Dear Rich: Nolo's Intellectual Property Blog

Monday, March 19, 2012

Life Rights Agreement, Releases, and Permission to Tell a Life Story

Dear Rich: For the past couple of years I’ve been working on a non-fiction book about the Holocaust, specifically about two guys who escaped from a concentration camp during World War II and lived to tell the tale. I have done many interviews with them and they support this project and have given me verbal permission to use their story in this book. Nonetheless, I would think that both they and I would be better protected (from literary interlopers?) if we all signed whatever the document is called that gives me the exclusive right to tell this story. I'm not sure what the agreement is called -- a “life rights agreement" or “unlimited – or limited – personal release"? The agreement, as I see it, would also include ancillary rights, such as possible movie or television or other deals in the future; and in those cases, I would think that you do need some sort of legal release from the subjects of such a work. Is there a boilerplate form for this? Is there a form in one of your books? Or should I consult with an attorney? The document you'll need depends on how far you plan on taking this story. Below, we've outlined the range of agreements and what they accomplish. These documents may have different names, and many are referred to as "life rights" agreements but don't place all your trust in the title of an agreement; check that it contains the provisions that you require.

You are writing a nonfiction book about the subjects or making a documentary film and that's all you plan to do.	You would need a release from the subjects in which they agree not to sue you for defamation, invasion of privacy, right of publicity, or copyright infringement (in the event that the subject gives you permission to reproduce a copyrighted work). Here’s more about releases and here’s an article about when they are required. An unlimited release would probably do the trick.
You are writing a nonfiction book (or making a documentary film) but you also want to make sure that you have the exclusive right to do so and that the subjects won’t contribute to a competing book or documentary.	You would need the release mentioned above along with an exclusive grant that’s specifically geared to the project you’re working on – that is, exclusive rights to use the person’s persona, materials, and copyrightable works for a nonfiction book or documentary movie. An exclusive grant that limits cooperation with others usually requires a more substantial payment than an unlimited release (which may be granted for nominal payment).
You are writing a nonfiction book or making a documentary film and you would like exclusive rights/access to the subjects as well control over subsequent projects that may flow from your initial project. For example, you seek to control the rights that would be needed if a producer reads your book and wants to make a TV special based on it or a fictional film derived from it.	This is when you need a life rights agreement signed by the subjects (sometimes called a “depiction agreement”), and you may also want to acquire “adaptation rights.” (This article explains some of the issues.). The life rights agreement is usually based on options – for example, you have the right to exercise an option for certain rights within 18 months or two years and if you don’t, those rights revert to the subject. Life rights can involve a wide range of issues including remakes, sequels, television series, merchandising, live stage and novelization rights. Here’s an example of a Life Rights agreement and heere’s an example of a life rights option agreement for specific rights. (And here’s one for sale.) As usual, caveat emptor as we can’t vouch for accuracy or enforceability! An attorney’s help would best preserve your rights. Because you’re in the Bay Area, we would recommend contacting California Lawyer’s for the Arts.

Friday, March 16, 2012

Do I Register for One Mark or Two?

Dear Rich: I would like to register a word service mark and a logo (which are the initials of the word mark) at the same time if possible. The word mark and logo are not used right next to each other on the website, however, or in any other promotional materials. From the research that I have done I think that he will have to register them separately, but I wanted to get a second opinion if possible. Second opinions are always a good idea unless the first opinion comes from our favorite MD (left). In any case, our hard working staff concurs with your first opinion. As the USPTO points out, "Only one mark is permissible per application, although a mark may consist of several elements that are joined to form a composite whole (e.g., words plus a design)." We took a look at your web page and we think that you have two separate marks -- not one composite design mark. So, two applications are in order. By the way, we discussed initials as trademarks in a recent entry.

Wednesday, March 14, 2012

Copyright for Poets

Dear Rich: I have a relative who wrote poetry and we would like to collect his work and publish a volume of his poems. None of the poems have ever been published. How do we copyright this in his name? We love poetry (and here's a photo of one of our favorite poets). He turned us on to this poem and it made quite an impression on the Dear Rich Staff (For poetry students, here's one take on the poem; and here's another).
Right, you had a question. Poetry, perhaps the oldest form of literary work, is protected under copyright law. Your relative's work is protected automatically, but you can obtain certain advantages -- as well as placing your relative on record at the Library of Congress -- by filing a copyright application. You can register a poetry collection (this should help) by completing Form CO. And congrats on publishing a poet. "A poet's autobiography is his poetry. Anything else is just a footnote."--Yevgeny Yevtushenko.

Tuesday, March 13, 2012

Wants Copyright for eZine

Open publication

Dear Rich: I am starting an online magazine (a quarterly) that will have both submission based content as well as contributors. Since this online magazine (e-zine) will not be in print to start, is it necessary to copyright it? As a writer myself I want to have a copyright in order to protect the submitted content as well as my columnists. When I contacted the Copyright Office for help they were a little confused about my question. Wow, we loved this crazy little zine back in the day! (We're so old we remember when social networking required a Xerox machine!)
Right, you had a question. We think the Copyright Office punted because you're actually posing several questions (not one):

Do you need copyright protection for your eZine?
How do you get copyright protection for your eZine?
Who owns the copyright on contributions and submissions to your eZine?
If you don't own copyright on contributions and submissions, how do you get the right to reproduce them?

The answers.

Copyright protection works the same for print or digital publications. If you want to stop others from unauthorized copying you need to acquire rights under copyright law. Copyright is automatic and you don't need to register with the Copyright Office ... but it provides some advantages. This article explains the basics.
You get copyright ownership for stuff in your zine by (a) creating it yourself, (b) hiring employees to create it, (c) hiring contractors under work made for hire agreements, or (d) getting the contributors to assign copyright to you. Also, you can get a collective works copyright on all of the articles in each ish. (Here's a recent entry on registering online periodicals.)
The contributor owns the copyright in the submission unless the contributor is an employee, or a contractor under a work made for hire agreement.
You get the right to reproduce submissions and contributions by entering into agreements to transfer rights -- that is, either getting the author to assign all copyright to you or to grant you the limited permission to reproduce the submission in your digital zine. You can find basic permission forms in our Getting Permission book.

Monday, March 12, 2012

Worried About Infringing Game Patent

Dear Rich: I am looking into possibly producing and selling a board game of my own design. I have done research into patent law and understand that patent applications are not available to the public for 18 months. So there is a "gap" where a patent may be in the works, but not available to patent searches. My understanding is that if I were to produce a product, my customers could be sued for patent infringement if my game ended up being in violation of some unknown patent. (Either unknown because of the "gap" I mentioned, or just an undetected.) Is this correct? Also, the theoretical unknown patent would likely have to be a method patent, as the types of game bits are not uncommon. As such, wouldn't that make the end user would the one actually infringing? If I pursue this business, is there a way to protect myself and my customers? It's true that an end user can be sued for patent infringement but that's rarely the case with board games. So, regardless of the patent issue, we doubt whether your customers would be in jeopardy.
Published patent applications. You're concerned that an unknown patent application will jettison your game. Keep in mind, you can't be sued for patent infringement until after a patent has issued --- that is, until after it's been officially granted by the USPTO. If you're concerned about recently published patent applications, you can review them at the USPTO's online patent gazette. When you review them, remember a few things:

just because a patent application is published 18 month after filing does not mean it will be issued,
even if the application is issued as a patent, you won't be liable for infringements prior to issuance unless you have been placed on notice, and
even if you were placed on notice, you would only be liable for infringements that occur after the notification. In other words, you should have sufficient time to consult an attorney and decide whether to halt manufacture and sale before a lawsuit could be filed.

In summary, if you do withdraw the game in a timely manner prior to issuance, you will likely avoid liability.
Searching for board games. If you're searching for existing board game patents (not patent applications), this article should help. And if, after reading it, you feel your board game is sufficiently novel and nonobvious, you may wish to consider filing your own utility patent application, design patent application, or provisional patent application.

Thursday, March 8, 2012

Can They Do That to My Artwork?

click for our close-up

Dear Rich: For almost a decade I have been doing creative and artistic work for a non-profit organization. (I have been doing this for free because I support the charity’s work and ideals.) My work is later sold to the public and has been, for many years, the largest single fundraising project of the organization. Recently, however, when my current project was almost (but not quite) ready to go out to the printer, someone else in the organization volunteered to error-check and offer creative suggestions about my unfinished work. Then, entirely without my knowledge or permission, she took my project to our organization’s Board of Directors who decided, again without my knowledge or permission, to extensively edit my work and then send it out for printing. From my point of view they “butchered” my work, but the legal question is whether they had the legal right to make unauthorized changes to my work and then to publish it without my permission. Now, yes, they still put my name on it as the author and artist, but I was embarrassed to have my name associated with the finished product after all the changes they made. Let me also point out that in all the years I have done this, no one has ever asked for any changes of any kind to my finished work, so our relationship was such that my work was published exactly as I submitted it. I understood that the basic paradigm of intellectual property rights is that original and creative works belong to their creator. Since I never transferred possession or ownership to the organization, I feel that my work has been stolen. Do I have a case? Wow, your question took us so long to read that we started daydreaming about raccoons. We're not sure why ... maybe it's got something to do with those nocturnal muddy paw prints we've been seeing around during the day. (Click on the little culprit on the right.)

Right, you had a question. Actually, you have two questions: (1) Can they modify your work without your permission, and (2) Who is the copyright owner of the work? The first question is tied to the second because if you owned the copyright, any unauthorized modifications would be considered an infringement (unless excused as a fair use). As to the second question -- you own copyright unless the work is considered a work made for hire (and we think the Supreme Court addressed your main question).
CCNV v. Reid. In this 1989 case, the Community for Creative Non-Violence ("CCNV"), a nonprofit dedicated to eliminating homelessness, decided to create a float for the Washington D.C. Christmas Pageant. One director conceived of the idea of a statue as an analogy to the nativity scene with a homeless family huddled over a steam grate. The CCNV hired a sculptor named Reid. After compromising on the material to be used, Reid prepared a sketch. The CCNV requested some changes. Reid agreed to create the statue and received a $3,000 advance. The CCNV constructed the steam grate portion of the exhibit. Reid delivered the statue and was paid a final payment of $15,000. After the pageant and a month on display, the CCNV wanted to take the statue to other cities. Reid, who now had possession of the sculpture, objected claiming that the statue was too fragile. Reid wanted to take the statue on a less demanding exhibit tour. Both parties claimed copyright in the work. The Supreme Court held that the sculpture was not a work made for hire because Reid was not an employee, as defined under law.
Proving you're an IC. To determine employee or independent contractor status the Supreme Court stated that the following factors are weighed:

the skill required in the particular occupation;
whether the employer or the worker supplies the instrumentalities and tools of the trade;
the location of the work;
the length of time for which the person is employed;
whether the hiring party has the right to assign additional work projects to the hired party;
the extent of the hired party's discretion over when and how long to work;
the method of payment;
the hired party's role in hiring and paying assistants;
whether the work is part of the regular business of the hiring party;
whether the hiring party is in business;
the provision of employee benefits; and
the tax treatment of the hired party.

Where does this leave you? We have a feeling that you fulfill IC status because you were not commissioned to create the work, apparently you were not paid for the work, and unlike the CCNV case, you conceived of the subject matter of the artwork. That would put the copyright under your ownership. Any unauthorized modifications made subsequently by the nonprofit would be an infringement. The nonprofit may dispute this and argue that you consented to the modifications and permitted the publication of the modified work under your name. These are all matters of factual proof -- for example, the courts would look at the emails exchanged or the documents that were executed.
Joint authorship? In the CCNV case, the CCNV did some supervision of Reid and contributed a portion of the work (the steam grate.) A lower court later determined that the sculpture was a work of joint authorship -- that is, the parties had the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. We don't think you will have the same outcome, especially if you conceived of the artwork and prepared the initial work by yourself. However, because you're considering doing battle with the nonprofit, you should consult a copyright attorney in your area to get an opinion from someone who's privy to the work and the facts.

Wednesday, March 7, 2012

Will TM for Sports Journal Cause Problems?

Dear Rich: What is the likelihood of confusion and my being sued for copyright infringement if my publication about becoming a professional athlete has the same trade mark as a photographer who provides: "Educational services, namely, providing a blog, webinars, podcasts, seminars and educational conferences featuring educational information for individuals who desire to become professional photographers and distributing course books and DVDs therewith." Or are these dissimilar enough? I realize that I can apply for a trademark ($325.00) and or hire a lawyer, which I am ok with doing one or both, but want to test the waters before leaping. Whoops! Don't mind us while we disinfect your question by striking the reference to copyright infringement; here's an explanation of the difference between TMs and copyrights.
Similar marks and similar services? We can't predict how a trademark examiner will rule in your case but we can tell you about the standards that will be applied. The examiner will try to determine whether consumers are likely to be confused by the two marks. Here's how likelihood of confusion is determined. The less "related" the goods, the less chance for confusion -- for example, SHELL as a trademark for flatware is not likely to be confused with SHELL as a trademark for liquified petroleum gas.
The zone of expansion. The examiner will also reject an application if the second user's goods are within the first user's zone of natural expansion. For example, a famous seller of wine such as Gallo might be likely to expand into the sales of cheese. Of course, the examiner's decision is dependent on the similarity of the marks and the fame and popularity of the first user. To get a good idea of how the USPTO rules in these matters, we recommend you search The TTABlog where these battles are regularly reported. Type "related goods" into the search box at the blog.

Tuesday, March 6, 2012

Columnist Wonders: Who Owns My Column?

Dear Rich: I recently left my position as editor of a weekly newspaper. During my 24-year stint at the paper I wrote a popular column and won many national and state awards. I am considering writing a book that would consist of a compilation of some of my columns along with personal recollections. I am in the dark as to what rights I have to my columns and whether I can re-publish them. The newspaper owners have been running a small copyright insignia for many years but for about the first 10 years of my employment, they did not. If you could shed some light, I'd appreciate it. Because you were editor, we're going to assume that you were an employee of the newspaper, not an independent contractor. In that case, the newspaper owns all rights to your columns. (We're assuming the columns were created in the course of your employment, not on your own time). If they were created on your own time (and away from work), you may have a claim to them (unless your employment agreement is to the contrary).
The copyright notice. If you've been writing columns since 1988, it probably doesn't matter whether the copyright notice was included. It certainly doesn't matter for any columns published after March 1, 1989. (No notice was required after that date.) If the notice was omitted from columns published before that date, the works could still be covered by the newspaper's blanket notice, typically included on an editorial page or some similar page.
What should you do? We can't predict the results but we would hope that the newspaper wouldn't have any objection to your reproduction of the columns in your book. (Perhaps you can argue that you're promoting the goodwill of the paper.) They don't have to give up the copyright (although you could ask for that) in order for you to use the columns in your book. If they give permission, get it in writing. It can be short and simple -- something to the effect of "We license to you the right to reproduce XX columns in your book tentatively titled "My 24 Years as Editor." If you're looking for a more detailed agreement, check out our book, Getting Permission.

Monday, March 5, 2012

Realtor Wants to Assign Photo Rights

Dear Rich: I’m a Realtor and I take hundreds of photos of my listings every year and write the copy for publication. I compile the information that is then used by our local multiple listing service. I am being approached by multiple vendors I do business with wanting me to give them my copyrights to my photos and text. Is there a copyright that will cover my work as whole, both existing and future listings, without my having to file a separate copyright for each listing’s photos and text? Just so we're clear ... You take the photos of the properties and as photographer, you own the copyright in each photo. Certain vendors want permission to use the photos, is that right? Or do they want to own all rights to the photos?
If the vendors just want copyright permission ... In that case, you can write a statement to the effect that "I own copyrights in all photos that I furnish to you and I grant you permission to reproduce the photos for your [name of site or publication] and I retain all other rights." (You can find more nuanced language in our Getting Permission book.) A license allows you to retain copyright and permits the other party to use the photos. We'd recommend that you seek a license rather than assign your rights (this article explains the difference).
If they want to own all rights ... In that case, you need to assign your rights in each photo. When you do that, you won't retain anything. You would do that with a statement with each photo or batch of photos that you furnish. It would be something to the effect of "I assign all copyright in the following photos: [list the photos by the property addresses] to you." Of course you might want something a little more formal. This statement can be by email as long as you follow the rules shown here. If you assign, you can't reproduce the images yourself unless you get permission from the new owner.
Do you need to file a copyright application? No. Copyright is automatic in the U.S. and you get it once you click the shutter on your camera. Registration, though recommended, is a formality that provides certain legal benefits. You don't have to register copyright to license or assign your rights.

Friday, March 2, 2012

"Revising" Photographs: When Is it Fair Use?

Dear Rich: I am writing in concern of my use of already existing photographs as a source for my artwork. As a print maker, at times, I base my work on the photographs of others. Sometimes I am able to gain permission from the creator of the photograph and other times I have no luck with the correspondence at all. For the work itself I build a theme around a source photograph. From that photograph I cut a stencil that re-creates the image in a graphic way. The finished product may be recognizable to it's original source but is not a direct replication. I make a very limited run of my final work ranging from 1-23 pieces. Some of the work is produced for gallery shows, murals, or to be sold as prints. Sometimes the work finds it's way into a book documenting art. So my question is where is the line drawn between fair use/transformative use and copyright infringement for images? Asking the Dear Rich Staff to define the line between fair use and infringement is a little like us asking us to define the line between art and nature. We can define fair use (and we've done so at this site) and you can review caselaw and look for comparative fact patterns. But in the end, to paraphrase Marshall McLuhan, fair use is anything you can get away with (P.S. we love MM. Can you believe he wrote this 45 years ago?). Fighting over a fair use claim comes down to a lot of time spent with lawyers and -- as in the recent Richard Prince case -- the outcomes are not always favorable to artists.

Thursday, March 1, 2012

Who is the 'Author' of Band's CD?

Dear Rich: I have a question about the sound recording copyright. My band recorded a CD. I own the master. Who should be listed under author? Do I include cover tunes since it’s the sound recording, not the words and music being registered? Just so you're clear (and we think you are), your sound recording copyright won't protect the songwriting; it will only protect the particular series of sounds that are “fixed” or embodied in the recording. You should read Circular 56 if you have any doubts about what the copyright protects.
Who is the author of a sound recording? The author of the sound recording is the person(s) who performed, produced and fixed (or recorded) those musical sounds. Typically that would be the musicians, the engineer and the producer. If you paid all these people to contribute their efforts as works made for hire, then you could be listed as "author" on the application. If not, you would (1) list the authors, and (2) have them all assign their rights to sound recording copyright to you, and (3) list yourself as "copyright claimant." Having the written assignments is a requirement of copyright law but in reality, many copyright claimants for sound recordings don't actually have all of these assignments. Their approach is that such documentation is only needed if someone challenges their rights, which is usually unlikely.
Should we include cover tunes? You should include all of the songs on the albums in your sound recording application. That's because the copyright only protects the versions you've recorded, not the underlying songs. That's different than if you've sampled someone's recording and included it. In that case, you need authorization to use the sound recording. We've written about that before.
P.S. All this talk about masters and new recordings has got the Dear Rich Staff excited about their own soon-to-drop new sound recording copyright, a clip of which is included above.

Wednesday, February 29, 2012

Does Employer Have to Furnish Copy of NDA to Employee?

Dear Rich: Is it required by law that employers provide a copy of the signed nondisclosure agreement to the employee after they have signed it? In most states, yes, the employer must furnish a copy of each signed agreement including NDAs. If the employer doesn't provide a copy at the time of execution, then the employer usually must allow the employee to view and copy the agreement upon written request. These laws, sometimes referred to as "access to personnel records" legislation differ from state to state and you can find more about your state's law in this article.

Tuesday, February 28, 2012

Does Fundraising Documentary Require Photo Releases?

Dear Rich: I’m creating a documentary for a non-profit aquatics club that will provide background information on the organization before fundraising pitches. The documentary covers the organization’s history in relation to the surrounding area and testimonials/interviews from current members, former members, and local residents. To add visual appeal, I’d like to use photographs from a local newspaper (ranging from the 1950’s to the 1990’s), personal photographs, and professional sports team photographs spanning the facility’s history. I’ve already obtained unlimited interview and image releases from the interviewees. I’m going to contact the newspaper about the published images; and I’m going to contact the photographers who took the team photographs. Since many of these photos are old and feature many people, I will unfortunately not be able to obtain personal image releases from everyone. Are these images considered informational since they appear in a documentary presenting facts? Is this documentary considered informational even though it will be used during fundraising activities? Personal releases shouldn't be required from people whose still images appear fleetingly in a documentary, especially in the context you're describing. (It sounds like you've got the other side of the issue -- copyright permission from the newspaper -- also covered.)
Documentaries raise funds. The fundraising aspect of the project doesn't negate the informational quality of the work. After all, just about every documentary directly or indirectly is tied to a financial cause, even if that cause is the filmmaker's pockets (yes, sad to say, Jackass 3D is considered a documentary). A documentary maker usually only needs a photo release if a person's image or personna is used to sell a product or service, or if you are invading the privacy or saying something that might be considered defamatory (we discuss these standards in more detail in this article).

Monday, February 27, 2012

Do We Have to Include Trademark Punctuation?

If a statement such as "Fly high. Fly now." is a trademark, does the punctuation need to be included in the trademark statement at the end of an advertisement? I was taught that it does, but if the trademarked phrase is not italicized or boldfaced, it looks odd. (In the example, it would appear as "Fly high. Fly now. is a trademark of the Whatzit Corporation.") The thing about those tiny trademark statements at the bottom of ads is that nobody reads them except the attorneys for the companies whose trademarks you're mentioning. So it really doesn't matter how it looks as long as you duplicate the mark as the owner intended. (By the way, if it looks really strange, use single quotation marks to set it apart.) Also, if the mark is registered, indicate that it is federally registered, but don't make a similar statement about an unregistered mark. In some cases -- for example, if you're using a mark with the permission of the owner -- you may have a contractual obligation to use specific language. By the way we took a look at punctuation and trademarks about three years ago so we won't bore you by revisiting the Hall of Famous Punctuated Marks (although we were surprised to see that a few people have registered Punctuation as a mark).

Friday, February 24, 2012

Stand and Deliver Video Rights

Dear Rich: I am a lawyer who presents onsite training. In my marketing video for the trainings, I have included short clips from "Stand and Deliver" and "Freedom Writers" to illustrate how some of the issues play out in educational settings. I am assuming I should get permission to use the video clips but I am unclear of the the process to do so. Yes, you should seek permission if you're using the clips for marketing purposes. It's always possible your uses could qualify as a fair use (more on that in a sec) but because of your position as an attorney-trainer, we think it's best to keep risks to a minimum. We believe that the 1988 film, Stand and Deliver is owned by Warner Brothers. Here's a Warner Brothers request form with instructions for seeking use of a clip or still. (It looks a little bit worky but hopefully somebody at WB can help you through the process.) Freedom Writers looks like it's owned by Paramount. That company directs folks like you to click on their Paramount Film Clip Licensing link which unfortunately leads nowhere (or at least it did when we tried it). We also tried to find a link for MTV Films, the co-production company but all our links for that lead, alas, back to Paramount. Perhaps you'll have better luck at the Freedom Writers website but we think you get the idea. You need to find some way to contact the owners. Once you do, plead for permission, and hope your request doesn't get buried on some paralegal's desk.
The Fair Use Argument. If you can't obtain permission, you may -- depending on the length and context of the clips -- be able to justify your borrowing as a fair use. The marketing aspect of your effort works against that argument but take a look at some of the audiovisual cases (scroll down to the Artwork and Audiovisual cases) to get an idea. As always, remember that fair use is a defense, meaning that a complaining copyright owner can drag you into court to defend yourself.

Thursday, February 23, 2012

Can We Arrange Elvis Songs?

Dear Rich: I’m planning to create an arrangement of Elvis Presley tunes for string quartet. Do I need permission to just use these arrangements for my own string quartet? What if I want to sell the arrangements to others? We love your idea (and others like it, too). You're probably okay arranging and performing a few Elvis songs for private performances. That's because the owners of the music are unlikely to notice (or to care if they do find out). If you plan to perform the music, publicly, the venue would need to pay for public performance royalties (sidebar on right under U.S. copyright law). If you were to record and release the music, you'd need to pay mechanical royalties.
What if you want to do more? You will need permission if you plan on promoting sales or distribution of sheet music arrangements to other quartets (or seek to stop others who copied your arrangement). That's because the making of sheet music requires authorization whether it is a straight reproduction of the sheet music or an “arrangement” or “orchestration” that qualifies as a derivative work. In other words, you can't reproduce the underlying work -- for example, Heartbreak Hotel -- in a printed arrangement, without the publisher's permission. You can usually find the music publisher’s contact information at the following sites: Harry Fox, BMI, ASCAP, or Limelight. Also, the National Association for Music Education website has an example of a request form for permission to create musical arrangements.

No, They Didn't Dept.

Guess the Daily Beast headline writers didn't have time to read this.

Wednesday, February 22, 2012

Music Publishing and Administration Deals

Dear Rich: Can you explain the difference between a music publishing deal and an administration deal? Sure! In an administration deal (also known as an "admin deal"), a music publisher exploits song copyrights but doesn't own them and the publisher usually earns a smaller percentage of the song's income than in a straight publishing deal - perhaps 25% compared to 50%. An administration deal is also limited to a number of years -- for example, a 5 or 10 year period whereas in a straight publishing deal (or in a variation such as a co-publishing deal), the music publisher acquires ownership of the song copyright and the term is often for the length of copyright protection (or it may be terminated after 35 years under copyright law).
Many choices. There are many, many variations on both types of deal -- for example, the arrangement might be for a complete catalog, just a few songs, or perhaps even for songs that will be written in the future -- and the deals may include varying percentages and advances. Most importantly, some publishers actively "work" songs in various media, while other publishers just sit back and wait for deals or performance royalties to roll in. As a bottom line for admin or regular publishing deals, the music publisher should guard against infringements, collect royalties, and see that the songwriter gets paid. Although this wikipedia article states that "Only the most popular song writers can even consider asking for an admin deal," we don't agree at all. Many obscure songwriters -- the Dear Rich Staff included -- have acquired admin deals with established music publishers. For more tips for songwriters, check out our article on the subject.
PS Dept. Speaking of music publishing revenue ... Elton John's song, Candle in the Wind, is believed to be the most "played" song of all time.

Tuesday, February 21, 2012

Can You Copyright a Patent?

Dear Rich: I improved an expired invention. When I prepared my provisional patent application I downloaded drawings from the old patent and made a lot of modifications to show how I had improved the original. I'm submitting these drawings as part of my provisional patent application and I'm also citing that patent as prior art and wanted to attach a copy with my application. Here's my question. What if the patent has expired, but the copyright hasn't? Let's sort out a few things first. When you refer to an expired invention, we assume you mean an expired patent, one that's run out of gas because the term is over or the owner failed to pay maintenance fees. In other words, the patent is in the public domain. Second, if it helps to explain your invention, you can include the expired patent with your application (and mention it as prior art). But it's not necessary to provide copies of prior art patents when filing a provisional patent application. As for the drawings, we think you'll be fine but there are a few things to consider.
Copyrighting a patent? It's not uncommon for a patent applicant to use text or drawings from a prior art patent when submitting an application and there have been disputes as to whether a patent’s text or drawings are protected by copyright. The USPTO takes the position that, “Subject to limited exceptions reflected in 37 CFR 1.71(d) and (e) and 1.84(s), the text and drawings of a patent are typically not subject to copyright restrictions.”
What makes the issue somewhat confusing is ... One of the exceptions to the general rule, above, is that patent examiner regulations permit patent applicants to include copyright notices and copyright claims regarding authorship in patent text or drawings. The PTO’s website also states “There are also instances where a portion of the text or drawings of a patent may be under copyright. You should consult an attorney regarding these potential trademark and copyright issues.” And then there's also a 2003 case, Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003) in which the Seventh Circuit, acknowledged the copyrightability of an inventor's patent drawings (although ruling against the inventor as to the issue of infringement). Finally, Copyright Office regulations do not prohibit registration of patent drawings.
What's an inventor to do? As a general rule, the “borrowing” of technical language or drawings is likely to qualify as fair use under copyright law. However, exercise caution if the patent from which you are copying clearly indicates it is protected by copyright—for example the patent includes a statement of copyright ownership or a copyright symbol.
BTW Dept. Last month, the USPTO's General Counsel issued a paper on fair use and non patent literature (NPLs) that must often be furnished as part of the regular patent application. The USPTO concluded, “we believe that it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS.”

Friday, February 17, 2012

Can we use lyrics within artwork?

Dear Rich: Can I use lyrics in a series of art posters I'm creating? The posters are a collage featuring images of musicians and events from the year that the song was a hit. So, for example, I have images that match a few lines from Marvin Gaye's song, What's Going On, along with a few lines from the lyrics. We're not sure why you bothered asking the Dear Rich Staff. After all, the folks over at Yahoo Answers seem to have already addressed this issue. Oh wait, we see why ... because the Best Yahoo Answer kind of sucks. We're guessing it's the 'Best Answer' because it's the answer that best suits the needs of the person asking the question. Oh well, it will all be over soon!
Right, you had a question. A few months ago we answered a question about using lyrics in a book, and for the most part, the same rules apply when using lyrics in connection with artwork. Limited use of lyrics -- perhaps four or five lines -- may be excused as a fair use. But more extensive quoting of the lyrics requires permission. Of course, if you're just doing a one-of-a-kind artwork, it's unlikely to be an issue (unless you write to the lyricist to share your excitement). But if you're mass producing posters with lyrics and distributing them via the web, you're more likely to trigger a cease and desist letter.