Wednesday, April 23, 2014

Still Life of Vacuum Cleaner?

Dear Rich: I'd like to create still-life oil paintings (and prints of them) of objects that have been commercially produced. I intend to blur or render vague logos or other trademarks on the objects in the course of painting them. Is a painting of a functional commercial object inherently transformative, as it completely changes the intended use? Does it matter (or help) if the design patent has expired for the object? As a couple of examples: a still life painting of a 1980s VCR machine (expired design patent, no longer marketed) vs. a still life painting of a Dyson vacuum cleaner (still under design patent, actively marketed)? Turning commercially produced objects into "art" -- particularly if you blur the trademarks -- is unlikely to trigger legal action.
What about copyright? Copyright protects aspects of industrial designs that are separable from the functional object -- for example, a three dimensional design from a belt buckle, or an image silk screened on a car trunk. In the objects you describe --  a VCR or a vacuum -- the function and the form are inseparable and therefore unprotectible under copyright. (However, you might be infringing if you based your painting on someone else's copyrighted photograph of the Dyson.)
What about design patents? The presence or absence of a design patent doesn't matter. You would only infringe Dyson's design patent if you sold competing products that looked substantially similar.
P.S. Dept. We clean the Dear Rich headquarters with a Miele, not a Dyson, so we had to use that for our rendering.

Monday, April 21, 2014

Can We Use Video of Seal Slaughter?

Dear Rich: Certain large charities have video footage of government-sanctioned killing of wildlife. It costs a lot of money to be able to get this footage. Thus small charities generally don't try to do so. They allow journalists to use the footage, but when it comes to providing the footage (and stills) to small charities to further the campaign, the big charities at times and for certain purposes have been helpful but at other times and for other purposes have not. We are now trying to further the campaign by encouraging people around the world to create videos, music videos, songs, digital art, or traditional art to protest against the killing in a creative way. Our hope is that some people will create good enough work that it goes viral and makes a big difference to the campaign. We have asked the big charities to allow us to provide some footage and stills to people for this purpose (of course with copyright credits provided), but so far, our requests have been denied by one and ignored by another. We don't profit from anything at all. We have some stills from the big groups that we have posted on our website in our archives. This is a fraction of what they gave us several years ago. We also have some footage that they have provided us previously for different purposes. Would it be considered a copyright violation or fair use if we tell people that they can take clips from certain footage or use some still photographs that we have as long as it makes up less than a certain percent of their work, they credit the owners, and they only use it for this work and not for other purposes in the future? We don't want to stand in the way of positive social forces but we also don't want you to be misled by the "fair" in fair use. Judges applying copyright law typically do not encourage a sense of charitable fairness when confronted with issues such as yours. They will consider the nonprofit aspect of your enterprise as a minor element when analyzing the four fair use factors. In addition, because nonprofits compete for donation dollars, the copyright owners may argue that stepping on their rights deprives them of an important source of revenue (and therefore discourages their investing in such footage in the first place). We're also not sure whether the uses you're envisioning are transformative; they're promoting the same message as originally intended -- to shock the public into preserving wildlife. Therefore, we're not comfortable arguing fair use, regardless of the percentage taken.
Some other concerns. A major factor weighing against your legal position is that you are encouraging others to use this footage without authorization. That could be perceived as risky behavior for two reasons: (1) it exposes third parties to the potential for legal action (and they may seek indemnification from your organization); and (2) it opens up the possibility that third parties, with your permission, may seek to subvert your message encouraged by your offering of unauthorized footage. And, as you recognize, this will also certainly jeopardize any symbiotic relationships you may have built up with the larger charities, particularly if they are forced into a public relations dilemma of having to go after those whom you authorized. Maybe it's best to encourage creative individuals to create their own imagery.

Wednesday, April 16, 2014

A Perfect Day for Banana Hockey? Patenting a New Sport

Dear Rich: Is there anything patentable or copyrightable in the equipment, rules or jargon for a new sport? Say I’ve created “Banana Hockey,” which involves skating on banana peels instead of ice, specifies using fresh bananas as pucks, requires special sticks with banana-shaped scoops. Let's say that Banana Hockey also has its own rules and jargon, which bear only a remote resemblance to those of ice hockey, e.g., a player who “shoots” a banana at a goal is known as a ‘banana caster." Is this stuff worth getting intellectual property protection for?Novelty sports like bed racing and elephant polo may benefit from IP protection but the cost of securing it is not always worth the effort ...
Can we obtain patents on the sport? It's possible to patent sports and sport methods. So, if your game is new and not obvious to others, you may be able to get a patent. But patents are expensive, and it takes more than a year for the PTO to grant one (during which time you have no patent protection). By the time you do get a patent, you will need enough funding to hire a lawyer to enforce it.
Can we get copyright protection for the sport? You won't be able to obtain a copyright on the idea of the game though you can get protection for rule books, images, theme music, etc. Professional sports owners also retain tight ownership over the right to record and broadcast games.
Can we obtain trademarks for the sport? Trademarks helped to generate $470 billion in sports revenue yearly. If you're intending to sell merchandise, you should seek a federal registration. But, here's the catch: you can't obtain a federal registration until you use your sports trademarks in commerce.
Bottom line: IP protection can help protect your turf ... but there won't be any turf to protect without a marketing budget and fan loyalty.

Tuesday, April 15, 2014

Will They Got Mad if We Argue Fair Use?

Dear Rich: If we buy half a dozen of photos from a photo agency, let’s call it XYZ images, and discover that other photos which we obtained from out-of-business newspaper archives (sold on eBay) are credited to a Now Defunct News Service (NDNS) a company since bought out by XYZ, are we obligated to declare those additional photos to XYZ? These are photos that otherwise appear to meet the criteria for fair use, and are not found in a search of the XYZ’s website. If we already did report to XYZ that we have some of these pictures, would that void our option to fair use those photos? If we told them our attorney advised fair-using the NDNS photos, would that make them mad or would they consider that normal business practice? You can buy and sell photos on eBay but if you want the right to reproduce those photos, you'll need permission from the copyright owner. Otherwise, if the owner learns of your use and decides to hassle you, you'll have to deal with the infringement or defend yourself with a fair use argument.
Making them mad. We don't know if claiming fair use will make the owner angry. But if you're using fair use as a negotiating tool, be prepared to defend your position with a reasonable argument based on caselaw. Seeking permission does not preclude you from later claiming fair use -- that's what happened in this case.
BTW Dept. We don't think an attorney would advise "fair-using" something. ("Fair use" is not a verb.)

Monday, April 14, 2014

Can I Reproduce Article About Myself?

Dear Rich: I am a realtor and am creating a web page of myself with the listings that I have. I wanted to know if I can use articles that have been published about myself as well as photos of me taken by several newspapers, magazines etc. In other words, if I have been featured in an article about myself or mentioned in any article, do I have the rights to post it/use it on my website? You might think that being the subject of an article or photo would give you rights to use the results, but it doesn't. There are a few exceptions -- you can reproduce the specific statements you made in the article, and you can prevent use of your image for purposes of commercial endorsement -- but the copyright for the articles and photos vests in the writer, photographer or their employer, and they control the right to publish and reproduce.
That said dept. As a practical matter, it's very possible that the copyright owners will look the other way if you reproduce their works as part of a website, resume, or portfolio. They may consider it a tradeoff for your cooperation, or they may believe you have a reasonable fair use claim, or they may simply feel that the hassle of pursuing you is greater than the potential rewards of a lawsuit. If you plan on attempting this route, it's best to keep all the material within context -- for example, if a photo accompanied an article, post them together, not on separate web pages -- and avoid any implication that the publication is endorsing you or associated with your website or business. If you are concerned about getting hassled, contact the publisher and seek permission --  a simple email confirmation will protect you.

Friday, April 11, 2014

So Many Copyright Questions ... So Little Time

Dear Rich: (1) What is the length of time the U.S. Copyright Office takes to approve or not approve a copyright application? (2) If I secure a lyrics copyright on a public domain melody for commercial purposes can someone else use that same melody with different lyrics --- say a competitor -- and secure another lyric copyright on that same melody? (3) Regarding the renewal of copyrights, is a renewal of copyright application sent out to copyright owners at the appropriate renewal time, by the copyright office or is there a formal time frame that copyright owners must adhere to? How many times or how often is that renewal required? (4) When using public domain music, it is difficult for me to not have a doubt the melody could have copyright protection. Does using a disclaimer provide some helpful consideration in the case of an infringement? Does using a disclaimer absolve the defendant from fines if the cease and desist notices are honored and observed? (5) If a request for a copyright on an established (for sure) melody in public domain has not been approved or affirmed by the copyright office, and an opportunity to negotiate a deal for that completed song arises, what are the risks if the business is carried out despite the fact the copyright and request had not been confirmed? We'll go through your questions, below, but first we wanted to remind you that copyrights are not like patents or trademarks for which "approval" by federal government examiners is essential for protection. Copyright is automatic and registration is necessary only if you want to sue an infringer. Here are your answers by number:
(1) It takes three to five months for an electronic copyright application to be processed. It can be expedited if you are suing someone.
(2) Yes, anyone can receive copyright protection by creating lyrics for a public domain melody (ask Elvis).
(3) Copyrights no longer have to be renewed. Renewal obligations ended for works created after 1963.
(4) Music is either in the public domain or not. If you need help determining public domain status, consult this website or use this book. A disclaimer may have some effect in a trademark infringement case but a copyright disclaimer -- especially the meaningless and confusing use of "No copyright intended" -- has little to no effect mitigating copyright infringement. 
(5) You can't acquire copyright protection over a public domain melody. You can only acquire protection for original material that you add to the melody, or for the manner in which you creatively re-construct the melody.

Thursday, April 10, 2014

Employee Trade Secret Duty

Dear Rich: I don't see many questions about trade secrets on the blog and I have a particular question. Is an employee (not under an NDA) under any duty to discover what are his/her employer's trade secrets are, and/or protect/not divulge them? Employees always have a duty to protect employer trade secrets regardless whether they signed a nondisclosure agreement (NDA). This duty not to disclose is typically found in state trade secret laws. As for the duty to "discover" trade secrets ... an employer usually makes it clear what is a trade secret. If not, the categorization (of what is a secret) may become an issue if an employer decides to sue.
Why do employers use NDAs? Employers use NDAs -- in addition to state laws that protect them -- because it's possible to obtain extra benefits when suing, including increased damages, payment of attorney fees and a guarantee as to where or how the dispute will be resolved.
Not to put to fine a point on it ... The Dear Rich Staff answers many trade secret questions (over 20 so far). Use the search box on the right to find them. We also have a thorough trade secret site with lots of free NDAs!

Friday, April 4, 2014

Using Music in Vine Videos

Dear Rich: It's been a year since the Vine-Prince copyright infringement incident, and I was wondering if anything has changed or progressed regarding having music in one's vines. I ask because I'd like to expand my music criticism blogging to include seven second long real-time critiques of copyrighted song sections. How do the waters look currently, concerning this grayest of issues? Nothing seems to have changed -- at least in terms of Vine policy -- since Prince filed his DMCA notice (and we last wrote about the situation). Vine's TOS prohibits infringing content and permits Vine to remove it "without prior notice and at our sole discretion." That's all standard language for a social media site. However, we haven't seen any news about other popstars chasing down Vine videos. You can sort through DMCA notices at Chilling Effects but a cursory look doesn't reveal any Prince-style complaints. (The notices would go to Twitter, Vine's owner.) We also don't see any indication that Vine is using a Content ID system to flag material.
Is seven seconds a fair use? There are no size, shape, or time limitations that excuse an infringement, although the shorter the segment and the more transformative it is, the more likely it will be excused as a fair use. Your proposed music criticism blog (with seven second snippets) also sounds like a fair use. And if you have a strong fair use position, you can always push back against a DMCA notice. But, if threatened with a lawsuit, speak with an attorney before throwing down the gauntlet.

Thursday, April 3, 2014

Wants to Use Alice in Wonderland Quotes

Dear Rich: I had sort of an epiphany while watching the  Tim Burton version of "Alice in Wonderland." It prompted me to start writing a book called "The Six Impossible Things I Believe Before Breakfast." I plan to self publish but am concerned about permissions. I will use about 8 dialogue quotes in the book and then I have come up with my own 6 Impossible Things I Believe Before Breakfast inspired by Alice's. For example Alice's 1st Impossible thing is "There is a potion that can make you shrink" Mine is "There is an enemy that can make you shrink" Do I need permission to expound on an idea inspired by watching a movie? If so, who do I get it from? No permission is needed. Lewis Carroll's Alice's Adventures in Wonderland was published in 1843 and lives comfortably in the public domain. Even if it were not in the public domain, we think you would be safe revising eight quotations from the book under fair use principles.

Wednesday, April 2, 2014

Are Freestyle (Improvised) Songs Protected by Copyright?

Dear Rich: Are songs that are created "on the spot" protected by copyright laws? I do freestyle songwriting and upload the video or MP3 on the internet. My songs contain original lyrics and melodies and are done without any type of preparation whatsoever. Most of my songs are without instruments, just my voice (acapella style). Your freestyle songwriting is protected by copyright law because it is “fixed” -- that is, you’ve recorded your songs as videos and MP3s. You don’t need full instrumentation to claim a songwriting copyright either; words and melody should be suitable. Your copyright enables you to chase anyone who has access to your songs and who copies them. (By the way, this is what your brain looks like while freestylin'.)

Tuesday, April 1, 2014

Fortune 50 Company Rewriting Pop Songs

Dear Rich: The company I work for -- for-profit Fortune 50 -- has been creating songs as learning tools for its employees and clients' employees. These adapted songs keep the tunes of popular music and simply change the lyrics to fit the subject matter.  Does this fall under parody? Or would this be a copyright infringement if the company does not ask or get permission from the original artists?  If the company is recording or performing copyrighted songs without permission, it's infringement. If the company is simply rewriting the lyrics and encouraging others to sing it to a certain melody that may be an infringement (as we discussed recently). Lyrics are separately copyrightable and if the company is borrowing too much from the originals, they would create an infringing derivative.
Are these parodies or fair use? We doubt whether the changed lyrics qualify as fair use/parody. Most judges believe that a parody of a song makes fun of the underlying subject matter (although one judge claimed a parody doesn't even have to involve humor). In any case, if the use is commercial, and the company is recording or performing the complete song, this would be a hard sell as a fair use defense. In addition, the Fortune 50 classification and the accompanying deep pockets also make the company an appealing target ... should the song owners learn of the infringement.
By the way Dept. Permission is not required from the original artists; it's required from the owners of the song copyright (usually a music publisher).

Friday, March 28, 2014

Can I Use Public Domain Films That Contain Copyrighted Music?

Dear Rich: I have a sizable film collection of 16mm music films (soundies) from the 1940’s that I would like to assemble into a program for online distribution. All the films fell into the public domain but many of the songs are still under copyright. You can see all kinds of Soundies on YouTube and the Internet Archive whose music is still under copyright and they don’t seem to be bothered by the copyright owners. Should I play it safe and request permissions from the owners of the films I want to use? Or, has there been some recent court ruling regarding the status of copyrighted music in public domain films I haven’t heard about? No, there haven't been any recent rulings and we wish we could provide a clear course of action. But as public domain expert and author Stephen Fishman writes, “In most cases, if a film was not renewed neither was its music. No court has ever decided the question of whether, in this event, the music is in the public domain along with the rest of the film.” As evidence of the confusion, Fishman cites two examples: a situation involving the 1961 public domain film "One-Eyed Jacks" which was not renewed but the film's score was timely renewed in 1989; and the elimination of four songs by the distributors of a DVD version of the public domain film “McLintock!” The songs were removed to avoid paying clearance charges of 48 cents per unit. It is possible that posters on You Tube and at Internet Archives offer these films with the music (and you may be able to do the same thing), but the more popular and/or lucrative your venture becomes, the more likely you will hear from a music publisher.

Thursday, March 27, 2014

Infringement of Choreography Copyright?

Dear Rich: I choreographed a show for a producer NOT for hire. Now she is changing my choreography over my objections. Does she have this right? We have done the show 12 years but now she wants changes which, in my opinion, are aesthetically and structurally wrong. I am now waiting for my copyright to be approved by the Library of Congress -- included a DVD of the show. She also hired someone else to 'set' the work without a fee to me. Assuming (1) you are the sole "author" of the choreography, and (2) it meets copyright standards, you would be the copyright owner and would have the right to prevent others from making changes (creating derivative works). Your current arrangement? If there was any paperwork twelve years ago, now's the time to check it. We assume you have granted either an explicit or implied license to use your choreography. If a new version is being created, it's likely you will need to negotiate a new license.
Co-authors. If someone else made material contributions -- coauthored the choreography -- then that coauthor could modify the work without your permission as long as you are paid for a proportional share of the revenue. By the way, the protection for choreography copyright extends beyond the performance on stage; it includes other media -- for example, a series of still photos of the dance pattern. There is very little precedent for choreography copyrights and if you are considering pursuing the producer, we'd suggest you consult with an attorney.

Wednesday, March 26, 2014

Charity Seeks Clarity: New Lyrics for Old Songs

Dear Rich: I am seeking clarity about a non-profit educational project that includes a sing-along supplement. I have written new lyrics about money and charitable giving for a number of existing song melodies--most of whose original lyrics do not reference either money or giving. (1) Does this fall into the categories of fair use and/or transformative work? (2) Is simple publication of my new lyrics with "sing to the tune of [name of song]" likely to be problematic? 3) Should I be copyrighting my own new lyrics, either separately or as part of the printed publication? 4) How would you suggest proceeding? Assuming these are not parodies or "rewrites" of the lyrics, you're very unlikely to run into obstacles. Performing, recording the songs, or including the sheet music could be a problem but if you're not doing any of that, and you're simply referencing the songs as a source for the melody, we doubt any music publisher will bother writing a letter of complaint. We also doubt whether a fair use analysis applies because what you're doing is not likely to be an infringement.
Should you register? That's up to you. You get copyright automatically without registration and probably only need it if you're expecting to sue someone.

Tuesday, March 25, 2014

Wants to Sell Kiosk Using Apple Computer

Dear Rich: Hi, I'm building a kiosk system that runs on an Apple computer. The main component in the kiosk system, at least as we intend it to be, is the software. We would simply like to use an Apple computer to run the software on. The computer will most-likely be housed inside the kiosk enclosure and not visible to the user. Would it be legal to sell such a system?Yes, assuming you've legitimately purchased the underlying systems, you can resell them under both patent law (under a principle known as patent exhaustion) and copyright law (under the first sale doctrine):
  • Patent exhaustion. Once a patent owner sells a product, the patent owner cannot seek further patent payments for that particular product.
  • First sale. You can also resell copies of works protected under copyright law. However, this rule may be "over-ridden" in some states where courts have held that software isn't sold; it's licensed and can only be 'resold' under the terms of an end-user license agreement.
Trademark law should not be an issue as long as you don't imply that Apple is affiliated with, supports, or endorses your endeavor.

Friday, March 21, 2014

Wants to Sell "Wheel of Time" Crocheted Shawl

Dear Rich, My daughter has a talent for taking a description of an item in a book she likes and creating an original article of knitting/crocheting. For example, in the “Wheel of Time” book series, there is are descriptions of the Flame of Tar Valon and Aes Sedai shawls. She has created crocheted articles and an pattern for the Flame of Tar Valon and desires to sell them online. Further she desires to make and sell her own designs of Aes Sedai shawls. What are the legal hoops she needs to jump through, if any, to avoid getting sued? We think your daughter will be fine as long as she steers clear of any advertising that implies the Wheel of Time folks support or endorse her endeavor. One way is to label her work as "Inspired By Wheel of Time" as described in a recent post. Of course, the greater your daughter's success, the more likely she will be scrutinized by the WOT owners.
Who are the WOT owners? Your daughter would want to avoid upsetting the Bandersnatch Group (who appears to be the official licensor of rights) and which has a variety of live applications and registrations for Wheel of Time at the trademark office.

Thursday, March 20, 2014

Can We Post Pictures of Products?

Dear Rich: I am starting an online company to provide a service/outlet for people in their communities to sell or give away their unused household items. I have taken a collage style photograph of used items that I own and I plan to post that image as a banner on my website (and adding a funny comments to go along with selected items -- for example, a Darth Vader Mask; "May the force take it away.") Someone said that I could be violating copyrights of the items in my image. We think "Someone" is wrong. Section 113(c) of the copyright law permits the reproduction of product photographs if they are "in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports."
PS Dept. Speaking of getting rid of stuff, we just finished reading this amazing book about our throwaway culture.

Wednesday, March 19, 2014

Can Mechanical Violin Play Billie Jean?

Dear Rich: I'm making a short documentary about a guy who invented a machine that plays a real life violin. It's a kinetic sculpture and it can play anything that you can send to a midi file. I want to make the film appealing to all generations and I was hoping I could have the violin play Billie Jean or Livin' on a Prayer. The kinetic sculpture can only play one note at a time. I plan on selling the film to TV or news websites. My questions: 1. Would having the violin play a short (10 second) section of the melody be considered copyright infringement? 2. What about having the violin play different parts of a song (bass, harmony, melody) and editing them together to make the song sound more full. Would that also violate copyright? I ask because the film could be seen as educational because the inventor explains some of the engineering that it took to build the kinetic sculpture. I also wonder if this is falls under the "transformative" clause. We're fans of mechanical music and used to love listening to it at the Museum Mechanique until it moved from its "cramped, noisy, damp and dingy" Cliff House basement location to Fisherman's Wharf. (BTW, the compulsory music license owes its existence to mechanical music.)
Right, you had a question. Your use of Billie Jean or Livin' on a Prayer by a mechanical violin, is likely to be considered a fair use because you are using such a short segment (10 seconds). Here are other examples of music fair use cases. We're not sure your use is transformative. Are you commenting on, or offering new insight into the songs? If you are, that would help your argument. But we must we reiterate our mantra - fair use is a defense and is a matter ultimately determined by the courts. Also, it should not make much difference whether you use just the melody or the full arrangement. 

Tuesday, March 18, 2014

Can I Use Provisional Patent Drawings in Regular Patent Application

Dear Rich: I have submitted a provisional patent application with eight drawings using Inkscape software. Five drawings show four embodiments (uses for my invention). The drawings are good quality, but are not quite up to utility patent standards. Would I need to re-draw all of them and submit when I file for a regular utility patent, or could I reduce the number of drawings and rely on the previously submitted provisional patent drawings as evidence should someone infringe on one or more of the embodiments? If your drawings are not up to the USPTO's formal requirements -- for example, they have blurred lines -- you will receive a notice stating that your application will not be examined until you file replacement drawings. It is only after your drawings meet formal standards, that your file will be sent to an appropriate examining division. So, filing with informal drawings will delay patent examination. (Note: It's possible for a lay person to create suitable patent drawings -- check How to Make Patent Drawings for information on doing your own). In general, most applicants pay for the services of a professional draftsperson and you can find such services using an Internet search engine (expect to pay $100 or more per drawing).
Embodiments?  It is likely in your best interest to include as many embodiments as possible in your regular patent application (keeping in mind that you cannot rely on your provisional application's date, if you have modified what you are claiming in the regular application). According to Patent It Yourself author,  David Pressman, the more ramifications and embodiments you can think of, the broader your patent claims will be interpreted, and the more you’ll be able to block others from obtaining patents either on devices similar to your invention or on improvements to it. Also, you may have something to fall back on if your main or basic embodiment is “knocked out” by prior art that your search didn’t uncover or that surfaced after your search.

Friday, March 14, 2014

Wants to Use College Logos for Cheerleading Site

Dear Rich: My partner and I are launching an informational website about college cheerleading. We are featuring squads from across the country. On one page, we list all of the schools featured on our site. We would like to use those various college logos, just to add some visual excitement to the page. Can we do this without permission from each school we feature? We think your use may be permissible but without knowing more about your website, we can't say with any certainty. So, because of the frequency of trademark lawsuits by colleges it may be worth investing in an attorney's opinion before launching your cheerleading enterprise. In any case, here's how an attorney may analyze the situation.
Nominative trademark fair use. As you may be aware, editorial (or "informational") trademark uses that inform, educate, or express opinions, are protected under free speech principles (sometimes referred to as "nominative trademark fair use"). But not all informational uses qualify -- for example, baseball cards provide information but baseball card manufacturers license rights from the MLB.
What are the standards? When determining nominative fair use, a judge may ask: Is there likelihood of confusion -- that is, are consumers likely to believe the colleges endorse or are associated with your site? If so, was the use of the college logos necessary to identify the schools? Did you make minimum use of the logos? Did you do anything to imply sponsorship or endorsement by the colleges? Here's more on how these decisions are made.