abound.

Fair use is a complex, multi-faceted subject not given to short, easy answers. Make sure you have all of the relevant information before taking action.

Let’s face it, music rights are complicated. Yes, each different kind of work listed the Copyright Act – from paintings to movies, and even architectural plans – has its own separate wrinkles and special provisions. However, music rights have by far the most complicated set of rules surrounding them. Drawing from both law and traditional industry practices, music licensing presents its own special sort of labyrinthine challenges. 

First, it’s important to note that the Copyright Act distinguishes between musical works and sound recordings. The copyright in the musical work covers the music and any accompanying lyrics. It’s sort of the abstract version of the song, the kind that would appear on sheet music, indicating what notes to play and when to play them. By contrast, the sound recording covers, as the name implies, the contents of a recording, such as an MP3 file. The copyright extends only to the sounds that are captured in the recording. Therefore, it is not copyright infringement of a sound recording copyright to record your own version of a song that closely mimics the way that someone else played it. Unless the sounds were pulled directly from, say, the data in an MP3, there is no infringement. 

So, now you’ve found a song that you want to use. Where do you go? Well, that depends on what you want to do with it. For example, if you just want to listen to a song in the privacy of your own home, then just go buy a copy. The copyright holder has no power to regulate this kind of “private performance” of musical works. However, if you want a “public performance,” whether it’s playing music at a café or performing at a concert, then you need to license the “performing rights.” Typically, performing rights are licensed by a performing rights organization, or PRO. The big three are ASCAP, BMI, and SESAC. However, artists are not required to sign up their music with a PRO, and for those who haven’t, the rights will have to be negotiated directly from the copyright holder. 

If, instead, you want to record a cover version of a song, then you need a “mechanical license,” so named because they derive from the days of player pianos. A mechanical license grants the right to record a new version of an existing song onto a record, CD, MP3, or the like (the technical term is “phonorecord”). This is not the right to perform the song live, but to perform it in the studio and then sell copies. The mechanical license is also sometimes called the Harry Fox license because a company called the Harry Fox Agency handles a large number of mechanical rights. It is also possible to obtain a compulsory license to mechanical rights via the process specified in § 115 of the Copyright Act (17 U.S.C. § 115), if you really love to do extra work. 

However, if you plan to include a piece of music in an audiovisual work (such as a film, a TV broadcast, or a video game), then a “sync license” is required, short for music synchronization license, because such a license is needed anytime the music is synched up to any sort of visual component. Any. Karaoke machines? That’s a sync license. Background music for a YouTube stream? That’s a sync license. Using music in an ad? That’s a sync license. Those clips of pop songs that play right before a basketball game cuts to commercial break? Oh, you better believe that’s a sync license. Unfortunately, there is no central clearinghouse for sync rights. Music publishers often hold these rights, but not always. There are agencies that purport to offer sync licenses, but they may not have the rights to the song that you want. Otherwise, you have to track down the copyright holder. 

Then there are “grand rights” (because everything up to now has just been small rights, apparently). Grand rights come into play when including a musical work in a dramatic performance, such as a stage play or ballet performance. Normally, dramatic works, by legal definition, include all accompanying music. So, all of the songs in Phantom of the Opera are already included when you get the rights to put on a production of Phantom. Grand rights come into play when incorporating an existing song into a new dramatic work. The “jukebox musicals” of recent years – such as All Shook Up (Elvis) or We Will Rock You (Queen) – are examples of when a grand rights license is needed. Like with sync licenses, there is no one-stop shop for grand rights. The best bet is to contact the publisher or the composer. 

Please note that this is just the bare-bones basics of some of the licensing that goes on. There are further issues and additional industry customs that can further muddy the Muddy Waters. However, an important first step is knowing what you need and where you might be able to find it.

Crowdfunding platforms like Kickstarter and Indiegogo can be useful in bringing ideas to life.  Whether it’s video games or clothing, inventions or events, crowdfunding can help make dreams a reality.  However, when looking at what some campaigns have budgeted for legal, the answers can range from “Not nearly enough” to “Budget for what, now?”

So, this raises the question: what *is* the proper amount to budget for legal on a crowdfunding campaign?  And while we hate to give the “It depends” answer…well, it depends.  It depends on a number of things.

There will be a small number of fairly standard costs, such as trademark clearance for the name of the product or service.  However, even standard costs may vary depending on the circumstances.  For example, is there a company set up yet?  What agreements, if any, exist among the core members of the project team?  What sort of things can the core team do (coding, music, marketing, etc.) and what will have to be contracted out?  Setting these things up takes time and money.

And it’s not always just a matter of getting something, anything in place.  Sometimes, a bad agreement (especially one pulled from the Internet without attorney review) is worse than having no agreement at all.  Depending on how big the mess is, it can be far more intensive and expensive to fix a messy, half-baked contract than to start from scratch.

Costs will also vary depending on the type of project.  Manufacturing technological gadgets may require patent protections that aren’t warranted when selling T-shirts.  Anything with computer code can be covered by copyright, as can music and books.  Planning to hold a convention for cat lovers?  Not only will there be negotiations with the venue, but liability waivers and codes of conduct for the attendees.

Also important: what kinds of rewards are being offered?  “A copy of the movie and maybe a digital download of the soundtrack” will require far less legal attention than “design a boss monster and a secret dungeon in our video game.”  Not to mention things like “VIP access to the opening night gala in Honolulu.”  The more exotic the reward tier, the more essential the fine print.

The point is, these things need to be figured out beforehand.  An ounce of prevention is worth a pound of litigation.  Having these crucial discussions beforehand will give everyone an idea of what things will cost, and might even bring unexpected issues to light.  Sitting down and creating a proper legal budget not only sets realistic expectations, but helps to show potential backers and investors that you have thoughtfulness and foresight to see things through to the end.