Has Covid-19 extended the Fair Use Exception on Copyright Protection due to Extended Learning?

Since education in the United States has traditionally been face-to-face in classrooms, policies regarding classroom usage of copyright-protected works have been re-examined in these exigent circumstances of online classes due to Covid-19. Educators and policy-makers’ perspectives on Fair Use were not written for situations where face-to-face education is over videoconferencing technology and in virtual classrooms; educator obligations regarding use and distribution of books, music, videos and even worksheets, as well as policies managing how teachers teach, and how students learn and document mastery of subjects, have been swiftly re-assessed.

While educators revised policies, two decisions were published; each has the potential to broaden how copyright-protected works can be used in virtual classrooms. On March 24, 2020, the Ninth Circuit said that “the defense of Fair Use, if applicable, should cover ‘teaching’ whether in a private or public setting.” The ruling did not distinguish between face-to-face education and distance learning, stating simply that “the Fair Use defense renders a use non-infringing. (Tresona Multimedia, LLC v Burbank High School Vocal Music Association)

The Supreme Court ruled that same week that a state could not be sued for copyright infringement by a company that held copyrights in photographs. Justice Kagan wrote the unanimous decision that “Article 1’s Intellectual Protection Clause could not provide the basis for an abrogation of sovereign immunity.” Congress could create that basis, but at this moment it does not exist. Accordingly, state-licensed schools might not be liable for copyright infringement, as the law currently stands. In a different time, Congress might take action to change this situation relatively briskly, but given the current complexities in the world, there is no expectation that such a law will exist before the end of this school year. (Allen et al. v. Cooper, Governor of North Carolina, et al.)

Fair Use Favors Flexibility

Even before these rulings came down, the concept of Fair Use gave broad latitude for many kinds of classroom uses. A Fair Use analysis looks at four factors (a) the purpose and character of the use; (b) the nature of the copyrighted work; (c) the amount and substantiality of the portion taken, and (d) the effect of the use upon the potential market. Copyright specialists affiliated with libraries around the U.S. looked to Fair Use in stating that “making materials available and accessible to students in this time of crisis will almost always be Fair Use. If we are being thoughtful in analysis and limiting activities to the specific needs … during this time of crisis, copyright law supports our uses.” Their position is that Fair Use “accommodates the flexibility required by our shared public health crisis, enabling society to function and progress while protecting human life and safety.”

The Tresona ruling looked to “the limited and transformative nature of the use and the work’s nonprofit educational purposes in enhancing the educational experience of … students.” A work is transformative Fair Use when “new expressive content or message is apparent,” even if “the allegedly infringing work makes few physical changes to the original or fails to comment on the original,” said the court.  Accordingly, a teacher creates a transformative work, which falls into the protective bubble of Fair Use, when they craft a message, enhance their students’ educational experience, or educate their students in creating expressive content; as Fair Use is a lawful use of copyright, such usage is non-infringing and should be permitted under educational policies at all times, but particularly while teaching in the shadow of COVID-19.

Copyright is Not Infringed in “Places Devoted to Instruction”

Even without reliance on Fair Use exceptions, Section 17 U.S.C. § 110(1) of the Copyright Act explicitly says that neither teachers nor students infringe on copyright when using a work “in the course of the face-to-face teaching activities of a non-profit educational institution, in a classroom or similar place devoted to instruction.” It is reasonable to conclude that internet-based teaching activities of public schools and non-profit educational institutions qualify as a “similar place devoted to instruction.” To the extent they might not, a Fair Use analysis of the “purpose and character” of said follow-on use should enable teachers to modify their in-classroom teaching activities for use online without worrying that they are infringing on someone’s copyright.

Well-known authors who are also licensors, have recently expanded their licenses to educators.  However, in the United States, between the Copyright Act exceptions and the nature of Fair Use, educators probably don’t need the author’s permission to read portions of the books with their students, and discuss passages in online classes any more than they need permission to do so in a traditional brick-and-mortar classroom.

Is Videoconferencing a Closed Educational Platform?

Given current Fair Use common law, teachers should not be required to ask permission from an author to post a video of themselves reading a copyrighted book to their students, especially if that video is sent via email to the students, or shared by the teacher only on a school’s secure networks or closed educational platforms. One ongoing question is whether third-party videoconferencing systems used as virtual classrooms are the equivalent of a school’s secure network or closed educational platform; if they are seen as analogous, educators using those platforms can rely on Section 110(1) exceptions. Even videos uploaded to YouTube could fall into that analogy, especially if the videos are not publicly listed on the service, and only those with the URL can access them.

As schools evaluate policies, they can review whether specific plans are permitted under the Copyright Act or are non-infringing because of Fair Use carve-outs; presuming follow-on uses are infringing forces teachers to forego educational opportunities for their students, and as they collaborate. Copyright owners should also take this time to examine their policies and license language; failure to do so risks public relations fallout. Copyright monopolism does not exist in the United States, but copyright protection does – the balance between the two is a necessary focus for all copyright-holders during the time of COVID-19-impacted education.

If you need help navigating these uncharted waters of copyright in the day of a pandemic, reach out and let’s talk.


Apollo 50: The role of intellectual property in space commerce

The U.S. Patent and Trademark Office (USPTO) will be hosting an event to commemorate the 50th anniversary of the moon landing on July 23, 2019, from 2 pm to 4:30 pm (ET) at the USPTO headquarters, in Alexandria, VA. The event will also focus on space innovation, technology transfer from the Apollo missions, and an overview of the current administration’s policy on space exploration and space commerce.

Information regarding the event can be found here. Those interested in registering for the event, can do so here. There will be a live Facebook event here.

Best Practices for Design Patents- Conclusion

By Debby Winters

We have discussed various aspects of design patents in this series of blog posts. In short, design patents should be considered to provide an alternative or additional means of protection for an invention, and generally have a lower cost, higher allowance rate, and faster timeline than utility applications. The guidelines outlined in this series should be considered when preparing an application for an ornamental design. However, you should always consult with a licensed patent attorney before moving forward with your application. We would be happy to serve as your patent attorney. Good luck!

Best Practices for Design Patents- Include Additional Embodiments

By Debby Winters

To continue our series of blog posts on design patents, in this post we will discuss including additional embodiments.  Similar concepts with slightly different modifications, such as certain features being shown in solid and broken lines, are considered additional embodiments and could be filed in the same application. The potential outcome of including additional embodiments in a design application that does not exist in a utility application is the potential for receiving a restriction requirement.  The Patent Office may or may not issue a restriction requirement, depending on how closely related the designs are. The subjectivity will also depend upon the particular Examiner assigned to your application. Including different embodiments allows different levels of protection for the same invention. There is no downside to including embodiments of different scope in the same application. The Patent Office will issue a restriction if warranted, and subsequent divisional applications can be filed that are directed to the restricted embodiments.

Alternatively, an Appendix including additional or related embodiments may be filed in the application. The Appendix will serve as support for future drawing amendments or continuation applications and should be canceled by the Examiner upon allowance of the application.

What Every Startup Needs To Know: IP Pitfalls- Poorly Written Or No Agreements- Part Nine

By Debby Winters

Using poorly written agreements or no agreements at all can be a disaster for the startup. Not only is the valuation of a startup based on the IP that it owns, but also on the agreements with IP clauses. Examples are not just limited to things you typically think of as IP agreements but can include employment, consulting, funding, collaboration, settlement, licensing, research, and material transfer agreements. Thus, poorly drafted or non-existent IP-related agreements can be problematic for a startup.

Because of a lack of sufficient funding, many startups attempt to save legal expenses by using template IP-related agreements from a variety of non-professional sources, including the internet. However, such agreements can fail to include clauses that adequately protect the startup’s interest and in many cases, can include clauses that jeopardize a startup’s IP. Thus, when using IP-related agreement templates, the startups should have such agreements at the very least vetted by IP professionals. Startups can also do themselves a disservice by using an attorney who is not familiar with the nuances of IP law.

Many IP-related agreements, particularly research agreements, generally include confidentiality, publication, and IP clauses. The startup should review confidentiality and publication clauses to ensure that confidential information, including trade secret information, is protected from disclosure and that the startup has the right to review manuscripts and other materials containing confidential information before publication. With respect to the IP clauses, the startup should make sure the language allows for retaining its own IP and for protecting jointly developed IP.

Furthermore, with respect to patent license agreements involving a third-party licensor, startups need to make sure that the license agreement provides all the rights needed to commercialize the licensed technology, includes future improvements to the technology, and retains the right to sublicense the technology. The agreement should also have a sufficient termination clause in the event the startup needs to opt-out of the agreement.  The agreement should also specify the relevant field of use and possibly other fields for future expansion. Importantly, the startup should review patents to ensure that the commercialized product materials, methods, and tools are properly claimed with patent life remaining. This should be drafted and reviewed by an experienced IP attorney.

In conclusion to the series of blog posts dealing with common IP pitfalls for a startup, the process of bringing a new startup business to life and in launching new products to the marketplace can be an exciting time. However, many startups are so focused on bringing a new product or service to market that they fail to take the necessary steps to protect the associated IP. Failure to put an IP plan in place can cripple valuation and expose the startup to potential third-party infringement risk. In contrast, startups can protect and exploit their IP assets to build value and revenue by developing an IP plan as part of their conception, creating an action plan to protect IP assets including protection of confidential information, securing ownership rights to the IP, conducting freedom-to-operate searches, and ensuring properly drafted IP-related agreements are in place.

If you need help with your IP or with protecting it, let me know.

Failure To Establish Clear IP Ownership-What Every Startup Needs To Know Part 7

By Debby Winters

In the last post we examined how independent contractors could try to claim IP rights. In this post we will look at IP rights as it relates to employees of the startup.

The startup eventually will have employees and it is wise to have these employees enter into work-for-hire-type agreements that explicitly confer rights in the works to the startup. That can be accomplished through an employment agreement or through separate agreements.

Additionally, startups should have employees sign confidentiality and invention assignment agreements with clauses that clearly state the obligation of the employee is to assign all developed IP to the startup. Failure to include such assignment clauses can create ownership problems for the startup, especially if the employee leaves the company to work for a competitor or cannot be subsequently located

The agreements should also state that the startup’s confidential information is only for use for the benefit of the startup; require disclosure of ideas, inventions and discoveries related to the agreement or employment; and include a statement of ownership rights over ideas, inventions and discoveries. Recordable assignment of IP rights should be required to show clear ownership of inventions and other IP developed by its contractors and employees.

It is often advisable to get help from an experienced IP attorney in the drafting of such agreements.

We have talked about establishing clear lines of ownership for the startup IP, next we will look at the failure to identify third-party rights.

Failure To Establish Clear IP Ownership-What Every Startup Needs To Know Part 4

By Debby Winters

Failure to establish IP ownership rights can be a deal breaker in many business transactions. Due diligence analysis generally seeks to verify not only the startup’s ownership rights to each piece of IP but also to determine if there are any restrictions on its use. Typically IP ownership issues can be averted if addressed early, sometimes even before the incorporation of the startup.

Here are a few of the places where ownership should be established:

  1. Current Employment for the Founders
  2. Employees of the Startup
  3. Independent Contractors
  4. Startup Founders

In this blog, we will discuss the first topic and take up the other topics in subsequent blog posts.

Founders of many startups continue to work for their current employer while they establish the new company. The employer may have required that the Founder/employee sign a confidentiality or invention assignment agreement in which the employee agreed to assign all new ideas and inventions related to the employer’s business to the employer. This is particularly problematic if the startup product or service is closely related to the employer’s business as the employer may try to claim rights to the startup’s IP.

Thus, it is important that founders carefully review their current employment agreements and fully understand employment obligations, including IP assignment clauses and non-compete language. Employees should also consider discussing personal projects/inventions with their employer upfront to avoid ownership issues later down the road. Generally, employer resources or company time should not be used to develop projects for the startup company without the pre-approval of an employer and without the employer’s agreement not to claim ownership rights.

In the next blog, we will look at establishing ownership of IP with employees of the startup.