Dear Rich: Nolo's Intellectual Property Blog

Wednesday, May 22, 2013

Bird Feeder: Patent or Copyright?

Dear Rich: I have a design for a bird feeder which hasn't been made by anyone else yet. I want to pitch the idea to a company but don't want them to steal my idea. Is a copyright on the design good enough to stop them, or should I apply for a patent? Copyright won't protect useful objects, so we don't think that would be the best choice (unless you want to stop others from copying your bird feeder's imagery). Instead, consider one of the following methods of protection:
Design patents. Inventors use design patents to protect the appearance or design of a functional object. Some examples of bird feeder design patents are this one and this one. Read more about design patents.
Utility patents. Inventors use utility patents to protect bird feeders with unique functional features -- for example, this squirrel-repelling feeder or this squirrel-repelling feeder or this squirrel-repelling feeder (whoa that's a lot of repelled squirrels). Read more about utility patents. (Also you can preserve your place in line at that Patent Office without filing a full patent application by filing a provisional patent application.
Trade secret. Some inventors seek to protect their rights when submitting ideas by using nondisclosure agreements (NDAs), thereby preserving trade secrets. The problem for inventors is that often the evaluating company won't sign the NDA because of concerns that they'll be precluded from developing similar ideas. Read more about NDAs and trade secrets.

Tuesday, May 21, 2013

Is Inventor's Lab Subject to Zoning Laws?

Dear Rich: I am an inventor who has received two patents and am waiting for a third. My inventions are all electrical and I do my inventing in a separate structure I built on my property. The structure was built to code and I got all the needed permits. Recently, there was an accident in my work area and a small fire occurred. The fire department came but I had already put the fire out with an extinguisher. However, a neighbor wasn't happy when she learned that I use the structure, which is near her home, for electrical experiments and she's claiming that the structure is not zoned for business use. Things are hard enough for independent inventors. Can you suggest any ways to get around this problem? You would be subject to local zoning laws (especially if inventing is a business for you, not a hobby.)
Get in the zone. The purpose of zoning rules is to help maintain the peace and quiet of residential neighborhoods. To find out where your community falls on the issue, read your local zoning ordinance. You can obtain a copy from your city or county clerk’s office or your public library. Zoning ordinances are worded in many different ways to limit businesses in residential areas. Some are extremely vague, allowing “customary home-based occupations.” Others allow homeowners to use their houses for a broad but, unfortunately, not very specific list of business purposes -- for example, “professions and domestic occupations, crafts and services.” Still others contain a detailed list of approved occupations, such as “law, dentistry, medicine, music lessons, photography, cabinetmaking.” Whether inventing falls within one of these categories is usually unclear -- meaning it may be difficult or impossible to know for sure whether your local zoning ordinance bars home inventing businesses. Most ordinances prohibit activities that cause excessive noise, pollution, waste, odors and similar conditions not appropriate in a residential neighborhood. The important factor in zoning disputes is usually not the rules themselves, but maintaining peace with your neighbors so that the rules don't become an issue.
Public nuisance and other law. Keep in mind that even if your community doesn’t have restrictive zoning laws concerning home businesses, it could take legal action against you if you make a nuisance of yourself -- that is, do something that may harm public health or safety; for example, creating excessive noise or offensive odors, or storing hazardous chemicals or waste ... or starting fires. In addition, your invention business may be limited if (1) there are restrictions in a lease (if you're renting), or (2) there are restrictions in your community's CC&R's (if you live in a gated community).

Monday, May 20, 2013

Bringing in a Musician After the Song is Written

Dear Rich: I have many songs that were written/recorded to a drum beat (loop) or with no music. I write the lyrics, arrangement and compose the vocal melody. My understanding of publishing splits is 50% lyrics and 50% music. If I bring in a musician after the fact to help write the music, what is the publishing split since the music was written to my melody and vocal arrangement? A publisher told me the vocal melody is considered part of music composition. Is this true? Some musicians/composers often ask for 25% publishing since the song was written when they got involved and some want 50%. Which is correct and/or fair? Also, what would their copyright share be? When I co-write with someone from scratch, we split everything 50%-50%. I like to keep the math easy and both of us happy. If you are bringing in musicians after the song is written, there is usually no reason to share songwriting revenues. You can, if you wish ... Many people in your position simply pay the musician a fee and have them assign any rights to you. However, if the musician is doing more -- for example, rewriting the melody -- or you just want to share songwriting revenues instead of paying for an assignment, read on.
Three things:

There's a difference between sharing co-writing copyright credit and sharing revenues. Only someone who has materially contributed to the writing of the composition is entitled to copyright co-ownership. On the other hand, you're free to share your songwriting revenues with anyone.
A lot depends on how you structure the music publishing. We can't go into the gruesome details here but you can learn more about music publishing (and see examples of royalty splits for a band) in our Music Law book (or check out Randy Wixen's The Plain and Simple Guide to Music Publishing).
There are no fixed rules for dividing songwriting revenue.

What's Common? Music publishing originated in the days of Tin Pan Alley. Songs were sometimes co-written by a lyricist (words) and a composer (music) -- the formula for classic show tunes like The Sound of Music and for rock tunes such as Satisfaction. Sometimes, as in the case of the latter tune, the lyricist also contributes the vocal melody. Typically these teams split the revenue 50/50. The Tin Pan Alley model is still around and so are lots of other variations, some of which reward people who had nothing to do with writing the words and music. Nowadays contributions that result in the song's success are given songwriting royalties -- for example, a DJ whose beats become the secret sauce for a new club hit. Whatever you decide, formalize the arrangement in writing, even if it's just a slip of paper that you both sign indicating songwriting splits.

Friday, May 17, 2013

Can I File Foreign Patent Application in English?

Dear Rich: I want to file for foreign patent rights using a PCT application. I'm planning on applying in a few countries. Can I file in English? Some of our readers may not know that a PCT filing refers to a procedure administered under The Patent Cooperation Treaty. Using the PCT process, you can file a patent application in the U.S. and then file a single “international application” (the “PCT application”) with the PCT Department of the USPTO that establishes a filing date for all member countries. This filing does not result in a universal PCT patent; the inventor must eventually file separate or “national” applications in each PCT jurisdiction.
Translations needed. According to the PCT rulebook, a translation of the international application must be furnished if the foreign patent office requires it. (Some countries permit you to choose from more than one language.) What's translated? The translation must include the description (including the title of the invention), the claims, and any text in the drawings. Normally the abstract must also be translated. Most countries don't require that the request itself be translated. Any foreign patent office that requires a translation of the request is obliged to furnish to the applicant–free of charge–a copy of the request form in the foreign language.

Thursday, May 16, 2013

Doesn't Like His Patent Examiner

Dear Rich: I'm having a hard time with a patent examiner. I've tried to be reasonable but it seems like the examiner is just rejecting various claims because he can. What do I do if I'm stuck with a bum examiner? Most applicants or their attorneys bite the bullet and try to deal with the examiner as best they can. You can find advice on responding to unfavorable office actions in David Pressman's Patent It Yourself (Whatever you do, you don't fire off angry missives about the examiner's mental state because those can quickly go viral in the patent world.) If you get a final adverse ruling, you can appeal to the Patent Trial and Appeal Board (PTAB). You can browse past hearings or documents at the PTAB's site. If you're not happy with the PTAB's decision, you can appeal to the Court of Appeals for the Federal Circuit located in Washington, D.C. By the way, a new site Reed Tech Patent Advisor advertises that, for a fee, it can provide you with a background analysis of any USPTO patent examiner including all kinds of info -- for example, the average time the examiner takes to issue a patent.

Wednesday, May 15, 2013

Do I Trademark My Documentary?

Dear Rich, I am filming a documentary. Should I trademark it? Should I brand my documentary? How do I do that? Just in case you don't understand what a trademark is, we provide some background here. We can save you some time -- a single book title or movie title cannot be registered at the U.S. Patent and Trademark office. You can, however, register a title that's part of a series, for example, the Up series. (Here's an article with some workarounds for acquiring trademark protection for single movie titles.)
Branding. We remember when "to brand" meant to burn the flesh of an animal to indicate ownership. Ouch! Nowadays, of course, it refers to all kinds of marketing stuff typically related to a product or service line. In addition to product branding, there's personal branding, faith branding, nation branding, and employer branding. We're going to assume that branding your documentary means that you want to expand your "product line" to as many happy customers as possible. We couldn't tell you how to do that and if we could, we'd probably be doing something else.

Tuesday, May 14, 2013

Actual Confusion Doesn't Prove Likelihood of Confusion

Dear Rich: In yesterday's question, the writer said that another company stole their trademark and that the writer got a complaint from a customer of that company. Since they have proof that customers are really confused, why do they need to prove the "likelihood" of confusion? Can't they stop the other company just by showing the actual confusion? You'd think so, wouldn't you? After all the standard for trademark infringement is likelihood of confusion. So, if you've got the real thing, why do you have to prove the "likelihood?"
Like a lot of things in trademark law, it's complicated. Although proof of actual confusion can be very convincing evidence, it is not always as convincing as it appears. As this article explains, the proof may be vague, anecdotal, and perhaps even untrustworthy. More importantly, it may not reflect how consumers actually interact with the marks in the marketplace. For this reason, proof of actual confusion is only one of the factors weighed in a trademark dispute

Monday, May 13, 2013

Site Wants to Stop Store With Similar Domain Name

Dear Rich: We have an online website store and an even though we're a small business we're pretty well-known amongst guitarists for selling hard-to-find pedals and accessories. We've been in business for 12 years and have registered our trademark with the USPTO. A new company used the same domain name but added an "S" and they sell digital guitar samples and loops for download. We found out about them because we got a complaint from one of their customers. Can we use domain name arbitration to force them to stop using their domain name? Trademark owners are empowered to stop others from using similar names on similar goods. In this case, you sell pedals (hardware) and they sell loops (digital goods). In order to summon your trademark mojo, you'll need to make a convincing argument that customers are likely to associate you with both products -- that is, it wouldn't be unexpected that you would expand your product line to include samples and loops. An attorney might be able to help you make a convincing argument. You can then ask the other company to stop entirely. Or, short of their giving up the domain, you can try to reach an agreement to head off confusion -- for example, to include a mutual link back to the respective websites. If they reject your requests and seem well-heeled and ready for litigation, think carefully before you start swinging. Litigation often costs way more than the amount you may lose from customer confusion.
As for domain name arbitration ... Your type of case where the two domains sell different products, is a tough case to win in arbitration. That’s because this system is set up to stop cybersquatters – those who acquire domains in bad faith. Typically that’s demonstrated when the domain is held captive or is used to divert customers. It's tougher to prevail when the domain is acquired for a legitimate business purpose that doesn’t compete with the trademark owner. You'll need to argue that the other site is acting in bad faith and deliberately creating confusion. Be warned, the arbitrators are not predictable. Although it's true that trademark owners win about 80% of the time, that’s a little misleading because a large number of these cases are defaults -- the other side doesn’t bother to respond. The fee to file for one-person arbitration is $1500.

Friday, May 10, 2013

Creating Fake U.S. Military Organization

Dear Rich: I am working on the third fictional book in a series about a fictional U.S. government counter terrorism organization. I am including considerable fictional events that occur on, and in connection with, an actual U.S. military installation, in which I use the actual name of the installation. I use fictional names for the military personnel at the location, but some of the positions are real, such as the commanding officer, MPs, etc. The stories are not based on any known actual people or events. Do I face any liability for the material in these stories/books which are published on Amazon CreateSpace and Amazon Kindle? Regardless where you publish your books, you won't face any liability. Unless you defame a real person or invade their privacy, or disclose government secrets or trade secrets in violation of an agreement, you shouldn't run into a problem. Good thing, too! Fake counter-terrorism enterprises -- whether they're Rainbow Six or Control -- are a mainstay of American fiction.

Thursday, May 9, 2013

Expansion for Board Game

Dear Rich: I read your post "Copyright and Trademark Issues for Expansion Pack for Game," and I have a related question. Rather than creating an expansion which I am trying to sell or market as a separate game from the original, I have created an expansion for a popular board game which is not separate. I am in contact with the company which owns the game, and they are interested in the full details of my expansion. I cannot find any information on how I should protect my ideas, given that they are an expansion to an existing game rather than a stand-alone game. You're in a bit of a Chinese Finger Trap. There's no way you can exploit your idea with the board game (unless you get permission from the board game owner) and there's no way you can exploit your idea by itself (you need the board game). So, we're glad that the board game owners are interested in seeing your idea. That gives us hope that they want to make a deal with you. But, alas, there's no way to guarantee that everything will proceed equitably.
Copyright protection? Hopefully, you have something proprietary. But whether you can claim copyright in your contribution depends on how "separable" and protectable your work is from the board game. If copyright exists in the expansion, then you'll have a basis for proceeding against the owners if your creative work is hijacked. (You can seek to register your claim to copyright but would need to disclaim anything that pertains to the existing game.)
Secrecy? Ideally, you would get the game owners to sign a nondisclosure, or evaluation agreement. But many toy and game makers are hesitant to sign such agreements, or if they do sign, they often seek to exclude any ideas you have that are similar to ideas they are developing. Worse, they toss out secrecy agreements and ask you to sign a waiver agreement, waiving any obligations to maintain secrecy. In that case, you have to proceed with your own personal radar and determine whether the potential risk (losing your idea) is worth the potential reward (an acquisition or licensing payment for your idea). In general, case law about submitting ideas indicates that the best you can do to shore up your position when submitting an idea is:

maintain it with secrecy (due to the vagaries of trade secret law, the idea may qualify as secret),
don’t submit it until the company actively solicits the idea and it is clear that the arrangement is for compensation, and
if possible, as mentioned above, use an evaluation (or option) agreement to maintain secrecy and to demonstrate solicitation.

Wednesday, May 8, 2013

The Prior Art Conundrum: Knock It or Not?

Dear Rich: I've just finished Patent It Yourself. The one point I'm struggling with comes in Chapter 8 (How to Draft the Specification). I'm finding it difficult to reconcile two ideas: (1) "Don't say what the prior art can't do because this can make your invention or the problem you discovered seem obvious." (2) "...you should, as much as possible, try to "knock the prior art" here in order to make your invention look as good as possible." I appreciate the underlying conundrum (and that it's not of the author's making!), but this is currently my biggest concern. Since the 'non-obvious' requirement is likely to be a bigger hurdle than the 'usefulness' requirement, I'd appreciate an opinion on whether the greater risk here is in calling too much attention to the shortcomings of the prior art (making solutions seem more obvious) or not enough attention to them (making solutions seem less useful). PIY author David Pressman responds, "This is a good question. Here’s a better explanation that I had recently written in response to another person who had seen this dichotomy:

In the PRIOR-ART section don’t mention your invention or suggest any solutions. Never state that any prior art reference doesn’t teach a specific feature of your invention. When you knock the prior art, just state what's generally wrong with it from a novice's standpoint and don’t state that it doesn't have any specific novel feature of your invention. This is because (a) most people would not realize or consider that the lack of a specific feature is a disadvantage, and (b) it can make it seem like the lack of a specific feature was already known in the art and was not discovered by you, the inventor. For example, the right way to indicate this would be to write, "Smith’s system operates slowly." The wrong way would be to state, "Because Smith doesn’t eliminate the reaction waste products, this delays the refining process."

Tuesday, May 7, 2013

Do I Register Book of Photos?

Dear Rich: I just created a small, self-published book of photographs to sell. I had previously registered with the Copyright Office all of the photographs in the book. Is there any reason for me to now register the book itself? Unless there's additional material such as text, illustrations, or a forward and you're concerned about someone stealing that, we can't see any reason to register the book of photos. As you may know, registration doesn't establish copyright (that's automatic), but it does provide you with additional benefits in the event that you're chasing an infringer. BTW, here's a video we prepared on how to register a group of photos.

Monday, May 6, 2013

My Partner Patented My Idea!

Dear Rich: While I was in school, I came up with an idea for a product that allows you to get your car back from valet with a text message. I wrote a business proposal and found a partner. My partner started the company and we developed the product. I never signed any employment agreement, we never did any sort of paperwork for ownership of the company (he was a family friend), and he applied for the patent with his name and the company name. All was fine until a disagreement between us led to me leaving the company. Now he refuses to acknowledge my claim to the company (though I have him acknowledging my co-ownership in an email), and his name is on the patent for my idea. Obviously I learned my lesson about getting everything in writing, but do I have any recourse as far as challenging or becoming a co-owner? We're not clear whether your patent was granted or whether you're referring to an application still in progress. We're also not patent lawyers so we can't comment on the novelty or nonobviousness of your text message/valet system. But few applications fly through the patent process, so if a patent has not been granted (and we're not referring to provisional patent applications), we'd suggest that you search the USPTO website to determine where, in the patent food chain, the patent is currently located and to verify that you are not listed as a co-inventor. You need to also assess accurately what your contribution was. The more specific and detailed your contribution the stronger your position. But if all you provided was the one-sentence idea as in the question, above, the weaker your claim to invention co-ownership.
Can you afford the fight? Assuming you have a strong claim, you're going to need a patent attorney in order to validate your claim to co-ownership. (You'll need a patent attorney because you will need someone familiar with the the patent process and with claims such as patent fraud.) It's possible (though not likely), that if you have a really strong financial claim, you can find an attorney who will work on contingency. Before you proceed, consider the financial outcome. You don't want to spend more money on lawyers than you'll earn from your patent.

Thursday, May 2, 2013

Wants To License Art for T-Shirt

Dear Rich: My sister and I have a start up apparel company (LLC). We are paying a graphic artist a flat fee to use a piece of his art to print on a t-shirt. The art piece will only be used for one release/collection and we agreed on a flat fee as we don't know if any of these tees will sell or how many we will end up printing. Is there a basic contract for this type of arrangement? There's a long form and short form T-shirt license in our book, Getting Permission. You can also download the short form agreement here.

Wednesday, May 1, 2013

Music Publishing: Admin v. Co-Publishing

Dear Rich: May I ask for some advice towards various factors that may affect income (including net receipts/at source deals) between administration and co-publishing deal? The biggest factor is the reputation and trustworthiness of the company you're dealing with. If the company doesn't have a rep for timely and accurate payments, it's not worth signing on the dotted line. The second most important factor is you. If you're a songwriter who can pave your own way as a performer and attract attention and deals, then an administration deal is all you need (and will probably be more profitable). If you're a songwriter who needs the muscle of an aggressive song publisher to get your tunes into TV, movies or the hands of other artists, a co-publishing deal (with the right publisher) will generate more income. In either case, the third most important factor is the length of the arrangement. The shorter the time period -- say five years if you can manage it -- the better for you as it allows you to either eject from a potentially unfortunate arrangement, or renew a profitable one. You're more likely to get a short deal with an admin agreement.
Differences ... As you're aware a music publisher is a company that owns and profits from song copyrights. Some music publishers serve solely as "administrators," making sure you're properly registered with performing right societies and collecting revenue. For these tasks of managing your songwriting business they collect a fee, for example, 5 to 25% of your revenues. A co-publishing deal requires that you give up more, including half of the copyright, in the hopes that you'll get more in return. The co-publisher earns 25% to 50% or more of the songwriting arrangement under a convoluted system that's discussed in more detail in our Music Law book. We talk about the differences in a previous entry.

Tuesday, April 30, 2013

Wants to Blu-Ray School Band Concerts

Dear Rich: I’d like to do multi-camera recordings of local high school band concerts and choir concerts. I think I’m entering new territory by recording and possibly streaming the concerts. All proceeds from the selling of DVDs and Blu-ray discs go back to the school’s programs. I won’t be making any money off these endeavors. What kind of permissions do I need to secure? Do I need to contact the publisher for each piece that is performed? The correct legal answer is that yes, you would need to contact the publisher for each piece and get a sync license (we talk about it here), as well as permission from the school band performers and conductors (to avoid right of publicity claims). Since sync licenses are so difficult to obtain, we believe you can probably protect yourself just as well by getting a mechanical license instead of sync license. (Mechanicals are used only for audio recordings, syncs are for audiovisual recordings.) That would deflect any disgruntled publishers ... though we doubt any would want the negative publicity resulting from a brouhaha with a high school band.
Practically speaking ... If you are only selling the disks locally to members of the community, you can probably forego most of the permissions mentioned above. (It's what often happens when a tree falls in the intellectual property forest.) It may help to have something in writing (emails are fine) between you and the school that indicates you have their permission for your endeavor. If you intend to sell to a broader audience, you will probably need to get the permissions discussed above (and described in detail in the Getting Permission book.)

Monday, April 29, 2013

Can We Get Out of Record Deal?

Dear Rich: I am in a band and last year we signed a distribution and publishing agreement which has turned into an absolute mess. I used to sing in the band but subsequently have found myself less our singer and more our copyright lawyer. I am better at singing. Our agreement made us solely responsible for paying for and producing the master recordings - we did. The label's responsibility was in providing marketing, booking, and distribution - they didn't. As a result we told them they were in breach of contract and gave them a 60 day notice letter wherein they had 60 days to remedy their non-performance or be in breach and the contract would be terminated. The confusing part is that they then proceeded to put our recording up for sale through physical and digital means. We told them to stop selling based on the fact that no separate "Exclusive Co-Publishing Agreement" was ever reached. Below is an excerpt from our agreement outlining the publishing deal (names changed, Sub=band, Company=label):

You hereby agree to grant and assign to Company affiliated publishing company, Mr Publisher (ASCAP) a division of Mr Publisher Media Group LLC a 50% copyright and performing rights interest less collection fees and 100% administration rights in and to each musical composition written, owned or acquired by you during the term of this recording agreement ("Compositions"). In connection therewith, you agree to enter into a separate Exclusive Co-Publishing Agreement with Mr Publisher (ASCAP), the terms of which shall be negotiated in good faith, but which shall include the right of Mr Publisher (ASCAP) to administer the Compositions throughout the world and may elect to charge an administration fee of (ten 10%). Should Company and Sub decide to terminate this agreement all rights of copyright will revert back to Sub unless Company can prove substantial progress in its tenure of administering compositions.

Since we are splitting the copyright does that mean they are able to continue selling our music without our permission? Are we able to register our masters with the copyright office on our own given they have a 50% stake? So confused... Whenever the Dear Rich Staff gets a long letter that includes excerpts from a contract, our first thought is usually, "Get thee to an attorney." We think that's the proper course of action in this case. Here's why:
The cure letter. If your basis for claiming breach of contract was a failure to market, book and distribute the band, then by providing the "cure" letter you gave the company 60 days to correct those omissions. If the label failed to market, book and distribute within 60 days of your letter, the agreement is terminated. Putting the music up for digital and physical sale isn't enough to cure. The label needs to demonstrate an effort to market and book the band, too (and correct any other omissions mentioned in your cure letter). If not cured, the label is in breach and your grant (assignment) of publishing rights would be terminated as well. In other words, terminating the record deal for breach would allow you to retain all of your publishing rights and there would be no reason to execute a written publishing agreement.
Get out of it! So, you should stay focused on ending the contract which, by the way, seems a bit lopsided (welcome to the music business). As we understand it, you pay to produce the album and you give up half of your publishing. The label doesn't seem to be taking any risk. After all posting a recording is easy, and creating physical CDs can be done without much of a financial commitment. So, unless the label has an impressive track record with other artists, you'd do best to pool your money, hire a lawyer and make sure the agreement is fully terminated quickly. The annoyingly difficult part is getting the label to take down the music it has posted for sale. In conjunction with getting an attorney, you should also register your music at the Copyright Office and with a performing rights society. And of course, another reason to check with an attorney is that we could be completely wrong about all of this. A second opinion will help.
Hiring a lawyer. If paying for a lawyer is a challenge, find out if there's a volunteer lawyer for the arts service near you.

Friday, April 26, 2013

Illustrating Book About Chinese Zodiacs

Dear Rich: I'm an artist and my friend is a writer. She wants me to illustrate her book on Chinese zodiac astrology. My art would be heavily displayed in the book. How do we work out my getting paid for my art? Do I charge her a flat fee or take a cut of the earnings? Consider the following questions before proposing anything to the writer.
Is the artwork supplementary or essential? If the artwork is an essential part of the purchasing decision -- as in a home decorating or children's picture book -- that would be more likely to justify a cut of the earnings. If the illustrations simply supplement the writing (as in most nonfiction books), flat fees are more common.
How much time will it take and what is your time worth? Estimate the number of hours per drawing. If you were billing an anonymous client for the same work, what would you charge? This would be your starting point in determining what you want to earn back (though of course there may a steep discount for your friend). The Graphic Artists Guild Handbook provides assistance with pricing.
How likely is it that the book will be distributed by a commercial publisher? If this work will be the subject of a book deal, the typical advance (assuming there is one) for a nonfiction book would be between $3,000 and $10,000 (though others indicate these advances are higher; we don't think that's an accurate reflection of today's marketplace). Royalties would be 5 to 10% of the book's income but would only be paid after the advance has been earned back. Nonfiction books usually have a sales life of 12 to 14 months. If a book deal is in the works, and you feel you are entitled to a cut of the earnings, you should seek to become a party to the publishing contract. Otherwise, you must rely on the writer to receive the income and then forward your payment.
What does your friend want to do? Because you're dealing with a friend -- not an anonymous client -- we'd like to see you work out an arrangement that doesn't jeopardize your personal relationship. You could propose a two-tiered system -- for example a reduced flat fee but an additional payment if a book deal is signed.
What about the rights? Are you transferring copyright ownership? Do you want to retain certain rights so that you can continue to use, sell or display the artwork. Determining rights may affect the price. For example, if you would like the right to sell limited edition prints, or to advertise those prints in the book, you might want to adjust your fees accordingly.

Wednesday, April 24, 2013

Rules for Reproducing Copyrighted Evidence

Dear Rich: I'm filing my first pro se case for copyright infringement. Is it fair use to make a copy of something to use as a evidence (or exhibit) in court. Courts typically consider it a fair use when copyrighted material is reproduced for a court proceeding. Here are some examples:

The Second Circuit ruled that it was a fair use to reproduce a series of web essays as supporting evidence.
A New York district court reached a similar result when copyrighted videos were introduced as evidence.
A Michigan federal court also reached the same fair use conclusion when construction photos were introduced into evidence.
The Tenth Circuit excused copying of a copyrighted work for litigation purposes as a fair use in 2007. However, the Tenth Circuit refused, unlike the Ninth and Second Circuits, to establish a fixed rule that such uses, by their nature, are a fair use. Instead, each case should be judged on its merits.
The Ninth Circuit has stated that the use of copyrighted material as evidence in judicial proceedings is fair use, so long as the users do not reproduce the work for its “intrinsic purpose.”

What's an "intrinsic purpose?" It's a use that is for the same purpose as the copyright holder intended. For example, it was not a fair use when one party copied photos after it refused to pay the $15 per photo fees incurred by a trial evidence firm that had prepared the photos for litigation. In other words, the photos were prepared for the litigation and one party sought to avoid paying for their preparation.
PS. Good luck with your pro se case. (Here's the strategy that the lawyers on the other side will use against you.)

Monday, April 22, 2013

Wants to Use Bruno for Hair Salon

Dear Rich: I have set up an upmarket ladies hair salon called Bruno's Kuafor, and used Sacha Baron Cohen's satirical character Bruno as the inspiration. We actually use one striking image of the character all over our marketing literature. The logo is our own. The whole theme works brilliantly, and I did have it in mind to contact him to help the promotion, or even give him some financial share or incentive. But we are in Istanbul, so we are a long way away, and we didn't get round to it. And now a friend wants to open a branch in New York. What can I get away with, what should I do, is this a good time to contact Mr. Cohen or his agent to license the image of his dead character, or indeed try and get Mr Cohen involved more directly? We love the image, it is one that was used widely to promote the film Bruno, we just lifted it off the internet. We're not sure about Turkish law, but under U.S. law, you will need permission from the company that owns the rights to the Bruno character, as well as from Sacha Baron Cohen, whose image is used to promote your salon. That's because the use of the character and the actor's image triggers violations of copyright law (using images from the film), trademark law (the character may have acquired trademark status), and the right of publicity (the right of a person to control the use of his or her image for commercial purposes). Obviously, the more successful you become, the more likely you will need permission ... which is a bit of a Catch 22 because by seeking permission, you're alerting the company as to your use. If you do decide to seek permission, we believe the place to start would be Four By Two Films, the production company owned by Cohen and responsible for his movies and TV shows.