USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Acquiescence • Acquiescence is available as a defence when the plaintiff undertakes some affirmative conduct that assures the defendant that the plaintiff has no objection to the use and then delays in making objection to the defendant’s mark. Estoppel • The plaintiff engaged in intentionally mislead - ing representations concerning its abstention from suit, and the alleged infringer detrimen - tally relies on the copyright owner’s deception and is prejudiced. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) For both copyright and trade mark, there is a “fair use” exception that allows limited use of a copyrighted or trademarked material without the owner’s consent. See 9.1 Defences to Trade Mark Infringement for the discussion of trade mark parody and fair use. Section 107 of the Copyright Act codifies “fair use”, allowing certain uses of copyrighted mate - rial without permission. There are no uses that are per se “fair”, but the Copyright Act expressly recognises that unauthorised use for purposes such as criticism, comment, news reporting, teaching, scholarship or research may qualify as fair. Determining fair use requires assessment of at least these non-exhaustive factors: • Purpose and character of the use, including whether use is commercial or is for nonprofit educational purposes. In general, “transform - ative” uses are more likely “fair”. • Nature of the work, including whether the work is published or unpublished and wheth - er it is more factual or more creative.
• Amount and substantiality of the portion used in relation to the work as a whole. In general, the larger the amount of the work or more qualitatively important, the less likely it will be fair. • Effect of the use upon the potential market for or value of the work. If the use is likely to sub - stitute for the copyrighted work or harm the market, this factor is likely to weigh against fair use. Parody is “use of some elements of a prior author’s composition to create a new one that, at least in part, comments on [and mimics] that author’s work” ( Campbell v Acuff-Rose , 510 U.S. 569, 580-81). Satire is the use of one copyright - ed work to comment on something else. See Warhol v Goldsmith , 598 U.S. 508, 530-31 (2023) (distinguishing parody and satire). Parody and satire, like any other uses, are subject to the rel - evant fair use factors and judged case by case. See Dr. Seuss v ComicMix , 983 F.3d 443 (9th Cir. 2020). 9.3 Exhaustion Trade Mark The US generally applies the first sale doctrine to resale of items that bear a trade mark. Once an item bearing a mark is lawfully sold, the trade mark owner cannot restrict its resale and is immune from infringement liability. However, there are exceptions. For example, if a party resells an item that has been modified so that it is materially different, the doctrine does not apply. It also does not apply if the reseller holds itself out as related to the owner of the trade mark. Copyright The US applies the first sale doctrine to lawfully acquired, physical copies of copyrighted works. Under Section 109, once a copyright holder has
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