ICC Withdraws Copyright Infringement Lawsuit

NFPA Journal, Sep/Oct 2006 by Nicholson, John

COPYRIGHT ISSUES

NFPA AND THE INTERNATIONAL CODE COUNCIL (ICC) have settled several disputes relating to copyright and trademark issues. The settlement protects NFPA's right to continue to publish and distribute its NFPA 5000®, Building Construction and Safety Code® and resolves issues related to NFPA's and ICC's trademarks.

In 2002, the ICC sued NFPA in Chicago federal court charging that NFPA infringed the copyright in ICC's International Building Code®. Under the terms of the settlement, ICC has withdrawn the lawsuit "with prejudice," meaning the ICC's copyright infringement charges against NFPA have been given up and can never be brought again. The terms of the settlement also limit in various ways ICC's ability to sue NFPA with new allegations of copyright infringement in the future.

In separate litigation filed in Massachusetts federal court in 2003, NFPA brought a suit against ICC for trademark infringement and for violation of a 1999 settlement agreement. That case involved ICC's use of NFPA's International Electrical Code® trademark as well as other similar trademarks. In the settlement just announced, ICC has agreed to discontinue using the challenged trademarks and to take other steps to ensure that ICC will not infringe NFPA's marks in the future.

A third dispute in the U.S. Patent and Trademark Office involving the use of the phrase "Certified Building Official" has also been resolved in a manner that will allow NFPA to register its certification marks, "NFPA-Certified Building Official" and "NFPA-CBO."

As part of the settlement of these disputes, ICC has agreed to pay NFPA an undisclosed amount of money for legal fees and costs associated with the litigations.