What’s fair in copyright and trademark

April 10, 2019
Patterson Thuente IP

Alleged infringement of technical standards raises questions

Thousands of private organizations produce technical standards, some of which are incorporated into laws by federal, state and local governments. A federal court of appeals recently considered whether these organizations can invoke copyright and trademark laws to prevent the unauthorized copying and distribution of such works. The court, however, failed to provide a conclusive answer, focusing instead on fair use matters.

The infringement case

Standards Developing Organizations (SDOs) meet regularly to debate best practices in their respective areas and issue or update technical standards. When an SDO publishes a standard, it generally secures a copyright registration.

In some cases, federal, state and local governments have incorporated these standards into law (for example, in building or electrical codes). They often do so “by reference.” This means that, rather than spelling out a standard’s requirements in the text, the code references the standard and directs interested parties to consult it.

Public.Resource.Org, Inc. (PRO) is a nonprofit dedicated to making government materials more widely available. It purchased copies of some incorporated standards, scanned them into digital files, and attached cover sheets explaining PRO’s mission and the standard’s source. It then posted them to a public website.

After discovering their standards were freely available on PRO’s website, several SDOs sued the organization for both copyright and trademark infringement. The trial court ruled in the SDOs’ favor and issued permanent injunctions prohibiting PRO from all unauthorized use of the standards and trademarks at issue. It found that none of PRO’s copying qualified as fair use, nor did its reproduction of one of the SDO’s trademarks.

PRO appealed to the U.S. Court of Appeals for the D.C. Circuit. The appellate court held that the lower court had misapplied the fair use doctrine under both the Copyright Act and the Lanham Act (the federal trademark law).

Fair use and copyright

The Copyright Act allows the fair use of a protected work for purposes such as criticism, comment, news reporting, teaching, scholarship or research. Courts consider four factors to determine whether a use is fair:

  1. The purpose and character of the use (including whether the use is commercial or for nonprofit educational purposes),
  2. The nature of the copyrighted work,
  3. The amount and substantiality of the portion used in comparison to the work as a whole, and
  4. The effect of the use on the potential market for, or value of, the work.

The appellate court reviewed each of the factors and found that PRO’s copying of certain standards could qualify as fair use. But instead of making a finding of fair use, it sent the case back to the trial court to further develop the record and weigh the factors for PRO’s use of each standard.

Fair use and trademark

Under trademark law, “nominative” fair use occurs when the defendant uses the mark to identify the plaintiff’s own goods and makes it clear to consumers that the plaintiff is the source of goods. For example, an auto repair shop may run an ad using the trademarked names of the kinds of vehicles it repairs. This type of use of a trademark isn’t infringing.

PRO argued that its use of SDO’s trademarks was permissible nominative fair use. The trial court rejected this claim because it had already determined that consumer confusion over the source of the standards was likely. The appellate court disagreed and directed the lower court to consider the factors relevant to nominative fair use.

The unanswered question

After all the fair use discussion, the court declined to settle the overarching issue as to whether standards retain their copyright after they’re incorporated by reference into law. The court noted that, if PRO and others use incorporated standards in a manner that doesn’t constitute fair use, the question of infringement will again be in play. 

American Society for Testing and Materials v. Public.Resource.Org, Inc., No. 17-7035, July 17, 2018, D.C. Cir.

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