Thursday, August 17, 2017

Can Trader Joe's Stop My Book?

Dear Rich: I wrote an 84-page culinary history book proposing that Trader Joe's changed the way America eats. I self-published it recently (as it is their 50th anniversary this year.) The book analyzes a March 1982 flyer, which TJ's had mailed to our house. I scanned the flyer and cut up the food descriptions, then organized them into types of food to provide commentary on food "then and now" as well as commentary on the writing in the flyer as the company encouraged people to discover new foods. There are multiple disclaimers on the book that this was not published by TJ's, and the text of the book is all positive. Once I published the book on Amazon, they stated I did not have the right to use the flyer images. Is this fair use? The illustrations and artwork are all original. There is no copyright statement on the flyer! Only an (R) to trademark the flyer name of "Insider Report."
We've reviewed your book and we're not sure why the company is objecting.
No copyright, no cry. We believe that the failure to include copyright notice placed the flyer into the public domain, making it available for anyone to use. For works published before March 1989, authorized publication without notice typically doomed works, unless excused. (By the way, the U.S. was the only country following this rule.) Even if the flyer were not in the public domain, you have one of the stronger cases for fair use that has crossed the Dear Rich Staff's desk. Only one of the four fair use factors -- the amount and substantiality of the portion taken -- weighs against you. Otherwise, your reproduction of this 35-year old advertisement is highly transformative and should not deprive the $13-billion-a-year chain of any potential market share.
Trademark rights. A company can object if its trademark is used in a manner that confuses consumers as to source --  for example, consumers believe your book is sponsored or authorized by Trader Joe's. This is unlikely considering your prominent disclaimer and your failure to include the company's distinctive lettering or logos. Further, as we've written before, the use of a company's trademark is permitted for editorial purposes, which is clearly the case here. We also don't think there's any trademark dilution.
Bottom Line Dept. It's difficult to understand why the grocery chain is objecting to your book, especially considering how TJ-positive it is. We can only chalk it up to too much Cookie Butter.
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Thursday, August 10, 2017

Can We Get Patent Rights Back From Our Employer?

Dear Rich: Almost two years ago I had an idea and with two other guys that I worked with. We developed a product completely outside of work (none of our jobs were in hardware design etc.). We took almost a year to get the product right, but at the end, we had 10 prototypes created and decided to let our boss know about it as he could benefit from it and we could benefit from his funding us. We came to a verbal agreement that he would fund our further development and that we could use time/space at work to further work on it. He would loan us funding for inventory and circuit changes etc. In return, we would give his company exclusivity for one year before we sell it publicly. That would give him the advantage in the market and after the year we would also give him favored nations pricing. He said he would pay for the patent and wanted us to assign it to him as insurance that we would pay off the debt to him. Once we did that, he would assign it back over to us (it did sound strange but we trusted him). We did try to get our agreement in writing. We have various emails and instant messages with him and the point of contact he wanted us to brief. In hindsight, it seems he was stalling because he recently sold the company and is claiming that we never had an agreement or that since we assigned it to him we don't own anything. But we were never compensated and would never have assigned without the agreement we came to. So, in our minds, we wondered whether it was an assignment based on fraud or was unconscionable? Why would we assign without getting anything at all? Is there anything we can do?
Unfortunately, like many inventors, you've lost control of your invention. To get the rights back, you need to (1) convince your employer to assign the rights back to you (through negotiation or litigation), or (2) convince a judge to invalidate the patent assignment. This may be difficult (and expensive). Note: your employer has only prospective rights. That is, there are no patent rights until a patent is granted.
The Assignment. You and your co-inventors signed a written assignment transferring the patent application for "good and valuable consideration, receipt of which is hereby acknowledged." That document was recorded at the USPTO and your employer subsequently transferred the patent from a corporation to an LLC. Assignments are presumed to be valid
Was the assignment fraudulent or unconscionable? Fraud, also known as misrepresentation, occurs when a false statement is made upon which another party justifiably relies, resulting in damage. In other words, if you can prove that your employer lied to you (or concealed the truth) and you had reason to believe the lie and were damaged, a court may invalidate the assignment. (Damage may be difficult to prove because a patent hasn't yet been granted.) A contract also won’t be enforced if it is unconscionable or grossly unfair. This almost always occurs in situations where the bargaining power is severely imbalanced and the party with more power takes advantage by forcing unfair conditions, clauses, or waivers on the other party. Fraud is often successful as a contract defense; unconscionability is not as successful.
The employment relationship. Further complicating your situation is your relationship with the employer. Ownership rules -- "employed to invent" and "shop rights" -- are more difficult to sort out if (1) the employer funds development, (2) the employee works on the invention on the job, or (3) the employee uses company facilities. Another issue is whether the invention is something that is related to the employer’s business or actual or anticipated research or development.
What to do? We suggest you retain a patent attorney to analyze the situation, and if necessary, apply pressure on your former employer to work out a solution. We doubt whether you want to bear the cost of patent litigation, so be prepared to compromise. You may be able to save on costs by using the services of an attorney connected with California Lawyers for the Arts.

Wednesday, August 2, 2017

Should I Submit Fabric Designs to Vida?

Dear Rich: I built my business on printing my designs on fabric and making stuff. Now there's a handy service (VIDA) that makes stuff with your uploaded design and sells it to others. That makes it easier. I am just leery of any "catches." Can you look at the licensing agreement?
VIDA is a socially responsible e-commerce company, launched in 2014, that connects designers with manufacturers around the world and sells the resulting products at its site. Artists and designers submit original fabric designs which, if accepted, are converted to fabric and used for apparel and housewares merchandise. The designer receives a 10% royalty for each sale.
Nonexclusive and Exclusive Licenses. According to Vida's Designer's Submission and Licensing Agreement, by submitting your designs, you give Vida a nonexclusive license to reproduce  your design primarily for marketing and promotional purposes.  Once an order is made, you give Vida exclusive rights to sell your design in the designated categories (classes of goods that you selected when you submitted your design). (Here's an overview of the merchandise licensing process.)
How does Vida's license stack up? 
  • Royalty -  Artists receive 10% of net revenue (gross revenue minus discounts, shipping and similar expenses). Fabric design royalties typically range between 2 and 10%. 
  • Length of licenses -  You can terminate the nonexclusive license thirty days after providing notice. You can terminate the exclusive license within one year after providing notice. Most fabric licenses are for 1-3 years with one year renewable terms.
  • Limitations - The exclusive license is limited to the designated categories that you selected when you submitted your design. If you don't want Vida to have exclusive rights for certain goods, don't select them as designated categories.
  • Reliability of the licensee - The company appears to be well-funded and has been around for almost three years (a good sign for a start up). 
Though the agreement is relatively friendly to artists, there are some details we are not wild about -- for example, the ability of Vida to freely assign your exclusive rights. You can compare Vida's agreement with a model license agreement and explanation.

Monday, June 5, 2017

Acquiring Rights From Co-Author

Dear Rich: Currently, my story is unpublished because I had a writing partner who was working on the book with me. Unfortunately, he has quit the project, but I would still like to continue it and see it towards publishing. What are my steps in signing away his portion of the story and giving me the rights? What are the documents he'll need to sign and how may I get those?
The document you'll need is an assignment of copyright, which is a permanent transfer of rights. It must be in writing (not an oral agreement).
Basic assignment. Below, we provide a very basic copyright assignment that should work for you. (For more sophisticated assignments, see our Getting Permission book.) Your co-author is the "Assignor" and you are the "Assignee." Only the Assignor needs to sign the assignment agreement. If you are paying for these rights, you should acknowledge your payments to your co-author somewhere in the agreement.
What if you signed a co-writer agreement? If you have a written co-authorship agreement (sometimes known as a co-writer or co-ownership agreement), you may have to follow the requirements of that agreement as to resolving disputes or other co-ownership issues.

Assignment of Copyright By Co-Owner

I, _________________________ (“Assignor”), am co-owner of the work entitled ______________ (the “Work”) and described as follows: _______ _____________________________________. For consideration which I acknowledge,  I assign to ______________________ (“Assignee”) and Assignee’s heirs and assigns all of my right, title, and interest in the copyright to the Work and all renewals and extensions of the copyright that may be secured under the laws of the United States of America and any other countries, as such may now or later be in effect. I agree to cooperate with Assignee and to execute and deliver all papers as may be necessary to vest all rights to the Work.

Signature of Assignor

___________________


Saturday, May 27, 2017

Can I Use Couture Photos for Wikipedia Entry?

GEORGE HALLEY -  1968 COTY "WINNIE" AWARD
Lace Baby Doll Dress with Flower and Bow

Dear Rich: My father was a photographer who at times worked for newspapers and free-lance for himself. He died in 1972 and the works in question were taken in 1957 and the early 1960s, none of which were copy-written. I have inherited his prints and negatives. He took publicity pictures of the works of dress designer George Halley, of whom I have created a Wikipedia entry. I would like to enter my father's works that he owned (not the newspaper work) in the Commons and then link to them from the article as public domain work.
If the photos were published before 1964, they are probably in the public domain and free for anyone to use. That's because works published before 1964 had to be renewed and we're guessing that your father's photos were not renewed, (less than 15% of copyrighted works were). BTW, a photo is "published" when it is made available to the public on an unrestricted basis -- for example, if the photos were reproduced in a magazine or newspaper.
If the photos were not published ... In that case, the photos are protected under copyright until 2042 (70 years after your father's death). Assuming (1) you inherited the copyrights upon your father's death, and (2) your father didn't transfer copyright in the photos under a work for hire agreement, you would control copyright in the photos. As copyright owner you could make them available under a Creative Commons license and reproduce them at Wikipedia. BTW, a CC license doesn't place the work in the public domain (as we explain here). However, Creative Commons can help you make your work public domain if that is your intention.

Saturday, May 13, 2017

Can We Use Ancestry and DNA Information in Book?

19th Century imagery used by abolitionist organizations in
 their efforts to turn northern Americans against slavery. 
I’m helping two authors with a manuscript about their experiences researching their ancestors who were slaves. So they go back to the slave period and continue up to present day. I am unclear about the legal rights associated with certain material including: (1) publication of information found in public records, (2) publication of information from church records, historical society records, family bibles, etc. (3) publication of information gained through personal communication, other family members, community members, or fellow ancestry.com members, or others doing family research, (4) publication of information about DNA test result sharing on ancestry.com type sites. (The information is related to finding other relatives.) (5) publication of family photos taken by family/friends, (6) publication of information from personal communications, informal interviews. Relatives are named and identifiable. So their contemporary descendants can identify their ancestors. I am thinking they will want to inform family members, prior to publication, about the inclusion of information/photos in their forthcoming publication that relate to them.
There are sometimes moral and ethical issues when you start digging up the roots of the family tree. (Do you really want the world to know that your mother's grandfather was charged with indecent exposure?) As for legal concerns, here are four questions to consider:

  • Are you violating the right to privacy? Invasion of privacy can occur when private or embarrassing facts are disclosed about a living individual without relation to a legitimate public concern. This is referred to as "Disclosure of Private Facts." Dead people do not have a right to privacy. 
  • Have you fact checked any statements that could cause damage to a person's reputation? False statements can give rise to libel/defamation claims. For example, you falsely claim that a relative was born out of wedlock. As with privacy, the dead cannot be defamed.
  • Are you violating copyright law? Copyright doesn't protect facts or ideas so you'll have no problems publishing facts found in public records, culled from historical and church records, or provided by an interview subject. Copyright doesn't protect unpublished works whose authors died before 1947 or published works that were published before 1923. You can obtain more details on copyright expiration at the Cornell website. If you interview someone and want to use more than facts -- for example several paragraphs of text -- it's usually best to use an interview release. If you know who holds copyright on a copyrighted photo it's prudent to obtain a permission agreement. You do not need a photo release from the people pictured in the photos. Finally, if challenged, you have fair use as a possible defense. 
  • Do you have permission to reproduce DNA results? If the DNA test taker consents to publication, you are safe publishing DNA test results. Sites like ancestry.com have privacy policies that allow you to reproduce your test results.
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Sunday, April 9, 2017

Lyric Writer Wants to License Song

Felice and Boudreaux Bryant,
cowriters of Bye Bye Love, Wake Up
Little Susie, All I Have to Do Is Dream,
Rocky Top, and other great hits



Dear Rich: I write song lyrics and about three years ago collaborated by email with a composer. He sent me a musical composition that I have since written lyrics to and would like to pitch for a TV ad campaign and CD production. Unfortunately, I get no response from email and Soundcloud page from composer is inactive. Can I use music legally or do I have to have written permission? Can't think of any other ways to contact person to get authorization. 
It sounds as if you and the composer -- like Felice and Boudreaux (left) -- intended to combine words and music into "inseparable or interdependent parts." That makes you and the composer joint copyright owners of the song.
Rights of joint owners. With one exception (see below), joint copyright owners can separately grant permission (a license) for someone to use the song, provided that each writer shares the income with the others. If the writers have not agreed on the percentages, courts often start with the presumption that all songwriters contributed equally. Because you cannot locate the composer, you should put aside the composer's share of any income as a demonstration of your good faith.
First authorization of song. There's one question that's unresolved: Do all cowriters have to consent to the first release of the song? We think so because the first release makes the song available for anyone who pays a fee to record the song. Keep in mind that others may disagree because there is no explicit requirement in copyright law that all writers agree to first release. If you've used best efforts to locate the composer and you've documented your efforts, you may be better served disregarding our advice in this situation.

Friday, March 31, 2017

Pre-1978 Film Restoration and Copyright

Dear Rich: I'm working on a project digitizing and restoring various films, all of which were released before 1978. (a) Some films have a copyright notice such as “Copyright 19xx John Smith” notice in the credits. Is the copyright good for 28 years? (b) What happens if a work has a notice such as “Copyright 19xx John Smith” but was never registered? Can someone else other than the original creator or transferee step forward and file a copyright claim before the 28th year ends? (c) If a work did not have a notice and wasn't registered as above, can someone (original owner, or other) come forward before the 28th year ends and files a new copyright on it? (d) If a work has a “Copyright 19xx” notice in the credits but no name or entity, is the copyright valid?
A film that is published before 1978 is subject to the Copyright Act of 1909. That copyright law had certain restrictions and formalities that are not included in the current act, three of which are relevant to your questions.
  • Films published pre-1978 without copyright notice are probably in the public domain. 
  • Films published between 1923 and 1964, that were not renewed 28 years after publication are in the public domain. 
  • Just because a pre-1978 film falls into the public doesn't mean that all of the elements of the film -- for example, soundtracks or underlying story -- are also in the public domain.
Registration or Renewal? Except in certain cases, registration was not a requirement of copyright under the 1909 Act. Renewal, however, was a condition of continued protection. The 1909 Act provided for an initial term of 28 years, and if renewed, a second 28-year term. It is estimated that less than 15% (see fn. 8) of works were renewed. (You can check renewal records for more information.) Renewal was not required for works published after 1963; it was automatic. Finally, the copyright term for all works still under copyright in 1998 was extended by twenty years (for a total of 95 years). So, for example, if a film was published in 1965, it was automatically renewed and is protected until 2060.
Who can register a work? Only the author or the author's transferees, or someone with their authorization, can apply for registration. Film restoration, though it requires great skill and craft, does not demonstrate sufficient originality, by itself, to claim a derivative copyright in a public domain film. However, film restoration plus additions or revisions -- for example, a re-recorded soundtrack and commentary -- may be the subject of copyright. Claiming ownership in a purely public domain work is verboten.
Copyright Notice. Until March 1, 1989, copyright notice (with certain exceptions) was required on all copies of a pre-1978 work published with the authorization of the owner. These three requirements -- notice, publication and authorization -- were the subject of many lawsuits. 
Publication. For example, a film was not considered "published" when it was displayed or "performed" in a movie theater. Publication of a film, according to attorney Stephen Fishman, occurred when "prints of the film were transferred to an independent film distributor that made several hundred copies and sent them to its branch offices (also called “exchanges”) around the world. The exchanges entered into film rental agreements with exhibitors who then showed the films to the public." The Ninth Circuit has held that films were published for copyright purposes when copies were placed in these exchanges for distribution to theater operators, a position supported by the Copyright Office and the film studios. 
Notice format. There were various rules regarding placement in the film and the notice format. But keep in mind that judges, faced with the invalidation of copyright because of a notice error are often forgiving. Courts will look to determine whether any notice is present that advises the public that there is a proprietor, and that the notice doesn't affirmatively mislead. On that basis, it's not prudent to assume that the failure to name the owner in the notice invalidates the copyright.

Friday, March 17, 2017

What Does Copyright Protection Mean?

Dear Rich: What does copyright "protection" mean if I don't have a work registered and therefore cannot file a lawsuit?
The term "copyright protection" is misleading as it implies that  a defensive shield has been installed around your work. The reality is that a copyright -- which you get automatically -- gives you offensive rights (what author David Pressman calls a "hunting license"). Even without a registration you can pursue infringers, send a cease and desist letter, or enter into a settlement. You can also sell your copyright, license it, or bequeath it without a registration. But if you want to file a lawsuit in federal court, you must register, a process that costs under $60 if you're not in a hurry (or over $800 if you are). As a preventative formality, however, and because it provides benefits, many copyright owners register their work when it is first published.
Copyright v. patent. One appealing feature of copyrights is that with a copyright you can sue people for infringements that occur before registration. Because patent rights are not automatic (you get rights when your application is approved), you can only sue for patent infringements that occur after registration. (Note, there is a procedure for chasing patent infringements that occur 18 months after a patent application is filed.)

Wednesday, March 8, 2017

It Takes Two to Research Tango Photos

Dear Rich: I need to identify the copyright owner(s) of a collection of photos related to the Argentinian dance tango. The intention is to use those photos –- mostly if not all of them -- in Argentina, in a book of mine. Can you suggest a commercial service which could help?
Many professional photo researchers (like Laura Wyss) belong to the American Society of Picture Professionals and you should be able to obtain a referral from that organization. Alternatively, you may have better luck obtaining international rights by using a photo researcher affiliated with the British-based Picture Research Association.

Wednesday, March 1, 2017

How Long Does My Permission Agreement Last?

Dear Rich: During my graduate research in the mid 1990's. I interviewed individuals that were appropriate and that agreed to participate in my study. I have signed and dated permissions forms that explicitly inform the participant that their recorded interview could end up in a published journal or book. Is there an expiration date on the permission they granted? 
Unless your agreement provides an expiration date ("This agreement terminates on March 2, 2017"), the permission is still valid for the purposes stated. Contract provisions may also provide a right to terminate at will or under certain circumstances (often, a set amount of notice is required)
Other reasons your agreement may have terminated. Our contracts book explains other reasons that agreements terminate:

  •  Both parties have fully performed. Many contracts, particularly oral agreements, end when everybody’s done what they’re supposed to do. For example, you paid for the vintage pink mohair sweater at Etsy and the seller has delivered it. 
  • One party has committed a material breach. If one party breaches, the other party can say, “That’s it, we’re done,” and terminate. 
  • Court-ordered termination. Courts have the right to terminate an agreement if there was a breach, the contract was void, or the contract violates the law or public policy.
  • Mutual termination. The parties to a contract are always free to mutually terminate a contract.
If none of these apply to you, your agreement is still enforceable. For more on drafting permissions, check out Getting Permission.

Thursday, February 23, 2017

Who Controls Robert Capa's D-Day Photos?

I have a film of D Day that I had copyrighted last year. My project with this film is to add some photographs that first appeared in LIFE magazine on June 19, 1944. They were taken by employee/contractor Robert Capa. These same photographs were then published in a book, "Invasion" and copyrighted by LIFE Magazine in 1944. I have both the original magazine and the original first edition of the book. Magnum Photos is trying to let me think they own the copyright for these photographs, with the belief they included them in a compilation of Robert Capa's photography. Are these in the public domain? Capa was employed by LIFE on June 6, 1944 and he died in 1954. 

We believe that the owner of copyright of Robert Capa's D-Day photographs is either (1) the estate of Cornell Capa, (see copyright notice under photo) or more likely,  (2) the International Center for Photography (see copyright notices under photos). The ICP was founded by Cornell Capa, Robert's younger brother. In any case, licensing rights are controlled by Magnum Photos. (The Library of Congress appears to validate this conclusion.) Magnum's relationship with Capa runs deeper than publication of a photo compilation. Robert Capa founded Magnum Photos in 1947 with Henri Cartier-Bresson, David Seymour, George Rodger and William Vandivert. In any case, it's amazing that Capa's eleven D-Day photos exist at all considering that a flustered Life Magazine photo lab employee destroyed 95 of the 106 photos Capa shot during the invasion.

Wednesday, February 15, 2017

Are "Alternative Facts" Protected Under Copyright Law?

Alternative fact:
Tim Conway is Kellyanne Conway's father
(Click picture for proof)
Dear Rich: You have written that, "[F]acts are not protected [under copyright law] even if the author spends considerable time and effort discovering things that were previously unknown." In this era of fake news, I wondered whether the same holds true for "alternative facts." Just curious.
Seeing as how our mailbag is a little thin this week, the Dear Rich staff is going to wade into this potentially partisan, largely theoretical question.
What are facts and why aren't they protected? According to Merriam Webster, a fact is "something that truly exists or happens: something that has actual existence." According to the U.S. Supreme Court, facts are neither original nor created -- they are discovered or unearthed ("[T]he first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence ... [O]ne who discovers a fact is not its "maker" or "originator." Therefore, copyright law -- which only protects original creations -- will not protect facts. (The Supreme Court viewed facts in their traditional legal context, as statements of objective truth, a view that some legal scholars considered simplistic and flawed.)
What are alternative facts? The term, "alternative facts" was popularized by Kellyanne Conway, counselor to the president, in her defense of false statements regarding the size of inauguration crowds. Alternative facts have come to be known as demonstrable falsehoods (or lies) and they are considered a threat to unbiased knowledge. Some of Conway's defenders have categorized alternative facts as “truthful hyperbole” and others claim the term has a legal meaning, likening it to alternative pleadings. (Partisan proponents quickly constructed a competing Wikipedia entry, prefaced with so many disclaimers and warnings that the definition, itself, seems to have become an alternative fact.)
Copyright protects falsehoods. Harry Potter and Seinfeld have something in common -- they both exist in a universe built upon "created facts." For example, the "fact" that in a Seinfeld episode, Kramer is hypnotized by baggage carousels "is in reality [a] fictitious expression created by Seinfeld's authors." Similarly, "each [Harry Potter] book chronicles and expands on the fictional facts that unfold in the series," and when a number of these fictional facts are borrowed, a court will deem it infringement. Like Vandelay Industries and the Bond of Blood charm, alternative facts (i.e. massive voter fraud in New Hampshire) are created facts, not discovered, and therefore demonstrate the minimum of originality.
The Dillinger case. 1990 case held that the intent of the creator determines whether a fact is protected. An author named Nash had written a book documenting his theory that John Dillinger survived his 1934 shootout and lived until 1979. A TV show had used the theory as part of its plot. The court ruled that because Nash treated his book as factual, not fiction, his facts were unprotected. ("Nash does not portray [his book] as fiction, however, which makes all the difference.") Following this ruling, alternative facts would not be copyrightable.
Not so fast, Kellyanne ... Regardless of the arguments, above, there remain a few obstacle to copyright protection. First, there is the matter of attribution -- who is the author for copyright purposes? If the author is a federal employee, the work falls in the public domain. At the same time, the brevity of "alternative facts" creates a roadblock for copyright protection. Finally, there is the unlikelihood of enforcement -- that is, it is doubtful that reproduction of falsehoods will lead to copyright lawsuits unless, perhaps, a compilation of alternative facts was published.

Monday, February 6, 2017

How Are 'Territory' and 'Publication' Defined?

Dear Rich: I work as the Permissions Coordinator for my company, and we have received many agreements for use of excerpts and articles in various publications over the past few years. Now we are trying to ascertain if we are legally permitted to sell/distribute our publications to customers abroad. Each rightsholder seems to have different verbiage when it comes to territory - running the gamut between "territory: North America" and "territory: publication in the United States" to "territory: publication and distribution in the United States." The last one is clear, but how are "territory" and "publication" legally defined in the copyright industry - is "distribution" implicit when only publication is mentioned?
Ideally every copyright license should include: a "grant of rights" that explains what you can do with the copyrighted work; a "term" which provides the period of time you can exercise the rights; and a "territory" which describes where you can exercise those rights. Often these three provisions are merged into one or two clauses, as seems to be the case with some of your agreements. (When we say"copyright license" we're talking about any temporary grant of copyright -- for example a permission agreement.)
Publication includes distribution. Publication is assumed to include distribution unless the agreement provides otherwise. This jibes with trade practice and the copyright law definition of publication -- "the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending."
Territory clauses. Territory is assumed to be a geographic area --  for example, "the United States" or "North America." In publishing contracts, territory is often tied with language restrictions-- for example you may be granted publication rights of an article and the territory is defined as "English and French language rights for North America." In that case, you could distribute in Mexico, but not a Spanish language version. It's also possible that your books may end up outside the territory --  for example, Amazon.com fulfills an order, or a third-party buys a carton of books and takes them out of the territory for resale. That won't violate the agreement but what you can't do is engage a distributor who carries your book outside the territory, or sublicense to a publisher outside the territory.
Interpreting contract language. What happens if there is a dispute about interpreting "distribution," "territory," and "publication"? Absent definitions within the agreement, a court when examining contract language, will usually seek out the "plain meaning" of the words--that is, how a reasonable person in the publishing industry would interpret them.

Wednesday, February 1, 2017

Can I Use Sheet Music as Part of Crafts Product?

Dear Rich: I'm about to launch an online marketplace for handmade crafts which includes customizable gifts which incorporate a customer's favorite or most inspirational song printed on aged, antiqued paper decoupaged (collaged) on to a keepsake box. I'm subscribed to a third party service and I pay for each printing of the sheet music I then age and use for the keepsake. The copyright is noted at the bottom of each page, along with an additional notation of my personal payment and my name with the date. I generally don't use the entire song sheet. I also print a second "clean" copy of the sheet music and file it in case there are ever questions about permission. Since I'm not familiar with copyright law, I'm a little nervous that this may be problematic.
The question you're wrestling with -- whether the purchase of a copyrighted item permits you to use the item as part of another product -- has come up several times in court cases. For example, a company purchased notecards and affixed them to tiles and a court ruled that was permissible under the first sale doctrine (a legal principle that guarantees you the right "to sell or otherwise dispose" of copyrighted items). Another court took the same position when a fabric manufacturer complained about the use of its copyrighted fabric in children's bedding.
On the other hand ... A federal court in  California ruled that ripping out images from a book by Patrick Nagel and reselling them on tiles was not permitted. Another California court ruled that pulling art images from a book and framing them was not permitted. And New York court  prohibited a company from re-selling posters after making them appear like oil paintings on canvas. These cases are based on the idea that the resulting products (framed artwork and decorative tiles) are derivative works (new works that transform, adapt, or recast existing works).
Five things to consider: 
  • Did you enter into a license agreement when you downloaded the sheet music? Check to see whether you clicked-to-agree to limited uses of the sheet music. A licensing agreement may trump copyright law.
  • Don't make copies of sheet music. Only affix purchased copies. If the first sale doctrine shields you, it will offer protection only for authorized copies.
  • The likelihood you'll get hassled is proportional to your company's profile. The bigger your company and the more expansive its marketing, the more likely a music publisher may object. The larger your sales, the more incentive there is for a lawsuit. Companies usually go after those with deep pockets especially when the caselaw is as confusing as it is for the first sale doctrine. 
  • If hassled by a cease and desist letter, consult an attorney. You may want to stand your ground, at least at the letter-writing stage. (Keep in mind that scholars and others have disagreed with the reasoning of the California courts.)
  • Don't ask the sheet music company for permission to affix the music to keepsakes. Digital sheet music sellers are distributors with a narrow range of rights. They don't have the power to grant you anything other sheet music. Only the song copyright owner (a music publisher) can grant you the rights.


Sunday, January 22, 2017

Spouse's Photo Used on Postcard: Can We Sue?

Dear Rich: My husband's photo was chosen by a huge non-profit for a postcard. He signed a non-exclusive licensing agreement for the use with payment of $250. They have never paid us and continue selling the postcard into the millions of copies. Can't we sue? 
Unless the licensing agreement requires that you arbitrate the dispute, you are free to sue the nonprofit. However, be prepared for the fact that no matter how many copies are sold, your recovery may be limited to $250 (and possibly interest). That's because we think you're dealing with a breach of contract situation in which the remedy is usually compensatory damages. That means the court attempts to put you in the financial position you would have been in if the contract had been performed. Another possibility is to claim that the failure to pay is a material breach of the agreement that entitles you to cancel the agreement. You would write to the nonprofit and tell them the agreement is canceled and any further use of the photo after the termination will be considered copyright infringement. Because the compensatory damages are relatively small, you should try to avoid court and seek payment via correspondence. If that fails, you can handle the matter yourself in small claims court, (assuming the nonprofit is doing business in the state in which you are suing).
Avoiding this problem in the future. To best protect your rights in the future, try to include the following language in any photo licenses: “Company shall have no right to make any use of the work until Licensor (photographer) has been paid the fee established in this Agreement. Any unauthorized use constitutes a willful infringement.” If that clause is in effect in your agreement and the other party fails to pay, you can sue for copyright infringement.

Monday, January 16, 2017

Cisco Kid is PD: But What About Pancho?

Dear Rich: O Henry published a short story in his Western series in 1907 called "The Caballeros Way" The main character was an outlaw called the Cisco Kid. Since 1914, many movies and a TV series about the Cisco Kid were produced. I would like to write a script, completely original, with the Cisco Kid as a character. Can I legally use the name, Cisco Kid, as a character in my script? Is his name and character in the public domain since the story was published in 1907?
You can definitely use the Cisco Kid in your work. O Henry's story (in which Cisco first appeared as a ruthless American outlaw), was published in the U.S. prior to 1923 placing it within the public domain. There are also no character trademark registrations for the Cisco Kid, though the name has been the subject of registrations for candy, fishing lures, and tequila. If you plan to include the Kid's sidekick, Pancho, in your script, beware that his copyright status is not as clear. Pancho did not appear in the O Henry story and was reportedly inspired by Don Quixote's sidekick, Pancho Sanza. His first appearance was in the 1945 film, The Cisco Kid Returns (not to be confused with the 1939 film, Return of the Cisco Kid) and assuming that film was timely renewed, the assignees of Monogram Pictures (Allied Artists International) may own copyright on that character. We say "may" because a number of Monogram films from 1936 to 1946 fell into the public domain. (In other words further copyright research is required.) Our analysis of Pancho is based on the case involving Sherlock Holmes in which it was determined that Sherlock was in the public domain but that the assignees of Arthur Conan Doyle's estate could claim copyright on the characters (for example, Watson's second wife) in stories published after 1922.
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Tuesday, January 10, 2017

Appeared in Music Video; Didn't Get Paid

Dear Rich: Last year I was the main actor in a music video. It was first released on Facebook where the view count currently stands at 1,075,106. The video was then uploaded to YouTube where it now has 1,940,685 views. The song that the video was based on, then went on to be a number one. This video started this band's pop career. It is still their most famous song. But, I never got paid. I had a YouTube channel at this time, so the band knew me from that, and we are from the same area. They asked me would I be in it. I said yes. There were no contracts, no personal releases, nothing. I was never acknowledged on any of their social media accounts but my image was used widely. Do I have any rights? 
First of all, congratulations on being viewed by more people than the combined population of South Dakota, Delaware and Montana. Although your numbers pale when compared to Grumpy Cat or OMG Cat, you do have something in common with those feline YouTube stars -- you're not likely to see a paycheck. Here's why.
Right of publicity. State laws that prohibit the unauthorized use of your image or name to sell a product or service are known as the "right of publicity" (see the dust-up over a recent music video). You have two problems asserting this type of claim: (1) you authorized your appearance (by saying "Yes" and by participating in the video); and (2) creative works like music videos are commonly excluded from these laws under first amendment (freedom of expression) principles. On the other hand, if the video is used to sell a third-party product or service --  for example used in a car commercial -- then you would have a reasonable claim that your rights were violated.
Written agreements. We always prefer written agreements as they spell out rights and obligations (and payments, if any). But in the absence of a written agreement a court is likely to presume you made an oral agreement and obtained compensation other than money for your appearance -- for example, exposure for you, or your YouTube channel. In summary, unless you can prove you agreed upon (or are entitled to) a payment, you won't be getting any checks in the mail.
Other possibilities. There are some peripheral legal possibilities. If your footage was used in a manner that defames you -- for example, the footage is manipulated so you appear as a racist -- you may have a claim for defamation. Alternatively, if you wrote the script for the video, you might be a co-author of the copyright of the video and you may have a right to revenue attributable to the video. Finally, if you had negotiated for a credit and failed to get one, you would have a breach of contract claim.

Tuesday, January 3, 2017

She Created PD Work -- Now She Wants to Expand It

Mona Claus
Dear Rich: I wrote a short story as part of a residency that required that I donate that story to a public federal agency, placing it in the public domain. I agreed to those terms and donated the story. Now I want to expand the story into a novel, keeping the general setting, some characterizations, and title, but changing most everything else, expanding the plot, changing character names, etc. What are my rights in this case? I believe that a greatly modified public domain work would be a new work and therefore copyrightable, right? I couldn't be sued for modifying my own writing, could I?
No, you can't be sued for modifying a public domain work (unless you copy someone else's modifications to the same work). And yes, a greatly modified public domain work would be a new (or "derivative") work that is subject to copyright protection.
To explain the principle, law professors often use as an example the most famous modified PD work, Marcel Duchamp's L.H.O.O.Q., commonly known as Mona Lisa with a Mustache. (L.H.O.O.Q. is a vulgar French acronym implying that a woman has a hot derriere.). Duchamp's estate can stop others from reproducing his work (at least in France where it is still protected) but they cannot stop others from adding their own unique modifications to DaVinci's painting. As the Copyright Office explains:
A work that has fallen into the public domain, that is, a work that is no longer protected by copyright, is also an underlying “work” from which derivative authorship may be added, but the copyright in the derivative work will not extend to the public domain material, and the use of the public domain material in a derivative work will not prevent anyone else from using the same public domain work for another derivative work.
Similarly, you can stop others from copying your expanded plot, and other unique additions and modifications. You cannot, however, stop others from adopting or modifying the same public domain story (unless they copy your modifications). Examples of how this is managed can be seen in the many adaptations of Sherlock Holmes (the original works are almost all PD) in print, on television, and in the movies.

Monday, September 19, 2016

Someone Else is Registering My Trademark: What Do I Do?

Dear Rich: I attempted to register a trademark in 2005, which became abandoned by the USPTO in 2007 as I did not have the proper resources to complete the process. The trademark is associated with an event I have been producing since 2002, and as such, I believe I have common law rights to this trademark. I own the .com and the .org domains for this trademark, as well as the gmail account. Further, I have newspaper articles, t-shirts, and flyers which establish a solid first use prior to 2005. In addition, I have had an active .com domain site with the trademark since the early 2000's. I recently checked the USPTO because I now have the resources to resume the process of registering this trademark, only to find out that another organization is in the process of registering the same mark, in the same class, but for a different purpose. They offer a yearly conference, and their first use date is listed as 2013. My event is a charitable arts event intended to aid non-profits. The trademark has not yet been published, after which time I understand there is a window within which I could oppose their registration of the mark. (1) Do you recommend that I reach out to the organization and attempt to negotiate with them for their registration of a different mark? (2) Or do you recommend that I wait until the publication period (which I believe is next month), and oppose the mark via the USPTO? (3) Are there any strong exemplar materials you can direct me to to help me mount the best case for opposition? What about a template for a letter asking them to work with me on the registration of a different mark? (4) If I am successful with the opposition, or their cessation of the registration process for this mark, is there any strategy you would recommend to get a successful trademark registration on record with the USPTO despite the abandoned mark from 2007? i.e. Is there any chance that I could resume the registration of the original abandoned trademark under a different class? (I originally registered the mark in class 41, do you think class 35 would be viable since effectively the charitable event is meant to ultimately help non-profits thrive?) (5) If I hire an attorney for the opposition, what is the maximum amount of compensation you believe would be reasonable for taking on this particular matter? (6) Should someone else successfully register the trademark that I believe that I have common law rights to can they legally then ask me to stop using the mark? 
Even with our new Nespresso maker, we're not sure we're caffeinated enough to get through all of your questions. Let's start with some of the basics.
Your previous application. Your 2005 application was abandoned in 2007 based on a failure to file a proper trademark specimen. You cannot revive that application but you can file a new application and claim your original 2002 priority date. However the application you filed was for entertainment services, "namely, live performances by a musical band" which is typically used when claiming trademark rights for a specific band, not for an annual charitable arts event with multiple performers. So if you do re-file your application, you would want to tweak your explanation of services to make it clear you provide event services.
The other application. The other trademark owners filed their application in 2016 claiming the following services: "Organizing live exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes." From an examining attorney's point of view, their services -- as broad as they are -- may overlap with your event services. Their application has been approved for publication which should occur on October 4, 2016. If you file in a different class (Class 35 doesn't seem appropriate for your services), an examining attorney could: (a) possibly find the other application for the same mark, recognize the overlapping services and object to your registration; and/or (b) determine your choice of class is inappropriate and recommend refiling in Class 41 (which could prove expensive).
Opposing the other application. If you want to oppose the other application, you have thirty days to file a Notice of Opposition (fee: $300) on the basis that there is a likelihood of confusion. You can pay to extend that deadline up to 180 days. (It's possible an attorney may also advise that you file a trademark application which you would then reference in your notice of opposition.) You can file your notice of opposition electronically (and the USPTO has provided a manual explaining the procedure). The notice will require a response by the applicant and that will result in an inter-partes proceeding before the Trademark Trial and Appeals Board (TTAB), basically an administrative mini-trial.
Electronic filing basis for opposition
What's your best strategy? Unless you're familiar with legal proceedings and making legal arguments, opposition proceedings at the TTAB will likely require an attorney's assistance. You can read about typical TTAB actions at the TTAB blog, research TTAB final decisions, or you can search the TESS trademark database and click on the "TTAB status" tab when you find a registration that includes opposition proceedings. If you plan on contacting the other party before filing a Notice of Opposition, you should know what you're seeking beforehand  (a concurrent use application, a promise not to oppose your use within your region, a license, etc.) and you should keep your eye on the clock (so you don't lose the opportunity to file an opposition). Your best strategy will be determined after speaking with an attorney familiar with TTAB filings. We can't ballpark the cost of that representation although we're pretty sure it will cost more than your last root canal surgery.
Can the other applicant stop your use? Unregistered marks, even if they have priority, have limited rights versus registered marks. If you can prove priority you will probably be able to preserve your rights within the geographic area in which you have been operating ... but you won't be able to expand into other regions.