“Fair use” means different things in trademark law and copyright law. In trademark law, it refers to situations where a third party may use someone else’s mark without infringing, covered first below. In copyright law, it is a statutory defense judged by four factors, covered at the end of this post.

Descriptive Fair Use

The first kind of fair use is descriptive fair use. This means that just because someone has trademarked a certain word does not mean that the word then disappears from common vernacular. Federal law protects a term “used fairly and in good faith only to describe the goods or services” of the user (15 U.S.C. § 1115(b)(4)). Copyright does not protect words and short phrases such as names, titles, and slogans at all (37 C.F.R. § 202.1(a)). Some examples of descriptive fair use would be the word “Apple.” Just because Apple Inc. uses “Apple” as the name of its computer business, it does not stop people from selling apples described as apples.

Another example would be to use the words sweet tart. People can still describe something such as a type of fruity drink even though there is a candy company named “SweeTarts.” In those instances the words sweet tart are merely describing something using a trademark word and not specifically describing a brand, thus, it is not trademark infringement and falls under fair use.

Nominative Fair Use

The second kind of fair use is nominative fair use. A person can use a trademark and refer to a trademark owner or its goods for the purposes of reporting, commentary, or comparative advertising. In courts that use the common three-part test, the requirements for defendants who want to take advantage of nominative fair use include:

  1. The trademark owner, product or service in question cannot be readily identified without use of the trademark,
  2. The defendant must use only as much of the mark as is necessary to identify the trademark owner, product or service, and
  3. The defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner.

Another example would be if your client was selling an app to be used by Apple’s operating system. Your client, of course, wants to promote and advertise this app and wants to advertise that it is compatible with Apple’s iOS. Your client is able to do so as long as there is no implication that there is an association between your client’s app and Apple computers.

Comparative Fair Use

If your client is a competitor of the candy SweeTarts and wants to run an ad where their candy is compared to SweeTarts and uses the SweeTarts trademark, it can do so under comparative fair use.

It is important, however, that your client uses the mark within the bounds described under nominative and comparative fair use as to not invite a lawsuit by SweeTarts. Even if your client does use a registered trademark, it would be important to advise your client not to use any taglines such as Chevrolet’s tagline “Like a Rock.”

Copyright fair use is a separate doctrine. Under 17 U.S.C. § 107, the fair use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research is not an infringement. Courts weigh four factors: the purpose and character of the use, including whether it is commercial or for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used; and the effect of the use on the potential market for or value of the work.