RE: Asking Permission (was Re: trademark question)

>isn't it important for the general public to use the
rights that they do have, under the law? My impression is that rights that don't get used, get lost.<

That's not a general rule. Trademark rights get lost if they are not used. Copyrights do not; they last as long as the law says they last, whether the rights holder uses them or not. And as for fair use rights, the question whether they will be lost if the public doesn't actively exercise them depends upon whether you believe that fair use is a "right" in the first place. We had a substantial discussion a few months back about whether fair use is an inherent right of the public to make certain uses of a copyright-protected work, or is only a defense to a claim of copyright infringement. Both views were expressed and passionately defended. The statute is unhelpful, merely identifying what sorts of uses "shall be fair use" if certain factors balance out a certain way.

It is, therefore, a process of triage. Some uses are so obviously fair, or de minimis, that it's safe to assume that there's no need to ask permission. At the other end of the spectrum, some uses are so obviously risky that you definitely should ask permission. But in the broad middle range, which is what we are talking about, it's a tough call whether the default rule should be "when in doubt, ask permission" or "when in doubt, assume fair use, don't ask permission, and be prepared to defend your decision later." It's easy to say that fair use is lost if it is not exercised; but as the practicing lawyers on this list know, no one wants to be the next test case.

Robert C. Cumbow
 Graham & Dunn PC
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-----Original Message-----
From: Freya Anderson [mailto:freya_anderson[_at_]eed.state.ak.us] Sent: Wednesday, September 25, 2002 10:14 AM To: Multiple recipients of list
Subject: Re: Asking Permission (was Re: trademark question)

IANAL, but I don't understand how asking permission does not somehow imply that asking permission may be necessary. If the point is that copyright is moving too much towards rightsholders, which is my understanding of the earlier poster, then isn't it important for the general public to use the rights that they do have, under the law? My impression is that rights that don't get used, get lost.
Freya

At 12:46 PM 9/24/02 -0400, you wrote:
>----- Original Message -----
>From: "carol" <carol[_at_]drogon.com>
>Subject: Re: trademark question
>
>
> > >Herman Sutter [mailto:hsutter[_at_]st-agnes.org] wrote:
> > >Oh, for heaven's sake, please don't ask permission where permission
> > >isn't necessary.
>
> > [snip] my instinct, esp. for kids, is to say get permission.
>
>I agree with Carol. Having dealt many times with this issue from both
sides
>of the coin, its my view that its almost always better to ask permission,
if
>done correctly. Here is why I think so:
>
>1. Case law encourages it (its not an admission to ask for permission,
even
>if you believe the other party has no exclusive rights)
>
>2. The purported rights holder almost always will look more favorably on
an
>infringement after a request for permission than after an infringement
>without a request (often, the response from the rights holder about the
>concerns can actually assist the user in suggesting ways to modify the use
>to make it more of a fair use or non-infringing).
>
>3. Often, permission is granted under reasonable terms and in some cases,
>more formal sponsorship and assistance is offered by the rights holder. In
>at least one case I worked on, a profitable business relationship resulted.
>
>4. If permission is denied and the claim is ever later made, this may have
>a positive impact on the publicity, court and the opposing rights holder.
>
>5. If done correctly, the permission request letter will not provide a
>basis for a pre-emptive suit.
>
>6. If you really believe that the rights holder would not sue due to
>adverse publicity (as in the specifics of this case), I cannot conceive a
>reason not to ask permission. Certainly, the mere moral belief that a
>particular use would be non infringing or a fair use is not enough of a
>basis to justify not asking first.
>
>7. If you believe the rights holder will sue anyway and are prepared to
>fight it, asking permission can actually have some procedural advantages.
>For one, it puts the rights holder on notice of the proposed use, and
>failure to timely respond to that may constitute estoppel, laches, implied
>consent etc. Also, to the extent the case is both injunctive and monetary,
>unless the rights holder acts quickly, obtaining an injunction might be
>difficult.
>
>The exceptions where I would not ordinarily advise to ask permission -
>though there are even exceptions to these exceptions - are:
>
>A. Where there is no practicable way to give notice without possibly
>prompting a preemptive suit (the exception here might be to first file a
>preemptive Declaratory action where the rights holder has made public
>statements it will prosecute all infringers)
>
>B. Where the rights holder has lost a similar case and the matter is res
>judicata or collateral estoppel.
>
>C. Where the rights holder has pre-consented (don't laugh, read
>www.apple.com - unless they changed it, they have a public statement about
>when you always have rights to use their trademarks)
>
>D. Where the rights holder might be on the fence about suing, and
providing
>permission might just give them notice of the infringement, and where the
>rights holder possibly does not monitor its marks and copyrights, such that
>the use would fly under radar. This one requires a serious disclosure to
>the client taking this advice.
>
>Anyway, the question of whether to ask permission is pretty complex, though
>I agree that in the case of a school using a trademark in a parody-like
>manner on shirts and not selling them for commercial gain is a no brainer
>(fair use or non infringement), and would be a bad publicity move for the
>rights holder. Nevertheless, based on the very abbreviated facts given,
>this would fall into my default rule of asking for permission.
>
>best regards, mike oliver
>
>++++++++++++++++++++++++++++
>Michael D. Oliver, Esq. Member,
>Bowie & Jensen, LLC
>29 W. Susquehanna Ave.
>Suite 600
>Towson, Maryland 21204
>oliver[_at_]bowie-jensen.com
>http://www.bowie-jensen.com/
>++++++++++++++++++++++++++++

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