Wednesday, September 23, 2015

Wants to Register Book With Antique Glass Negatives

Dear Rich: I have been collecting interesting antique glass negatives. Some I restored, others I changed artistically. I plan on writing a book of Haiku poetry and using the images from the glass negatives (50-100 of them). The dates of the glass negatives are from approximately 1860 to 1900. Some are from countries which match our copyright laws. The photographers are unknown. Do I have to apply for a copyright on each image separately or can I just submit the whole book for copyright (including the images)? 

We think you should wait until the book is completed and then register the copyright as a literary work, focusing on protection of your haikus. Registration of the imagery (the glass negatives) is more complicated.
Copyright in glass negatives. Even if the negatives are in the public domain (see discussion below), you would not be able to claim copyright if you simply restored the image. We think restoration -- though it requires great skill -- lacks the originality necessary to transform a public domain work into a registrable work. In the end it is closer to the "slavish reproductions" referenced in the Bridgeman Art Library case. As for the negatives that you "changed artistically," you may be able to register your modifications as a derivative work. And if you have several modified negatives you can register the modified collection as one registration, again assuming the works are in the public domain.
Public domain status. You can assume that the glass negatives are in the public domain if they were published before 1900. However, you can't make that assumption if the works were never published -- that is copies were never distributed for sale or loan to the public. Unpublished glass negatives may be protected in some cases for 120 years. As a practical matter we doubt whether you will hear from an angry centenarian photographer (or his or her estate) but the issue of whether the negatives are protected by copyright arises when seeking to register derivative works.
Registration process. The less expensive method of registration is to file electronically using the standard application for $55 (versus $85 for paper applications). It's possible that you can register both text and imagery on one registration provided they qualify as a single unit of publication. You can read the rules here (scroll down to "What Can Be Included on a Single Application?") As the sole author of the haikus, you can definitely register them as a single unit but we're not sure of the copyright status of the glass negatives (or what you've contributed) so we're unclear whether your modifications as a group merit a single unit registration for the whole book. And as we point out regularly, you obtain copyright regardless of registration; it's automatic.
P.S. Even it's not your birthday today, happy birthday.

Thursday, September 17, 2015

How Often Do We Register SaaS Software Copyright?

Dear Rich: I can't seem to find any recommendations for how to handle copyright registration of software that is changing frequently. Now that SaaS (software as a service - ed) software companies are publishing software updates weekly or even daily, it seems that the pace of copyright registration might not be keeping up. The copyright office was pretty noncommittal, suggesting that the safest route would be to register whenever the code changed "substantially." Care to take a stab at suggesting a 'best practices' cadence here?

We agree with the Copyright Office. Unless the code changes dramatically or unless you are offering features that are materially different from previous editions, it doesn't make business sense to register each weekly change. This is premised on the fact that the major benefits from registration -- statutory damages, the possibility of attorney fees, the ability to file a lawsuit -- are related to infringement disputes. Assuming the version of the software that is infringed contains the key elements and code that were previously registered, you could proceed with your dispute and reap the benefits of registration. Even if there were a gap between what was infringed and what was registered, you still own the copyright (it's automatic regardless of registration) and could, if necessary, expedite registration to incorporate the features (and claim the actual damages for infringements of those new features). In summary, register the key versions of your code -- those versions, which if infringed, would cause you significant damage.

Tuesday, September 8, 2015

How Do I Copyright Children's Book?

Dear Rich: We have a wonderful book about ready to send to the printer. The idea for the story came from my wife and I. We contracted with someone to write and illustrate the book. We have had many discussions along the way where we changed text and the order of the story, even getting together for a couple intense days of rewrite. We have this section in our contract: 
A. The Author hereby grants and assigns to the Publisher, its successors, representatives, and assigns, the sole and exclusive right to publish (i.e., print, publish, and sell) the Work in the English language in all forms in the United States of America, its territories and dependencies, and Canada, during the full term of copyright and any renewals and extensions thereof, except as provided herein. 
My question is how do we actually copyright the book? Does the author have to do it and the contract gives us control or can we copyright it ourselves?

Under your contract provision, the author retains copyright to his or her contributions and grants to you, the publisher, the exclusive North American English-language book publishing rights. The author retains all other rights (unless the contract states otherwise) including foreign, translation, book club, film and television, audio, and dramatic rights.
Co-authorship? Your contributions -- story ideas, structure, rewrite -- may make you co-authors of the text, and possibly of the illustrations as well. In that case, the book would be considered a joint work, and you, your spouse, and the author would all be co-owners of the copyright.
Registration. Although registration is not mandatory, it is strongly recommended. Anyone who owns all or part of the rights that make up a work’s copyright may register that work. Therefore, because you retain those exclusive North American publishing rights, you can file as copyright owner of those specific rights. You would name the author (person who did the text and illustrations) as author, and if you determined that you and your spouse were co-authors, you would add your names as authors as well. By the way, you should be able to register the text and illustrations on one application (as a "single unit").

Thursday, September 3, 2015

Any Way Around Lyric Licensing?

Lorenz Hart: one great lyricist
Dear Rich: I want to start a lyric website that would link to a reference site like Wikipedia. Would I need a linking agreement or have to pay a fee? I am considering framing as an option as well.  I was wondering if there was any way around leasing the lyrics from publishing companies  or from a website that provides a leasing API such as Lyricfind
You shouldn't run into a problem (or have to pay a fee, or have to sign an agreement) when linking to a publicly accessible web page. Hypertext linking--like this--only causes  a problem if:

Licensing the lyrics. We don't know of any legal way around licensing lyrics. Having said that, we are also aware of the hundreds of unauthorized lyric sites on the web. The National Music Publishers Association (NMPA), prodded by "squeaky wheel" songwriters has ramped up its pursuit of pirate lyric sites reaching settlements with sites such as RapGenius and LiveUniverse while it continues to pursue others. In other words, unauthorized users may fly below the radar ... but as page views increase, so do the chances of being hassled.

Monday, August 31, 2015

Wants to Create a Book Using Onstage Banter

Dear Rich: We are working on a book that provides a compilation of stage banter quotes from rock concerts -- onstage quotes of famous singers and songwriters. We do not make commentary about the quotes, but some will certainly come across as flattering while others will likely come across as not-so-flattering. There are approximately 180 quotes at this point. Big note here: some quotes are culled from the Internet, most are transcribed by us (both from YouTube videos and the like and also from CD and DVD live recordings). Regarding the quotes -- are we protected under "fair use" to use these quotes in a publication for commercial gain?  Also, what about libel? And if we got the quotes from CDs and DVDs, is the content copyrighted to the extent that we cannot reproduce it via transcription? We are planning to use photos found on "Creative Commons." (We are only using CC BY and CC BY-SA photos and will credit the copyright holder.) Do we need to get a "Model Release" from each singer/songwriter to cover ourselves? Also, what about "Property Rights" of the venue in which the photo was taken? 
We don't think you have much to worry about. As we've indicated before, short phrases are usually not protected under copyright law. So, copying and reproducing one, two or even three line quotes typically won't cause a problem.
Fair use? Longer quotes --  say four or five lines or more -- may be excused under fair use principles. Even though you are not providing commentary, we think the act of curating these quotes may be transformative (and it's hard to imagine that you are depriving the musician of any income by reproducing onstage banter). By the way, when you pull quotes from recordings, you are not infringing the sound recording copyright (unless you copied the recording, not the text) and you're not infringing the song copyright either.
What about libel? It's unlikely you're libeling anyone by reproducing onstage banter. You certainly wouldn't be libeling the musician who made the statement (there's no such thing as "self-libeling"). As for third parties, it's always possible that a musician's blathering may libel a third party but we imagine that these statements have already been published somewhere and nobody's objected. So that shouldn't be an issue. Misattribution may be a problem if you are attributing an awful statement to a musician who didn't make it. But that's an issue for your fact-checking department.
The photos. You should be fine using Creative Commons licensed photos assuming you abide by license conditions. You don't need a model release (or property rights permission from the venue) as your uses within your book are for editorial purposes. To sidestep all right of publicity issues, avoid using photos of celebrities in the advertising and packaging (the cover) for your book.
P.S. Hope you included Lou Reed!

Monday, August 24, 2015

Wants to Copy Website's Terms of Service

Dear Rich: I run a a health and fitness blog. It has come to my attention that a medical disclaimer should be included on my website. These disclaimer appear lengthy and go into a great degree of legal jargon. I would not like to craft my own. Anyhow, if I use the medical disclaimer of another health and fitness blog, verbatim, would this be infringement? In other words, does plagiarizing a medical disclaimer (or any privacy policy, FTC disclaimer, website TOS etc.) constitute infringement? 
Yes, copying terms of service (TOS) without permission is infringement. However, you don't hear of many lawsuits over TOS theft possibly because the copyrights are so "thin" and the origins of so many are murky. That is, it may be difficult for a copyright owner to claim the TOS as an original work of authorship. (There's something strange -- we almost said "ironic" -- about the fact that TOS's prohibit copying yet they are so often, pilfered or cobbled together from various sites, often by lawyers). Another obstacle for someone coming after you is the "merger doctrine," a copyright principle that excuses copying if there are a limited number of ways to express an idea.
Bigger concerns. Even if the threat of infringement does not loom over your website, there's a bigger issue --  your ability to enforce your TOS against an errant user. If you sue someone over a TOS violation, the opposing attorney will want to know the origins of your TOS ... and that's when you have to reveal you nicked it from a competitor's website. It may still be enforceable but a legal shadow hangs over your TOS especially if you copied irrelevant sections or failed to remove names not applicable to your business.  If you want to avoid these potential hassles, there are online TOS generators and some sites such as WordPress and Automattic have made their TOS available for others to use under Creative Commons (CC) licenses. Also, the CC folks have tried to simplify the business of creating a TOS. And of course there are always attorneys prepared to create or customize TOS for your company (or copy them from treatises).
P.S. Dept. Keep in mind that a court is more likely to enforce your TOS if the user has to click to agree.

Monday, August 17, 2015

What is the Time Limit for Filing Sampling Infringement Lawsuit?

Dear Rich: I manage a band that made several songs, one in particular that has been sampled 153 times by various artists from 1988 to 2013. Except for half a dozen artists who made deals and paid (and this was negotiated and hidden from the rest of the band by one member who has since been thrown out) they have not been compensated. One of the richest men in hip hop used the song three times and never paid a dime. Of course they did not know the law and by the time they discovered it most had been sampled years earlier. Now several lawyers tell us there is a 2-3 year statute of limitation! Is that true? So there is no way to get justice for their performance being ripped off. I am not talking a couple of seconds. The drummer plays throughout the entire track on some of these recordings. 
For copyright infringements, the statute of limitations -- the legal time limit by which you must file a civil lawsuit -- is three years from when you discovered the infringement (or when it reasonably should have been discovered). In 2013, however, the Supreme Court permitted an author/screenwriter's heirs to wait 18 years before filing a copyright infringement lawsuit against the owners of the film, Raging Bull. Copyright law provides that when there are ongoing successive infringements—for example, as in this case, where copies of Raging Bull continue to be sold—the copyright owner may bring the lawsuit within three years of any infringement (and can collect damages for only the preceding three years).
Laches. Prior to the Supreme Court ruling, lower court decisions had prevented the heir's’ lawsuit under an equitable principle known as laches (it is unfair to proceed with a lawsuit when one party has waited an unreasonable amount of time to bring the claim). In light of the federal statute of limitations, however, the Supreme Court ruled that it was inappropriate to apply laches. Check with your attorney to see if this case may benefit your situation.

Wednesday, August 12, 2015

Wants to Oppose Mark for Genericness

Lockheed-Martin Paveway II Dual Mode Laser Guided Bomb 
Dear Rich: I have a question about opposing a trademark registration. The trademark was recently published for opposition at the USPTO and I have a few reasons to oppose the registration. One of them is genericness. What does it take to oppose a registration? In order to succeed with a genericness opposition, you'll need to show that the public associates the term with an entire genus of goods or service. For example Outdoor Products could not serve as a trademark for backpacks. The Trademark Trial and Appeal Board (TTAB) adjudicates opposition hearings. Here's a sampling of TTAB rulings from recent years:
A term that's generic for some goods is not generic for all -- a term like MOTELS might be generic for hospitality services but not for entertainment services.
What did the examiner do?  A mark that's been published for opposition has been examined and approved by an examining attorney at the USPTO. All legal objections have been resolved. For that reason, it may help to review the history of the application before filing an opposition. You can do this by searching for the mark in the USPTO database and then (once you've located it), clicking the "TSDR" button. That way you can see if the examiner raised genericness as an objection. (The USPTO uses "merely descriptive" to refer to generic terms). We checked the trademark you're opposing and the issue was not raised (not a good sign.)
The opposition procedure. An opposition can be filed by “any person who believes that he or she would be damaged by the registration of a mark.” Unless an extension is granted, the opposition should be filed within 30 days of publication. Unfortunately, it's not as simple as sending in a statement of opposition. Because you are initiating a proceeding at the TTAB, the opposer is required to submit a document that corresponds to a complaint filed in a lawsuit. You can oppose a mark for any reason that registration would be refused. Three helpful resources are the  rules and procedures for TTAB filing, the TTAB's case searching page at the USPTO website and the TTABlog where you can search for TTAB cases. If all of this seems like too much work, you can try a more informal Letter of Protest.

Thursday, August 6, 2015

What's the Down Side To Using a Stage Name for Business?

Dear Rich: I am in the process of making marketing videos on youtube, webinars, public speaking seminars and authoring informational books. For privacy reasons and because of my unusual and hard to spell name, I would like to use a first and last name that is different than mine in these situations. I do not plan on changing my name legally, like on my drivers license, but to feature it in these works that I publish myself. Is there any issues from a legal standpoint, that is, not holding myself properly to my clients/ customers. The main jurisdiction that I plan on doing business is Canada and the USA if that helps.
We can't comment on Canadian law but in the U.S., probably the only issues you will face are getting paid, entering into contracts, and registering copyrights. Because you are doing business under another name (DBA), you should indicate that fact when entering into agreements -- for example, "Robert Smith DBA Harry the Heretic." Ditto for filling out W-9s and W-4s for hiring parties -- use your real name for tax purposes. If you're publishing copyrightable materials under a pseudonym, you have the option to indicate that when preparing your copyright application. As for getting paid, try to set up direct deposits. Otherwise, you'll want your real name on any checks to avoid bank teller hassles (i.e., "Excuse me while I get my manager!").
P.S. Have you checked to make sure your pseudonym is not already in use for similar goods and services?

Monday, August 3, 2015

Now, Can I Use "Happy Birthday" in My Movie?

Dear Rich: I made a mini-doc and there's a segment where people sing "Happy Birthday" at a retirement home. Based on what I read the song is in the public domain. Can you verify?
No court has yet ruled that "Happy Birthday" is in the public domain but that may change. The song is the subject of a  legal challenge brought by a filmmaker who last week reported discovering the smoking gun in the case -- publication of the lyrics in the 1920s without a copyright notice. 
Backstory. Prior to March, 1989, a failure to include notice on published copies could result in loss of copyright. (The U.S. was the only country following this rule and it was one of the things preventing us from joining the Berne Convention.) The law was criticized because it punished inexperienced artists like cartoonist Robert Crumb and the troll company, and rewarded defendants who dug up published copies of the work without notice (even if those works had not misled them). 
Can Happy Birthday survive attack? To prevail, the owners of "Happy Birthday"will have to show that the 1920s distribution was a limited publication (to a limited group of people with restrictions); that the publication was not authorized; or that a reasonable attempt was made by the copyright owner to correct the error. In any case, there's some irony in the fact that this strange near-forgotten rule is being exploited by an indy filmmaker against a mega-corporation.

Wednesday, July 29, 2015

Do I Lose All Rights When I Blog?

Dear Rich, I was recently accepted as a writer for a major national syndicate of blogs covering sports teams. This company does not have a physically-signed document per article as is traditional with journals, to clearly state a work/submission is considered "work-for-hire", (where full copyright is given to the publisher from author). Instead, there is a blanket document called, "Content Standards for Contributors" that all writers must click-sign prior to writing for one of the blogs. In this is the following line: "You hereby irrevocably grant to us the right, but not the obligation, to reproduce, modify, adapt, publish, broadcast, license, perform, post, sell, translate, incorporate, create derivative works from, distribute and otherwise use the submission in any and all media, now known or hereafter devised, throughout the universe, in perpetuity, without according you any compensation[...] All submissions made by you shall be the sole property of ***** and will not be acknowledged or returned. " My question: Almost all writers, including myself, for these blogs are not paid, are not contracted, nor are they employees, but according to their "content standards" the act of publishing on their site results in the transfer of the copyright of the article. Is this "agreement" legally binding, and considered ethical?  
A click-to-agree contract is legally binding in the U.S. and the fact that you don't receive any payment does not prevent it from being enforceable (as long as the arrangement provides some benefit to you-- for example, increased exposure versus obscurity).
Who owns what? We think a blogger entering into this agreement retains copyright. We don't think the statement, "All submissions made by you shall be the sole property of [company] and will not be acknowledged or returned," transfers copyright ownership (It seems more like a vestige from publishing agreements relieving the company from having to keep track of email or paper submissions.) We believe a court would require more explicit language affecting a transfer -- for example, using words such as "assign," or "transfer," and "copyright" and "ownership."
What type of copyright? What you retain, after entering into this agreement, is a partially-gutted copyright. That's because you give up a lot of rights on a nonexclusive basis, effectively preventing you from selling those rights to someone else on an exclusive basis -- for example,  entering into publishing agreement for a collection of blog entries as a book. But, of course, that may be "old school" thinking, ignoring the benefits of your personal brand exposure and the temporal quality of sports blogging.

Monday, July 27, 2015

Will an LLC Shield Me From Copyright and Trademark Lawsuit?

Dear Rich: I'm attempting to get licensing from several professional and collegiate sports associations, I've received licensing for some but not all and plan to sell, or would like to sell, product before all are in place. The copyright issue falls somewhat in the gray area but nonetheless I feel it's prudent to have personal liability in place. My question is will an LLC give personal legal liability protection from a lawsuit brought by one of these copyright or trademark holders? Or do I need to structure it as a C or S corporation, and if so which is better with regard to this concern?
Forming an LLC or corporation (whether S or C) can limit your personal liability but it won't shield you from negligence or intentional wrongdoing. If a court determines that you intentionally infringed, it can reach through the corporation or LLC and make you personally liable. Alternatively, a lawyer suing your business may try to “pierce the corporate veil” because you set up the LLC or corporation for  fraudulent purposes. Perhaps you can get an attorney's opinion regarding your licensing activities before you start selling your products. In either case, it's probably not best to rely on that "invisible shield."

Wednesday, July 22, 2015

What Constitutes "Publication" Under Copyright Law?

Dear Rich: I wrote an “In Remembrance” booklet when a family member passed away. About 20 copies of the booklet were given to family, friends and neighbors. The booklet didn’t even have my name on it because everyone I gave it to knew I was the author. It was not used for a memorial service and there was no sale or public display involved. Recently, I found out that one of my friends had faxed the booklet to two people he knew, even though I asked him not to. Because of the response, I’ve decided to lengthen the booklet and turn it into a short story for sale – either to magazines or as a POD book. I’ve since added my name and a copyright notice.  (1) Has the booklet been published? (2) I know that the work is already copyrighted, but should I be worried since there is a period where someone could have stolen my work and submitted a registration for copyright? 
Your booklet would not be considered "published" under the Copyright Act if you distributed it to a limited group of people with restrictions -- for example, you asked people not to copy or distribute it (sometimes referred to as a “limited publication”). In any case, we're not sure it makes much difference. If you're concerned about your rights, you should register your current version (and in your application, indicate the current version is derived from the previous booklet). In the unlikely event someone has registered your booklet as their own, you can claim infringement and also seek to invalidate the registration. You can investigate registrations at the Copyright Office website (but keep in mind that registration takes approximately four to six months so bad actors may not show up right away).

Wednesday, July 15, 2015

Does TM Registration Provide Priority for All Items Within the Class?

Dear Rich: Does a trademark registration grant the right to use a trademark only for the specific goods  or for any/all goods within the category? For example, does a registration in Class 9 for an app give the trademark owner exclusive rights for everything in Class 9? No, registration in a  trademark class doesn't guarantee exclusive rights for all the goods and services in that class. For example, we counted over a dozen different companies who had registered the mark "EAGLE" in Class 9 for products ranging from fatigue monitoring devices to business software for inventory management. The principal issue for a trademark examiner is whether consumers are likely to be confused between the two similar marks. As the USPTO advises examiners, "[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely."

Monday, July 13, 2015

If You Write It, They Will Sue

Dear Rich: I wrote a novel that is set on the city street I used to live on. The year is 1968. It follows the interaction of a dozen kids, ranging in age. At some points the teasing between the kids gets very intense: “Your mom’s a tramp. Your dad left two years ago and you don’t even know where he is,” etc. The book is essentially a comedy and all of the characters, including the one drawn from me, are presented in a broad amusing fashion. The book will include the standard fiction disclaimer on the copyright page. I have set the novel in a different city, changed all the characters names, physical descriptions, parents jobs, etc. No one would ever read my book and guess that these people were the inspiration for the characters in the book. However, there are about forty of us from that original street who still keep in touch through Facebook and my problem is that if any of those forty people ever read the book they would immediately recognize the street, and they would know who wrote the book.  Although most of them would enjoy the book, I am afraid that over time a few people might feel that they are literally portrayed and might take offense. In short, if I self publish this book, am I setting myself up for a defamation or invasion of privacy lawsuit? 
Most courts tend to provide authors with some leeway when depicting characters derived from real life. Although this freedom is sometimes framed as a first amendment defense, it more likely results from the complaining person's failure to prove his or her case. For example, if an unhappy childhood friend sued you (known as the plaintiff in legal jargon) your friend would have two substantial hurdles. First, the plaintiff must prove that the character actually depicts the plaintiff (an analysis that needs to include the dissimilarities as well as the similarities). Second the court must be convinced that you made a damaging false statement or portrayed the plaintiff in a false light. Some courts have ruled against novelists (blame it on this 25 year old case), but if you haven't completed your novel, there are simple ways to avoid the sound of the judge's gavel.
BTW Dept. (1) The right of publicity -- another claim sometimes made in these situations -- is a hard  argument to win against a novelist. (2) You cannot defame or invade the privacy of someone who has passed on.

Wednesday, July 8, 2015

The British Library Has Lost its Charm

British Library London" by Jack1956
Dear Rich: I ordered some public domain works from the British Library (assume they are absolutely, without question public domain--written in 1800s), and the British Library people say: "Here are your copies, but you can't copy them further, because, by copying them we, British Library, acquired a new copyright on them." Is this right? Can they have a copyright on photocopies of public domain works?
We're not familiar with British copyright law but, under U.S. law, creating a "slavish reproduction" of a public domain work doesn't create a new copyright. So, under U.S. copyright law, you're free to copy the public domain work. There may be a contractual prohibition on you copying the materials if you signed a license agreement with the British Library. That's a murky area and courts have sometimes ruled that the license trumps copyright.We wrote more about these issues in a previous post. In any case, this seems like a tough one for the library to enforce.

Monday, July 6, 2015

Should I Quote Hemingway or Dickens in Stage Play?

Dear Rich: I'm working on a stage play. In my play, I wanted to have a character quote two separate passages from Hemingway's "A Farewell to Arms." The first is the first two paragraphs of the novel and the second is a short dialogue exchange (four lines). In both cases, the work is sourced. Would I be able to include these passages under fair use? If not, would older work, such as Dickens be usable?
"A Farewell to Arms," first published in 1929, is protected under copyright in the U.S. until 2034 (95 years after publication date). According to the Hemingway Society permission to use excerpts from the book would come from the publisher, Simon and Schuster.
What about fair use? The first two paragraphs of "A Farewell to Arms" contain less than 200 words. That level of borrowing (plus four lines of dialogue) combined with a transformative purpose (a fictional character's quoting of Hemingway) makes your stage play a good candidate for fair use. The trouble with our analysis is that only a court can substantiate a fair use claim and we doubt whether you want to be dragged into a legal battle. In addition, if you are hoping to have your play produced, there is a strong possibility you will have to indemnify the play against infringement ... which means you'll probably want to obtain permission, anyway.
What about Dickens? All of the works of Charles Dickens are in the public domain and free for you to use without permission.
By the way dept. You could stage your play in Canada without much problem as "A Farewell to Arms" is in the public domain up north. You could also include clips of the 1932 movie, "A Farewell to Arms," which is PD in the U.S.

Wednesday, July 1, 2015

Same Sex Marriage and Copyright Redux

Back in 2013 when the Supreme Court made its DOMA decision, we reviewed the effect it would have on copyright law. At that time we indicated that the primary effect would be that in states where same-sex marriage is legal, the surviving spouse would acquire copyright renewal rights and termination rights. Now that the Supreme Court has held that same-sex marriage, is legal in all states the rule applies across the country. In other words, a surviving spouse will acquire the right to recapture copyright for pre-1978 transfers as well as the right to send and benefit from Notices of Termination.
The effect on copyright contracts. Other than the ability to terminate a transfer after 35 years, the Supreme Court decision should have little effect on contracts signed regarding copyright transfers. In the nine states that have community property laws --Arizona, California, Idaho, Louisiana, Nevada, New Mexico, Texas, Washington, and Wisconsin -- spouses automatically become joint owners of most types of property acquired during the marriage. California, for example, has held that a copyright acquired by one spouse during marriage is community property—that is, is jointly owned by both spouses. (Marriage of Worth, 195 Cal.App.3d 768, 241 Cal. Rptr. 135 (1987).) This means that if you are married and reside in California (or later move there), any work you have created or will create automatically would be owned jointly by you and your spouse unless you agree otherwise. Therefore, lawyers consider it prudent for both spouses to sign any assignments or exclusive transfers of copyright. (Note a court in Louisiana has held copyrights are not community property in that state. (Rodrigue v. Rodrigue, 50 U.S.P.Q.2d 1278 (E.D. La. 1999).)

Wednesday, June 24, 2015

Can I Stop App Maker From Using My eBook Title?

Dear Rich: I recently discovered that a new Apple app is using my exact common law trademark -- a phrase associated with my former profession. Through Apple, I contacted the app designer, who said she registered the trademark with the USPTO and it was tough luck for me. Since February 2013, I have used my trademark for the title of my copyrighted eBook, which is available globally on Apple, Amazon, Barnes and Noble, Kobo and Smashwords. Since that date, any cursory internet search for those keywords would reveal my eBook, my website and my personal contact information. How can I regain control of my common law trademark? I used the trademark first, the app trademark is identical, both are used for digital products and both are available in the Apple store (and appear in close proximity in online searches).
Sorry to deliver the bad news but if you've only used the phrase in connection with a single book title, you probably have not acquired any common law trademark rights. As the USPTO puts it, "the title of a single book cannot serve as a source identifier," and as we've indicated previously, only a book title used as part of a series is registrable as a trademark. There may be exceptions for blockbuster books but you would be in a better position to chase the app developer if you offered other goods or services with the phrase.
The app developer's trademark registration. Looking at the USPTO trademark records, it appears as if the app developer's statement that she registered the trademark may not be completely accurate. Although the examiner has approved the mark, there seem to be two steps remaining in the registration process: (1) publication of the mark on the Principal Register (which is supposed to occur on July 7, 2015); and (2) the app developer must submit evidence that the mark is being used in commerce (the developer filed an intent to use or "1B" application). That leaves two possibilities. First, you can file a notice of opposition following publication. We don't think you have sufficient basis to do that but you would be best served by seeking out a trademark attorney for guidance. Alternatively, the registration may not be granted if the app developer fails to file a Statement of Use  (or seek an extension) within six months of the Notice of Allowance (The USPTO explains these procedures.)
Copyright claims? If the app developer is taking more than the title from your eBook, you may be able to frame the dispute as copyright infringement.

Monday, June 22, 2015

Wants to Use Recycling Logo As Part of Trademark

Dear Rich: I started a small comic book publishing company called Disposable Fiction Comics, LLC. We are using the recycling logo as part of our logo. I know that the recycle logo is part of public domain, but I was considering trademarking it, but I started realizing that may not be possible as it would make it private property. 
The classic recycling logo -- three bent arrows in a triangle shape --has been used in many variations in dozens of registered trademarks from recycled fabrics to recycled metals to cement to photocopier cartridges to edible marijuana seeds. It even has its own design code at the USPTO (24.17.19 - Recycling symbol) which can be used when searching the USPTO trademark database.
How the USPTO handles the recycling symbol. The USPTO treats the recycling symbol as a "universal symbol"which is "any design, icon, or image that conveys a widely recognized or readily understood meaning. The USPTO advises examiners (Note: Word document download) that a mark using a universal symbol is registrable if it:
"... is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed."
In light of the registered marks, we believe that your use of the recycling symbol meets the standards described above. Hopefully, if there are no other impediments (for example, prior users in the same field of goods or services) or other registration issues, you should be cleared for takeoff.
None of our business dept. In light of the universally recognized meaning of the recycling symbol -- to designate recyclable materials -- isn't there a disconnect when you combine it with a word like "disposable" ("something designed to be thrown away after use")? Our re-branding suggestion is attached.