Thursday, May 26, 2016

Does Weird Al Qualify as a Parody Fair Use?

Dear Rich: In a recent answer you linked to a blog posting by Weird Al Yankovich in which he says the following: "My parodies have always fallen under what the courts call “fair use,” and this one was no different, legally allowing me to record and release it without permission." He adds, though that it has always been his personal policy to get the consent of the original artist before including his parodies on any album. What do you think of Weird Al's fair use analysis? Is putting different, humorous words to an existing song automatically a parody that does not require permission? 
We appreciate Weird Al's contribution to popular music but we think he may be mistaken about fair use.
Is Weird Al a parodist? His songs make us laugh but that's not enough to qualify as a parody. Under copyright law, a parody comments on the work (or author) being parodied. As the Supreme Court wrote:
 For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works․ If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish) ...
An example of this principle can be found in a case involving a book -- The Cat NOT in the Hat! --that borrowed from Dr. Seuss. Although the author took Dr. Seuss's style, language and characters, his book was not a parody because it did not comment on Dr. Seuss; it simply used Dr. Seuss's style to re-tell the trial of O.J. Simpson. In other words, when Weird Al makes fun of the songwriter or subject matter of the song, it may be a parody but "ridiculing other unrelated stuff is a big no-no." A Weird Al song like "Smells Like Nirvana" may qualify as a parody but the same may not be true for "Like a Surgeon." (If you find this distinction between parody and satire to be artificial, many legal experts agree with you.)
Is permission required? Even if his songs qualify as parodies, a bigger issue may be the amount of material taken from the original songs. By its nature, parody demands some borrowing in order to “conjure up” the original. But even with this more extensive license, less is more when it comes to fair use. For example, in one case, fair use was found for  a twenty-nine second parody entitled, “When Sonny Sniffs Glue,” which altered the original lyric line of "When Sunny Gets Blue," and borrowed six bars of the music. Similarly, very little was borrowed in the Pretty Woman case. The rap group 2 Live Crew only took the opening musical tag and the words (but not the melody) from the first line of the song “Pretty Woman” (“Oh, pretty woman, walking down the street”). The rest of the lyrics and the music were different. Compared to these cases, the extensive reworking of lyrics, combined with the complete taking of musical compositions (similar to what happened here) would make it difficult for Weird Al to successfully claim fair use for his compositions.

Monday, May 16, 2016

Are Teachers Public Figures?

the "involuntary public figure"
Dear Rich: I worked for the public schools in Minnesota and after observing many things I didn't like, I resigned and then wrote an expose that I now sell for my Texas based business. This expose discusses things like union monitoring and teachers lying. A former friend said this might get me into trouble since the law might not consider these school employees "public figures." But don't newspapers publish stories of school employees' misdeeds all the time? Also don't I have a right to tell taxpayers what transpires in our schools? 
You can speak freely, but if you make false statements that damage another person's reputation, that person can sue you for defamation. If you are sued, you're more likely to prevail if the person suing you is considered a public figure -- for example, a celebrity, sports figure, politician, or a public official or someone involuntarily placed in the public spotlight (someone accused of a high profile crime). That's because a public figure would have to show that you published your statements with "actual malice" -- that is, you knew the information was false and you published it anyway. Public figures are held to a higher standard because they are expected to have thicker skins.
Are school employees public figures? Courts in a few states -- Arizona, Connecticut, Illinois, Kansas -- have ruled that teachers are public figures (public officials); and a few states have ruled that they are not -- California, Florida, Texas, Maine, and Virginia. Some lawyers contend that the teacher should be considered a private figure unless serving in an official capacity such as a principal or school superintendent; others have argued that teachers should be classified as public officials.
When newspapers publish stories of teacher misdeeds ... they're typically repeating criminal allegations. In other words, they're reproducing charges that are a matter of public record (and at the same time, the arrest may make the teacher an "involuntary public figure.") If a newspaper reports on a teacher's misdeed that is not yet a criminal charge, the newspaper usually has sufficient evidence to prove the truth, an absolute defense to defamation. That's fine for newspapers with the funds (and insurance) to defend these battles. But no matter what rights you may have, the expenses and risks of defamation claims are serious enough that you may want to reevaluate your reporting.
P.S. Dept. Besides defamation, you may also want to consider whether your disclosures could trigger an invasion of privacy lawsuit.

Friday, May 13, 2016

Will Your NDA Still Work After DTSA?

Dear Rich: I'm pitching a product to a potential licensor soon and planning to use an NDA from your book. After the new law, will your NDA still work?
We assume you're using the NDA from our book, Profit From Your Idea. (You can find similar nondisclosure agreements at our NDA website.) If you're pitching to a potential licensor, you can use the agreement as is. No changes are required as a result of the recently enacted Defend Trade Secrets Act (DTSA).
Employers must include notice. The DTSA does affect agreements with employees and independent contractors, however. Employers are now required to include a notice of immunity in any employee agreement "that governs the use of a trade secret or other confidential information." (The notice should also be included in agreements for independent contractors as well.) An employer who fails to include the provision and later sues under the DTSA is prohibited from recovering exemplary (double) damages and attorney fees from the employee or IC. The failure to include the provision does not prevent filing in federal court under the DTSA. A sample provision looks as follows:
Notice of Immunity from Liability. An individual shall not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal. An individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual (i) files any document containing the trade secret under seal; and (ii) does not disclose the trade secret, except pursuant to court order.

Wednesday, May 4, 2016

Never Say Forever: Music Master Ownership

Dear Rich: The term "in perpetuity" appears in record contracts quite often in regard to ownership of masters yet that same term is quite often the subject of many problems, in particular as they relate to the statute of frauds. I am in the process of negotiating a joint venture agreement with my band. The record label that is planning to sign the band will co-own the masters for 10 years from the release date after which it will give full ownership of the masters back to the band. Since the band is planning on just one album and the joint venture agreement has an expiration date, "in perpetuity" seems to be the only way to go regarding the ownership after the record deal and joint venture are done. Any insight?
For those unaware of the term, "in perpetuity" is legalese for "forever" (and synonymous with "until hell freezes over"). (Note, when it comes to grants in perpetuity, lawyers can sometimes transform "forever" into "whatever").
Should your band acquire the masters in perpetuity? We don't think the "in perpetuity" language is necessary. On a  technical basis, no copyright transfer can be forever. That's because a copyright has a fixed term -- for example, life of the author plus 70 years -- after which the work falls into the public domain and anyone is free to use it. So, in reality, a grant in perpetuity is a grant for the life of the copyright. In any case, the "in perpetuity" language seems like overkill especially if your band wants to later sell or license rights.
Contract concerns. The joint venture agreement should state that after the venture ends, all rights granted under the agreement revert to the band and the label will cooperate with any paperwork necessary to make the reversion possible. (The agreement may also provide for a sell-off period to get rid of existing stock.)
Who's going to receive the reversionary rights in 10 years? What happens if the band breaks up or members leave over the next ten years? If you're concerned about these issues, you'll need to formalize the band's arrangement -- that is, whether it is a partnership, sole proprietorship, LLC, or corporation. That's discussed in our Music Lawbook.
Statute of Frauds. The Statute of Frauds requires certain contracts be in writing to be enforceable -- for example, contracts that can’t be performed within a certain time period (typically one year). If you're using a written contract, the Statute of Frauds isn't an issue.

Wednesday, April 27, 2016

Why Can't I Post Erotic Fiction About a Real Celebrity?

Dear Rich: I wrote a short satirical erotica series about a C-List public figure. She already knows as she mentioned me in an online magazine article. One digital publishing platform removed these works because "publishing erotica regarding living people can result in both you and [the publisher] being sued by the person in question." I want to believe I have a First Amendment right to do this as didn't "Hustler Magazine vs. Falwell" affirm this?
The first amendment and freedom of speech rules limit restrictions by the government, not by private businesses like Apple, Amazon or other digital distributors. So if your publication violates the terms and conditions of Kindle or iBooks or some other digital publishing platform, it doesn't really matter what the Supreme Court said in Hustler Magazine v. Falwell, you're likely to get bounced without any recourse.
What did the Supreme Court say in Hustler Magazine v. Falwell? In the Hustler case, the Rev. Jerry Falwell was the subject of a crude sexual parody that described Falwell having sex with his mother in an outhouse. Falwell sued Hustler and its owner, Larry Flynt, for defamation, invasion of privacy and intentional infliction of emotional distress. The invasion of privacy claim was dismissed, and a jury ruled against Falwell on the defamation claim because the parody was clearly fictitious and because Falwell was a public figure. (Public figures are presumed to have thicker skins than us mere mortals and have a harder time prevailing in defamation cases because of what is known as the actual-malice" standard.) But the jury awarded Falwell $150,000 damages for intentional infliction of emotional distress. The Supreme Court in an 8-0 decision reversed the emotional distress award determining that it was basically an attempt to make an end-run against defamation standards -- that is, if there was no defamation, there should not be a damages award. The Hustler decision (unpopular with some legal scholars) would apply to your case only if the C-List celebrity sued you for defamation.
P.S. Dept. The trial was portrayed in The People v. Larry Flynt, a first-rate, first amendment movie with a super cast.
BTW Dept. Larry Flynt and Rev. Falwell eventually became friends.

Wednesday, April 20, 2016

Can Publisher Say What is Fair Use?

Dear Rich: I'm an academic co-editing a book with a major university press. Out of an abundance of caution, our editor requested we check on permissions for a number of quotations, etc., with the original publishers. None were an issue til now. But one was an 85 word block quotation transcribed from a novel (and properly cited). The subject of the quotation is critically analyzed and discussed by the chapter author and this discussion is used to help frame the remainder of the chapter, which is not about the novel at all. I submitted the permission form to the publisher (a major US trade publisher). Four and half months later, they just informed us that we need permission and to pay a fee. I subsequently received communication from the publisher stating "Please note that it is up to [the copyright holder] to determine whether a quotation falls into fair use." Is this accurate?
No, it's not accurate, though it is scary. If copyright owners called the shots, it would render fair use meaningless and defeat the constitutional foundations of copyright law. After all, copyright is intended to benefit the public and as the Supreme Court has held, rewarding copyright owners is "a secondary consideration." In other words, think of fair use as means of unshackling the copyright holder's monopolistic grip.
Does your use qualify as a fair use? Before we discuss fair use, we provide our usual caveats: only a court can make the final decision; and you may not be able to afford being "right." Although judges consider the four fair use factors when making a fair use analysis, we think the key issues in your determination are the amount of material used (in relation to the complete novel), whether your use is transformative, and whether it serves as a"market substitution" for the novel. Using that criteria, we think your quotation qualifies as a fair use.
Less is more. Although courts discourage blanket rules as to the percentages permitted for fair use, as a general rule, less is almost always better. For example, it was a fair use when a biographer paraphrased less than one percent of the material from unpublished letters of author Richard Wright. Considering that the word count for a typical novel ranges from 70,000 to 115,00 words, your use of 85 words is negligible -- probably less than one-tenth of one percent.
Transformative/market substitution. The Supreme Court has emphasized "transformative use" as fair use benchmark. Providing a commentary and critical analysis of 85 words of text from a novel seems to clearly fulfill a transformative purpose. Also crucial to fair use analysis is an underlying economic issue: Does your use (reproducing 85 words) create a market substitute for the original work (the novel)? That is, does it in any way displace the market for the novel? We think not.
What to do? Based on the information you've provided, the publisher is either ill-informed or fishing for fees (or some combination). Unfortunately, the publisher is also well-heeled and capable of bankrolling an expensive lawsuit. On the other hand, the publisher may be bluffing, or may come to its senses realizing it can't afford the lawsuit, the potential negative publicity, or worse still, the legal precedent that may result from the case.
P.S. Dept. Check your contract with the university press. If it requires you to indemnify for lawsuits, you would have to foot the bill.

Sunday, April 10, 2016

How Do I Stop Compulsory License?

Dear Rich: How does one prevent a compulsory license from being obtained? For example, what if I don't WANT anyone else recording MY song? Can a publisher and/or a copyright owner refuse to grant a compulsory license? What if some non-respectable band decides to record and release a song that I have published, which then tarnishes my band's reputation with our fans? Nobody ever gets clearance to cover Led Zeppelin without authorization. How does that work? I mean, doesn't a compulsory license kind of render copyright null and pointless?
First, a little background: The compulsory music license permits a musician or record company to distribute a version of your song on a compact disc, vinyl, or digital download (all referred to as "phonorecords") if they pay the statutory rate, currently 9.1 cents per copy. The compulsory license does not permit you to use a song in a movie, TV show, commercial or a music video. Those uses would have to be licensed separately. The compulsory license is available only after you have first distributed copies of the song to the public. It's not available if you never distributed your song as a phonorecord -- for example, if your song was only used in a movie or TV show. The compulsory license is also not available if the musician covering your song wants to make substantial changes to the music or lyrics -- for example, Weird Al Yankovich negotiates permission* to create his parodies. The compulsory license has been around for over 100 years and was considered a boon to songwriters when it was first enacted because it guaranteed compensation for "mechanical" reproductions. Should your band sign with a label, the label is required to pay songwriters the compulsory license fees (or a lesser negotiated amount known as a three-quarter rate).
Right, you had a question. As for your concerns about another artist tarnishing your reputation, we have doubts about that. Other artists might release versions of your song that you don't like but we don't see why that would tarnish your cred. We didn't care for Britney Spears' remake of "Satisfaction," or Jessica Simpson's version of "These Boots Are Made For Walking," but they didn't diminish our love for the original versions (and from a financial perspective, we think the songwriters were okay with these lesser gems, as well). And of course, sometimes, a mundane cover reveals something unexpected or sometimes a cover is so good, fans believe it is the original version.
Copyright realities. Finally, you need to keep in mind the goal of copyright: the government is granting a limited monopoly because it wants to encourage creativity. The compulsory license fulfills that purpose. In fact many people wish that compulsory licenses exist for photography as well as for all intellectual property.
* BTW -- here's the happy ending to the Weird Al/Gaga story)

Thursday, April 7, 2016

Does A Federal Trademark Applicant Need Physical Presence in U.S.?

Dear Rich: Can a non-U.S. citizen obtain a federal trademark application?
Yes, a non-U.S. citizen or company can register a trademark in the U.S. However, if the foreign-applicant doesn't reside or have a physical presence in the U.S., the applicant will have to  appoint a domestic U.S. representative -- that is, someone residing in the U.S. (typically a trademark attorney) who is appointed to receive notices and correspondence regarding the trademark and application. Keep in mind we're only talking about applications for U.S. registration -- that is the foreign citizen or company must be using the mark on goods or services within U.S. borders (or have a good faith intent to use it). A non-U.S. citizen or company that has registrations already issued in the applicant’s home country (that cover the same mark and essentially the same goods and/or services) can also seek federal registration under Section 44(e) of the Lanham Act.

Thursday, March 31, 2016

Why Is It So Hard to License Pop Music for Podcasts?

Dear Rich: Are there standard fees negotiated for using pop music in podcasts? Does music licensing work as it does in commercial use, where one must obtain both master and mechanical licenses?
No, unfortunately, music licensing for podcasts doesn't work as predictably as it does when licensing music for CDs, downloads or streaming. The music industry has made it especially difficult for a podcaster to license pop music and we assume that most podcasts that use Adele, Taylor Swift or any other contemporary music in its intro, as background, or as a featured musical track is either infringing copyright, or possibly is excused under fair use principles.
Why is it so hard to obtain the right to use pop music in a podcast? Pop music is based on two copyrights: a musical works copyright owned by the songwriter or music publisher that protects the musical composition; and a sound recording copyright owned by the artist or record company that protects the recorded version of the song. In order to reproduce a song on your podcast you need permission from both copyright owners.
Music publisher permission. Because the song copyright owner is usually a music publisher, you can find the contact information by searching the song records at,, or Once you know that, you can contact the publisher directly and negotiate a podcasting license. Alternatively, you may be able to do obtain the license from the Harry Fox Agency, which represents many publishers. However, how Harry Fox -- which classifies podcasts as user generated content -- accomplishes the licensing is a mystery to us (and the company hasn't responded to our inquiries).
Sound recording permission. In addition to the song copyright, you would need to obtain the rights for the sound recording copyright. SoundExchange represents the rights of sound recording copyright owners, but alas, it’s not empowered to license music to podcasters. So, you’ll need to determine the owner of the sound recording copyright – most likely a record label -- and then contact the company and negotiate a sound recording license. As you can imagine the whole experience may prove to be frustrating, expensive, and completely fruitless. Even more frustrating, if you plan to use music with a video podcast, you would also need what is known as a synchronization license from the music publisher and a master use license from the sound recording owner.
Podsafe music. That leaves podcasters with two choices: operate without permission (and hope to be excused as a fair use if hassled) or acquire Podsafe music. One source of Podsafe music is under Creative Commons license -- go to and choose a music resource such as SoundCloud, and type in your search – for example, blues, rock, or electronic. Note that sources such as SoundCloud may offer a Creative Commons License for a remix of popular music, say a Janet Jackson remix. In these cases, beware, that the provider may only be granting a license for the sound recording, not the underlying musical composition. If the provider has created and owns the underlying song, then you are good to go and no further permission is necessary. Also, although not free, the musical loops that come with GarageBand (as well as loops from other providers) can be used to construct Podsafe intros and backgrounds. And of course, if you have a budget for it, there are always production music libraries (PMLs) or you can hire a musician to create music.

Wednesday, March 23, 2016

Can I Origami TV and Movie Characters?

Dear Rich: Some origamists create figures that resemble characters from tv shows, movies, comic books, etc. When the diagrams to fold those figures are published in an origami book or magazine they often have a different name unrelated to the official name of the character they resemble. Is that an effective way to avoid infringement?
Renaming a character will not prevent a copyright infringement lawsuit any more than retitling a song or book. At best, it may delay or prevent the character's owner from finding the infringement and hassling you. Under trademark law, the same is true; retitling the characters with a dissimilar name will not prevent a  trademark infringement claim based on the character's appearance.
A worthy claim? But, more importantly, we're not sure that either copyright or trademark infringement is occurring, and if it is, whether a character owner would find it worth pursuing. One reason is that unlike other DIY art projects -- for example, a paint-by-numbers illustration -- the origami pattern doesn't resemble the character. (It's a little like being sued for explaining how to make a balloon version of Snoopy.)
In addition, the damages -- the economic injury suffered by the character's owner -- seem difficult to quantify because the origamist is not selling copies of the origami characters or products containing the character (which are more likely to trigger legal action). At best, if the origamist publishes a photo of the origami character, that may give rise to a derivative copyright claim ... but again, the lack of substantial damages and the tenuous legal case probably preclude any real problem over that. In short, it's possible, but unlikely that the origamist will get hassled.
P.S. Dept. We've written about origami in a previous post ... and here's some origami legal news!

Tuesday, March 15, 2016

Wants to Digitize Yearbooks and Student Newspapers

Dear Rich: I am part of an effort at a California community college to assist in digitizing and digitally hosting our college's history. Students are hoping to digitize/host: archived copies of the student newspaper, yearbooks as well as the histories of four of our presidents. Concern has arisen that these works may be copyrighted and we, as the college, may not be the copyright holders, rather it may reside with the author - who on some of these publications is unclear. None of the publications have any copyright information listed. We're under the impression that all of the works were either commissioned by the college directly or by college entities (associated students/student affairs office/communications department). We're wondering if, there is a copyright on this seemingly non-copyrighted information? If there is, does it seem likely that we are the copyright holders? Would this fall under fair use? Our intention is to offer this material for free, online, for anyone interested in researching the College's history.
Your question raises lots of copyright issues (e.g., how the works made for hire law affected older works versus post-1978 works, whether photographers may own the copyright in old yearbook photos, etc.) but perhaps we can just cut to the chase and say that we don't imagine you'll face legal challenges over your digitization efforts. We say this partially based on copyright law. First, it is possible that the college may own some of the copyrights, or alternatively, that some of the copyrights are public domain (for example, due to a failure to renew). Second, the trend in fair use law is to permit the digitization of works for research and archival purposes. More importantly, it is highly unlikely that anyone who contributed to this content (yearbook photographers, student newspaper writers, researchers) will believe they have a copyright, will see the work, and will go to all the effort to bring an infringement action for such an archival use. In any case, with this set of facts, if someone does rise up to challenge your digitization, your prompt takedown of the offending work will probably eliminate any financial liability.

Wednesday, March 9, 2016

Reviewing Apps on YouTube

Dear Rich: I am a relatively new YouTuber that is focusing on how to help other parents of autistic children. I thought it would be helpful to positively review different apps that I have used with my child. The first review that I wanted to do was a group of four apps that were all created by the same person. I have looked at all four apps in search of a licensing agreement. Basically, I wanted to use the apps on the iPad while I commented and explained how they worked -- usually in about 60 to 90 seconds each. Do you think this would need written permission? It would be unlikely that an app developer would object to your use of screen shots in a YouTube review. Because your use is limited (90 seconds of screen time) and is for purposes of commentary and criticism, it seems to fit squarely within fair use boundaries. One court has already ruled that screenshot reproduction, even for purely commercial purposes, constitutes a fair use.
Getting permission is always better than relying on fair use. If you have permission, there's no need to worry about pesky cease and desist letters or DMCA takedown notices. The downside to asking is that it alerts the owner of your intended use in case for some reason they're opposed to it. Also, before you ask, check the apps end user license agreement (EULA). The EULA may give you a limited right to use screenshots for review purposes. If not, you can email the owner and get permission.
Just saying' dept.  Some people have successfully claimed fair use even after a copyright owner refused a request for permission.

Monday, March 7, 2016

Anti-Development Group Wants to Post Design Plans

1908 Sears Roebuck Home Kit Sold for $1548
Dear Rich: I am working for a group of neighbors taking action against a proposed development in our neighborhood. We are establishing a Facebook page and an Internet petition and are unclear about the extent to which we can use screen captures of the design documents that the developer has submitted and will submit to local authorities (land use control, city council, etc). We believe that showing just a portion of their design (such as the overhead schematic of the entire development) to illustrate what the petition is against would constitute fair use. What is the extent to which we can legally use their documents in our campaign?
Your unauthorized reproduction of designs and schematics may trigger an angry response from the developer but here are three strategies that could deflate any incoming lawsuits:
The documents are not protectable under copyright law. Not all building designs are protected as architectural works under copyright law, only original buildings designs created after December 1, 1990 that show permanent “humanly habitable structures." In other words non-original building designs (designs copied from another source) as well as walkways, landscaping and similar outdoors components are not protected. Also elements of the design that are functionally required - for example windows, door and other staple building components are not protected.
You are permitted to use the designs as a fair use. Your limited use of the design for a transformative noncommercial purpose seems to be a classic example of fair use (Here's where you can review the fair use caselaw). However, you may need a legal defense fund because the final decision about fair use is made by a court.
The developer is seeking to silence opposition in violation of a SLAPP law. If you believe someone is suing to silence you from participating in a public discussion about the new development, check to see whether your state has a SLAPP law (short for strategic lawsuits against public participation). Claiming a violation of the SLAPP law may enable you to have the case dismissed and have your attorneys fees paid as well. Note: SLAPP laws are not a defense to copyright infringement per se; they are a claim that the copyright lawsuit is really being brought to silence opposition. To succeed you must demonstrate that free speech is at issue and that you are likely to prevail on your copyright claim.

Monday, February 15, 2016

Why Do I Have to Pay to Use My Own Work?

Dear Rich: I have written regular columns, articles, abstracts and summaries of research that I've done for various publications, most often for the Institute of Electrical and Electronics Engineers (IEEE). Recently I wrote something for a Wiley Encyclopedia in which I included several graphs and figures of my own work that had been included in IEEE publications. When I explored how to request copyright permission from IEEE for this purpose, I found that it could cost hundreds of dollars to do this. This is all material that I generated. Why should I have to pay for permission to use my own work?
We can't confirm or deny that you need to pay for permission to re-sell your work but we can look at some factors that will determine the answer.
Are you "using" the work? The way you framed your question implies that you are using the graphs and figures. You may think this is hair-splitting, but we disagree; we think you are selling Wiley the right to use them. IEEE offers some fairly liberal republication rights to contributing authors. For example, under some IEEE publishing contracts, it's possible for authors to reproduce their work at personal websites, employer websites and at funding agency websites. IEEE also makes it possible for authors to reproduce their works under Creative Commons license. What IEEE seeks to avoid, like many publishers, is your sale of the same material for a competing commercial use.
What's in the figures and graphs? Copyright doesn't protect facts, processes or methods, nor does it protect "works consisting entirely of information that is common property and containing no original authorship." So, assuming your charts and figures consist of publicly-available data, you may be free to re-create those charts, perhaps with minor variations in appearance, and in doing so, avoid any claims of infringement. It's also possible you may be able to defend your wholesale use of the charts (without changes) under a theory known as the merger doctrine. The trouble with these types of claims is that your contract with Wiley may require that you warrant that your work doesn't infringe and there is no guarantee that you will prevail if IEEE brings an infringement lawsuit. In general, your chances of success increase the more simplistic the chart -- for example a simple bar graph or pie chart.
What's in your contract? We assume you were not an IEEE employee and that you contracted with IEEE when you originally sold the materials. (If you were an employee, IEEE would likely own all copyright under work made for hire rules.) We also assume that you've reviewed your contracts to be sure what rights you relinquished. If not, you should do so, now. Publishing contracts vary  and although it's a long shot, it's possible you retained some rights, some rights may have reverted to you, or in the case of decades-old contracts that certain electronic rights were never acquired.

Monday, February 8, 2016

Mad Hatter as Trademark for Kitchenwares

Dear Rich: If a literary character is in the public domain, like 'The Mad Hatter' could I create a brand of kitchenwares called 'The Mad Hatter's Kitchen'? I understand I'd have to make sure any imagery didn't look like the Disney versions of the characters.
If you're registering the name "MAD HATTER" beware that Disney has registered at least seven MAD HATTER trademarks for, among other things, books, films, figurines, backpacks, clocks, jewelry, action figures and cell phones. Unless Disney can demonstrate a likelihood of expanding into kitchenwares, you should be entitled to register your mark (assuming you meet all other trademark requirements). On the other hand, Disney is an aggressive trademark owner and has a tendency to hassle those seeking MAD HATTER registrations for various goods (including cannabis). Prior to applying for registration, you should perform a trademark search of Class 21 (household utensils) and Class 11 (appliances) and Class 8 (hand tools).

Friday, February 5, 2016

University Claims Copyright on Formula

Dear Rich: I am looking to license a copyright for a creative process -- a method of calculating something -- that was developed within a university. I developed my own formula and process for which a provisional patent application was filed. One of the developers developed the initial copyright with the university and now they are claiming a derivative work. We have agreed to a royalty rate from our technology but can not find an example to compare for a rate. The original copyright is maybe 1% of our overall new technology. Can you help me with a suggested fee?
Much as we'd like to help, we wouldn't know where to start. The fact that the original university innovation accounts for 1% of the overall technology is not a helpful indicator, especially if that innovation contributes more than 1% of its value. This is why intellectual property valuations are complex and typically managed by experts.
Copyright on process? Our other concern is that the university is claiming a copyright on a process. The Copyright Office states that "ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices" are all ineligible for copyright protection. At best you can copyright the description, explanation, or illustration, that is used in connection with the procedure or process. So, we're unclear as to how someone can assert a copyright claim over material that is not copyrightable. Normally, to stop someone from using a process or method, the owner would need a patent (or an obligation to maintain trade secrecy, if the process were a trade secret) not a copyright. In addition, the fact that the university process may not be protectable could affect the patentability of your formula (should you follow up with a patent application).
Maybe we're wrong ... Perhaps we are misinterpreting what's at stake - -for example, maybe you are referring to the use of software code protected under copyright. In any case, with so many factors in play -- the university, the developers, patents and copyrights -- we think you're best off consulting with an intellectual property attorney.

Monday, February 1, 2016

Can I Use Feminist Phrase on T-Shirt?

Bella Abzug
Dear Rich: I want to use the phrase "Women belong in the House, the Senate, and the Oval Office" on a t-shirt. My group will be selling these shirts as a fundraiser. The quote doesn't seem to be attributed to anybody, but lots of online stores have shirts with the same phrase. If we use a different design from those retailers, are we in the clear since it's a short phrase? 
You should not run into any problems using the quotation on t-shirts. You're correct that copyright doesn't protect short phrases although that would not be an issue here because nobody is claiming authorship of the quote. Note that a variation on the phrase was popularized (and sometimes attributed to) Bella Abzug.
You are also okay because nobody has sought to assert trademark rights to the phrase. Curiously, in 2010 an applicant from California applied to the USPTO to register the phrase, "A Woman Belongs in the house the White House the House of Representatives the House of Congress the House of the Senate the Mayor's House the Governor's House the Courthouse" on caps and t-shirts. The application was approved by the USPTO but abandoned before registration. Similarly, a 2007 application for A Woman's Place ... is in the White House" was approved for registration but was abandoned by the applicant.

Wednesday, January 27, 2016

How Does Fotog Dad Leave Copyrights to Kids?

Dutch children photographed at Ellis Island
Dear Rich: My dad is a fine-arts photographer. His photographs have been exhibited in gallery shows many times. On his computer, he has many thousands of images, pretty much all the same quality as those he has shown. He does not mention his intellectual property or copyrights in his will, only"his artworks" meaning the ones hanging on the walls of his house. What should he write in his will if he wants his five kids to be able to split the profits equally from these images, should they ever get published within the copyright period but after his death, and actually produce a royalty or money from their sale? 
We can't provide the language to use in a will -- state laws differ and we're not an estate planning expert -- but we can highlight five important issues.
Artworks. You state that your Dad is using the term "artworks" and that it refers to pictures hanging in his home. To avoid confusion your father may want to make it clear that the term "artwork," as currently used in his will, does not refer to the prints of photographs he created.
Photo copyrights and photo prints. The existing prints of your father's works are tangible assets; the copyrights in the photos are intangible assets. Both should be transferred by will. In other words, your father must specifically reference the copyrights when transferring their ownership. If he fails to do so, the copyrights will likely fall into what is known as the residuary estate and be divided according to the residuary estate instructions.
Copyrights. Your father owns the copyright in the photos unless he assigned rights to someone else or he created the photos as part of his employment. If he grants rights to all five siblings equally they would all be co-owners (and each could exploit rights as long as the other co-owners were compensated). This may not be an ideal method for exploitation in which case, the siblings may decide to transfer all rights to another entity -- for example, an LLC -- and set up a system for exploitation and decision-making.
Any existing deals. If there are currently royalty-generating deals in place, your father's will should assign the right to receive royalties from those deals to the children.
Bypass the will and assign them now. Your father may want to make the grant of rights prior to death. In that case he need only execute an assignment of copyright to the children as co-owners.That decision may require consultation with an attorney to determine if there are any IP, tax, or estate considerations as explained in this article.
P.S. Dept. Now may be the time to organize and register group collections of your Dad's photos

Monday, January 25, 2016

Is Music Compulsory License Needed for DVD of Film?

What if a filmmaker wants to record a cover of a song for use in a film and has no plans to put the cover song on a soundtrack CD or to make downloads available. Say the filmmaker hires his musician friends to record it, only for use in the film. I know the filmmaker would need a sync license. But would the filmmaker need a mechanical/compulsory license if the cover song were never sold on CD or downloads?
You are correct that a sync license should be negotiated between the filmmakers and the owners of the song. However, a compulsory mechanical license would not be needed. This is true, even if the filmmakers issued DVDs or downloads of the film. That's because a compulsory license is only granted on phonorecords -- copyright lingo for media that embodies only sounds (thereby excluding audio-visual recordings such as movies). A DVD or download of a film is not a phonorecord.

Wednesday, January 20, 2016

Is It Legal to Trash Old Computer With Licensed Software?

Dear Rich: I have a creaky ancient computer that's long outlasted its design life. Some of the software installed on the computer is under various proprietary or open source licenses (GNU General Public License and so forth) that either prohibit transferring the software at all (many proprietary programs) or impose onerous restrictions on doing so (GPL-licensed software requires you distribute the source code). My state requires defunct electronics to be appropriately recycled -- but, doing so means transferring the device, which may contain code that can't legally be transferred. In most cases, with the GPL, you're not even allowed to ask the destruction service to sign an agreement not to access or copy the licensed software. So, from a legal standpoint, can these license terms actually bar you from legally disposing of a dead computer or device?
We salute your obedience to your software licenses but we feel you are overthinking this one. Software is licensed primarily to control its duplication and limit its uses. If your ultimate objective is to deep-six the computer and its licensed programs, a licensor would have little motivation to spend the time and money to go after you -- assuming there is some way the licensor could even learn of your actions.