Tuesday, October 21, 2014

Can I Sell Clothing Made From Copyrighted Fabric?

silk fabric weaving circa 1914
Dear Rich: This question pertains to copyright images on fabric bought from the store. There have been a lot of questions regarding this because of crafter's listings being taken down from Etsy. I believe the ones being taken down are violating copyright by using imported items or their own reproductions. My question is can we purchase licensed fabric or ribbon from a store, make it into a dress or handbag and then sell those items legally? There is a "For personal use only" statement on the salvage of the fabric. My understanding is that First Sale Doctrine would cover the resale of the fabric along with a proper listing and disclaimer? You're correct. Thanks to the first sale doctrine, if you bought copyrighted fabric, you're free to make it into a product and resell that product. You're also free to photograph that product and reproduce that photo as part of an ad when selling the item. A disclaimer won't hurt but it's not required.
What about the statement on the fabric? The statement -- for personal use only -- is wishful thinking on the manufacturer's part. Unless you affirmatively agreed (signed something, clicked "I Agree" or made some other indication of assent) at the time you purchased the fabric, such a statement would not be binding on you.
What you can't do ... If the fabric is an infringement, that is, an imitation made without permission of the manufacturer, you'll run into problems. In that case, the copyright owner can stop your uses whether you knew or should have known it was infringing. You may also run into problems if you create fabric from found imagery that is still protected under copyright. In that case you're infringing the image owner's right to create derivatives.

Monday, October 20, 2014

Can I Embed YouTube Video at For-Profit Site?

Judge Posner
Seventh Circuit
Dear Rich: Is it safe to embed YouTube videos in courses that are developed for-profit? The YouTube terms and service page indicates that the embed code they offer is designed to make sharing/embedding possible regardless of use. We noticed that your email was from Canada so we must caveat our answer by stating that our answer is based on U.S. copyright law. Though similar, the two nations differ in terms of legal precedent, fair use, and educational uses, among other things. The short answer is that embedding is probably not copyright infringement but may be a violation of YouTube's terms of service.
What about copyright law? Based on a 2012 decision by Judge Richard Posner of the Seventh Circuit Court of Appeals, it is not copyright infringement to use the embed code furnished by a video web service such as YouTube. Or put in plain English, embedding a video doesn't violate federal law. The logic is that the end user is not producing or distributing the video, and the copyright owner, by providing the embed code, is encouraging viewers to stream the video via their sites. As for the copyright owner's right to control the performance of videos, Judge Posner held that the argument was promising but currently the law was too ambiguous (considering that the data stream originated from another site) to determine whether embedding was a violation of the performance right.
What about YouTube's end user license? The YouTube Terms of Service do provide limitations on what can be done (and can't be done) with its embedding service. If you've agreed to the these terms of services, then there are certain prohibited uses. For example, you can't embed and then sell access to the embedded video. You can't provide advertising, sponsorships, or promotions on top of or within the embedded video. And --  and here's where it gets pretty confusing -- You can't sell, advertise, sponsor or promote any products or services on any page of an ad-enabled blog or website containing the YouTube embed code unless "other material not obtained from YouTube appears on the same page and is of sufficient value to be the basis for such sales." We take that to mean it's okay to sell something on the same page as the embedded video although it seems like an ambiguous, confusing standard and one that allows YouTube, not the user, to determine if a violation has occurred.

Wednesday, October 15, 2014

What the Supreme Court Didn't Say About eBooks

Dear Rich: I recently received a takedown notice for posting free eBooks. Why do publishers still hassle people now that the Supreme Court has said it's okay to digitize and scan books? Perhaps it occurred in a parallel universe ... but we don't find any caselaw from the Supreme Court that states it's okay to scan and distribute eBooks. Are you referring to this case in which a Court of Appeals held that it was fair use to digitize books for purposes of creating a database? That database was used for keyword searching; users could not read the books.
Bottom Line Dept. It would be difficult to justify the unauthorized scanning and distribution of whole eBooks as a fair use (unless for certain disabled uses) and we suggest that you obey the requests made by publishers lest you risk an assessment of damages based on willful infringement.

Tuesday, October 14, 2014

Game App Trademark Specimen


Dear Rich: We're going to launch a game app soon and wanted to trademark the name. It's a download only and we're trying to do the registration by ourselves but we're confused about the sample they want. We're not advertising it so do we don't have ads to send. Should we just send them the whole game? Trademark examiners at the USPTO might enjoy playing your game but they won't accept it as a trademark specimen (the official name for the sample). We'd suggest that you provide a screen shot of the title or launch screen -- that's the graphic typically displayed at the beginning of a game (often with the word "Loading" appearing on screen). According to the USPTO, "title or launch screens may be acceptable specimens as long as the nature of the specimen is clear either from the overall look and feel of the specimen or from the applicant’s description of the specimen." You can also furnish a specimen showing the title screen as displayed on a device such as a smart phone or within a social media framework -- for example, within the context of Facebook -- if that is the delivery or hosting system. For more on service mark specimens, check out the USPTO's Examination Guide 31-14.

Monday, October 13, 2014

Puzzling Question

Dear Rich: I am writing a book on problem solving that I will publish independently -- around a few hundred copies to give away and maybe a few more to sell. I will be using examples of puzzles and games (taken from the Internet, email forwards, newspapers, books...) The book starts with puzzles for children and evolves into all sorts of puzzles (including counting shapes, tanagrams, matchstick and coin puzzles, crosswords, jig-saw puzzles, find the hidden objects in pictures, and find the differences between pictures). I also explore games like Sudoku, Solitaire, Minesweeper, Rubik's cube, chess, draughts, and IQ type puzzles. How do I know when I need to ask for permission? With only a few hundred copies being circulated, it seems unlikely that the copyright owner of one of the puzzles reproduced in your book would learn of your use. If an owner did learn of your problem-solving book and saw the copied puzzle, they might not have the motivation to pay a lawyer to chase you. Puzzle owners primarily care about those who copy puzzles and "compete" -- for example, someone who gathers a batch of puzzles and sells them or offers them as a free download in order to attract Internet advertising clicks. A puzzle owner cares less about an author who uses one puzzle to make a theoretical point about problem solving (which may likely be a transformative fair use). And of course, not all puzzles can be protected by copyright ... some games like hangman or solitaire lack the originality required for protection. Finally, any facts underlying a game -- for example, the words used in Scrabble or the number combinations used in Soduku -- are not separately protectable.
In summary dept. There may be some risks involved with your unauthorized copying, but the odds are in your favor to proceed without permission. If you're risk-averse and you wish to seek permission -- for example, if a publisher will be issuing your book --  you can find the tips for tracking down copyright owners of the puzzles (and photographs) in our Getting Permission book. Also, avoid using branded puzzle trademarks (Scrabble, Rubik's Cube, Minecraft) on the cover art of your book as you don't want to imply another company's endorsement.

Thursday, October 9, 2014

Can I Use Carpet Pattern from The Shining?

Dear Rich: I am an independent knitwear designer, and I designed a caplet using the brown, orange and red carpet pattern from the Shining. Initially I did it entirely for personal use as part of costume. However now that it is finished, I'd like to make the pattern available for sale to other knitters, who may or may not use the iconic colors, but like the the design and want to make their own. I'm at a loss though on how to navigate this issue legally. From reading your blog I understand that movie costumes are not covered by copyright, but are set details like the carpet, or other furniture patterns or background art covered by either copyright or trademark laws? Would this be a trademark issue? Would the copyright/trademark apply if the design was made in different colors? And now that Stanley Kubrick has passed away how do I determine who to contact for permission, if needed? We'll spare you the lengthy legal explanation regarding derivative rights (yes, some elements within films are separately protectable) and protection of fabric patterns (yes, copyright protects the designs) because it appears as if the owners of the film are not claiming (or enforcing) proprietary rights for the carpet. How else to explain its use on fabric patterns, earrings, as well as sweaters, cardigans, scarves, ski masks, door mats, and area rugs. And of course, the carpet was also reproduced in another movie. (We don't see any indication of proprietary markings on the product pages so we assume these are not licensed uses.) Most likely the owners of the film copyright are not asserting rights and you should be free to use the design as you wish.

Wednesday, October 8, 2014

Will Online Consent Be Effective?

Dear Rich: I work for an organization that runs conferences and publishes academic papers under an "open access" policy. We require that all authors sign and return a consent form permitting us to post online their paper, speech video, and/or slide deck after a conference takes place. If we placed the consent form online and asked them to enter their initials in a text field and click to indicate their approval, would it be legally valid and protect us? Yes it would, as we explain in this video and article.

Tuesday, October 7, 2014

Beachbody is Coming After Me!!

Dear Rich: I am a stay at home mother of three children who was looking to earn a few extra dollars by reselling on eBay. I recently sold some Beachbody DVD sets on eBay that I acquired from a person on Craigslist. This person explained to me in writing by a text that these disk sets were a surplus and able to be purchased at a discount through an arrangement his girlfriend had with Beachbody. He stated that she runs a weight loss program and that the discount was due to the volume of DVD sets purchased. I purchased these DVDs and began selling them on eBay in June 2014. I was alerted from eBay that Beachbody asked to have my auction closed September 25, 2014 due to the sale of counterfeit products. I stopped selling them the day I received notification. I then received a "Cease and Desist in Counterfeit Sales of Beachbody Branded Products" on September 29th. They were able to verify it was counterfeit because an undercover buyer purchased one from me on eBay. I compared my product with a friends genuine product and was not able to tell that these products were anything but genuine. When I looked on eBay I was able to see 100 other people selling similar products. I only earned between $7 and $10 dollars for each product. I explained this information to their attorney and gave them the person's information (who was still active on Craigslist) to help aid in their investigation. I did not sell any products once I was alerted that they might be counterfeit, but an attorney representing Beachbody is asking for me to pay them every dollar that was collected for these products which is about $14,000. Am I liable to pay them for the sale of products that I didn't know were fakes? They verified that one product was fake, but unless they ask all my buyers to ship them back how can I be certain they are all fake? Can they file a civil lawsuit against me? Yes, the owners of the Beachbody products (Beachbody, LLC, or Product Partners of Santa Monica) can proceed against you with a civil suit for copyright and trademark violations. The attorneys can seek payment of all money you received for the sale (and more if they can prove you knew or should have known you were selling counterfeits).
Innocent infringer? An "innocent" infringer can be pursued in a civil action but the penalties are often reduced based on the facts of the case -- that is, if the case were to go trial, a person in your position would fare better than the person who sold you the DVDs (and most likely knew they were counterfeit). In an ideal world, the attorneys for BeachBody might weigh your behavior -- lack of intent, cessation of sales and cooperation in prosecution -- and modify their demands accordingly. But in today's whack-a-mole world of intellectual property infringement, the business model used by your pursuers is to chase the small dealers, set examples for others, and hopefully recoup revenue to justify their pursuit. In many such cases, the judgment exceeds the person's ability to pay or may be pre-empted by bankruptcy.
Your course of action. If you can come up with the consultation fee for an attorney, we would strongly recommend you meet with one. There may be issues regarding your liability (including whether all the goods were counterfeit) and your cooperation that could merit a reduction in the proposed settlement. What you save with an attorney's intervention may justify the fees. (You may be able to get a reduced fee by dealing with a local legal arts organization.) If you can't hire an attorney, you need to make the strongest case possible that you cannot pay the $14,000 and try to negotiate a reduced penalty, perhaps with some sort of payment plan.

Monday, October 6, 2014

Prior Art Question

Dear Rich: I am testament to the quality of Pressman's Book “Patent it Yourself.” I submitted my patent application in 2013 and received my first Office Action Nov 14, 2013.  I submited an Amendment to my Claims, prompting a Second Office Action on June 26, 2014. I spoke with my examiner and submited Amendment B to by Claims, according to the very favorable verbal discussion with examiner. I just recently received a notice that my application was published Sept. 11, 2014. I am now expecting that my claim is to be allowed at some point. Which finally brings me to my question: If I would like to patent my invention for another use but I had mentioned that use in my previous patent application that was just published, is it too late for me to submit another application for a different use of the same invention or can my remarks about that particular use in the earlier application constitute prior art now that I have changed my mind and would like to pursue this "other" use of my invention? We spoke to Patent It Yourself author David Pressman who believes that you should seek out a patent attorney and explain the full facts of your case. Pressman did note the following, however.
Disclosing the improvement. When an improvement is made to an invention, the applicant can cover it by (a) the existing application if the claims are broad enough and the improvement is disclosed in the specification, (b) a CIP (Continuation-in-Part application) if they have to add new matter to the specification to support the new claims, or (c) a continuation application if the improvement is already supported by the specification, or (d) an independent new application if they have to add new matter to the specification to support the claims. In case (d) the independent application’s claims should be patentable over anything that was published previously and any patent that was filed before the filing date of the independent application.

Friday, October 3, 2014

Playing Pandora in the Classroom


Dear Rich: Is it a fair use to stream music and playlists from services like Pandora or Grooveshark as background music in the public K-12 classroom, when not part of a direct-teach unit as would be protected by section 110? Though I’ve seen a number of teachers tying this background use of music to studies showing the beneficial effects on general education and cognition, it seems to me that without a specific curricular objective, section 110 might not apply. When I contacted Grooveshark and Pandora to ask if they granted permission beyond personal use, both said that they did not distinguish between non-profit and business uses and that a non-instructional classroom use would most likely be deemed a public performance requiring licensing. While I realize it’s unlikely the copyright police are going to come storming in and arrest teachers for playing their Grooveshark playlists, I would like to give the teachers who attend my copyright workshop a decent response as to whether or not this is an acceptable practice. (Interestingly enough, Netflix said right away that using a personal Netflix account in the classroom was completely acceptable, though in that case I only asked concerning educational showings of streaming video and not entertainment.) We think you are correct. The difference between Netflix and Pandora is that in the case of Netflix, Section 110(2)(B) exempts the classrom use if "the performance or display is directly related and of material assistance to the teaching content of the transmission," -- that is, you are teaching something about the movie being presented. Unless you are evaluating the eccentricities of Lady Gaga, we doubt you can make a similar argument that would qualify a Pandora playlist under Section 110. It's true that your performance of the playist may induce learning (much like background music induces shoppers to buy) but there doesn't appear to be a exemption for that, and it probably violates your individual Pandora license.

Thursday, October 2, 2014

Copyright of Home Photos

Dear Rich: If I were to attend an open to a public home show that allows photography of the space, do I own the copyright of the photographed spaces? Or are there restrictions on use? You own copyright in your photos but there may be restrictions for the following reasons: (1) if the photo includes copyrighted artwork -- for example a painting or sculpture in one of the rooms -- you may need permission from the copyright holder of the art (unless your image was permitted as a fair use), or (2) if the photo violates a policy or contract to which you had agreed -- for example, as a condition of the open house, photographs were prohibited -- then you could be sued for non-copyright violations, or (3) if the photos invade the privacy of the home's occupants, you could face a civil suit. We wrote about these architectural photo issues previously and you can always get photo copyright information from Carolyn Wright's photoattorney blog.

Wednesday, October 1, 2014

Can a Translation Be Made From a Translation?

Dear Rich: I am working on a book translation project. The book was written in one language and then translated into a second language (English). Now, a company wants to translate the book from English into a third language. Does the primary rights holder have the right to weigh in on this aspect of using their material -- that is, can they yes or no to use of their material based on which language translation is used to get their material into the third language? If yes, what is that right called? Does the subsidiary rights holder to the English translation have a say? What rights would they grant the the third language publisher? What do I call those rights? The rights are called subsidiary translation rights (or some variation). The copyright owner of the book -- probably the author, author's estate, or a publisher -- controls the right to make these derivative versions. (A translation is a derivative work). Often, an author or publisher divvies up translation rights in conjunction with foreign distribution rights. So, for example, the author may grant French translation and distributon rights to a publisher in Paris. That license may have conditions -- for example, the author must approve the choice of French translator, or the translator must work from a specific edition of the work. So, you'll need to contact the primary copyright holder for permission and ask whether there are any restrictions on translation.
What about using the English translation? Each translation is considered a separate derivative copyright, initially owned by the translator. If the translation copyright is assigned to someone other than the book's copyright owner -- for example, a foreign publisher --  you may need two permissions. In any case, the primary copyright holder should have all the answers.
Does this seem confusing? It will become even more confusing when the courts deal with "translation data."


Tuesday, September 30, 2014

Can We Use Illustration for Cover of Book?

Dear Rich: I run a non-profit educational website called Simply Charly that explores history's greatest movers and shakers. And we're planning to publish a series of books using many of the illustrations we own on the covers of the books. I was wondering if we'll run into some copyright issues using our own illustrations. You need to look at the paperwork associated with the acquisition of the images. As a general rule, if you: (1) employed the artist who created the covers, (2) hired the artist and had him or her sign a work made for hire agreement, or (3) paid the artist and received an assignment of copyright, than you can use the illustrations for covers --  that is, you own the copyright and are free to use the works as you please. (By the way, no written agreement is needed if the artwork was created by employees.) That said, assignments and work made for hire agreements may have additional requirements that affect your rights. Theses agreements may transfer copyright but may condition the transfer on the payment of fees or royalties for certain uses --- for example, $1,000 will be paid if the illustration is used as a cover.
If you acquired a license ... If you acquired image rights under a license, then you are "renting" the images and would probably need to return to the artist for additional permission to use the artwork on the cover of a book. The license agreement probably explains the limitations.
P.S. Dept. We like your books and covers ... if only we weren't so busy with Words With Friends.

Monday, September 29, 2014

Student "Help" Site Pilfered My Exam Question

Dear Rich: I'm a college professor in the sciences, and over the years I've written a number of questions to assign to students in my various classes. Some of them I'll re-use in subsequent years. Last night I stumbled across one via Google on a site called chegg.com, a site that exists in part to provide answers to students posting questions. When I contacted them asking them to take down that question, the rep I spoke with conferred with others there and told me that they couldn't, and that the situation was effectively no different than if a student had posted a question directly from a textbook. Despite their poisoning of the learning process, I'm not interested in punishing the site, I just don't want to facilitate any future students taking the easy way out and not learning as much as they could. What options (if any) do I have here? Personally I can just scramble a few facts whenever I re-use a question, but I'm curious about the larger ramifications as this sort of student "help" site proliferates online. I would think that this is a question of copyright violation and that if a major publisher with more legal clout than I were to push, the response would be different. Chegg.com, according to its website, is "all about removing the obstacles that stand in the way of the education YOU want and deserve." We assume one of those obstacles is doing homework and that's why the company -- whose primary business appears to be buying and selling textbooks -- offers homework help (advertised to get you better grades and help you "get ready for the real world"). How true!
What they said. We're confused why the rep -- comparing your situation to a student posting a question from a book -- concluded that there was no reason to remove your question. It's true that many questions don't rise to the level of copyright protection because they're too short or because there are a limited number of ways to express the question (the merger doctrine) -- for example, "What are the primary themes in Jacobean literature?" or "What motivated Dwight Eisenhower to run for president?" But we see no reason why a longer question with sufficient detail -- for example, a bar exam hypothetical -- could not be protected under copyright. This would be true regardless of whether the question was pilfered from you, or written for a textbook.
Your challenge is twofold. You face two hurdles: (1) convincing Chegg that your question can be protected by copyright law (see above); and (2) getting Chegg to remove your question. You may be able to accomplish the latter through a DMCA notice via Chegg's IPR program. After all, according to Chegg's website, "if a professor reviews your notes and reports to Chegg that the notes do, in fact, violate their copyright, Chegg will remove the notes." If Chegg doesn't facilitate the removal, we assume you will find it cheaper to modify your questions than to hire a lawyer and threaten a lawsuit.

Thursday, September 25, 2014

Getty and Watermarks

Dear Rich: I have completed a "rough cut" of my documentary. I have hundreds of photos, some claimed by Getty. If I use a similar photo without Getty's watermark can they still legally claim rights? If Getty owns rights to the photos used in your documentary, then you'll need to pay for a license regardless of whether the watermark is visible. By the way, removing digital watermarks, copyright notices or other copyright rights management may be a separate violation of copyright law.
Although Getty has adopted a "sharing" approach to use of its photos online, it's unlikely that the stock photo company will tolerate unlicensed uses in a documentary. Should the company learn of your use; they may send you one of their infamous settlement demand letters. (The company also offers guidance for recipients.) If you're using photos that are similar to Getty pictures but not owned by Getty, then you'll need permission from whoever owns the copyright to that imagery, as well.
Fair use questions? Perhaps the information we've posted here can help. And please see the informative comment provided below.

Monday, September 22, 2014

Can I Replicate Bar From TV Show?

Dear Rich: My business partner and I are interested in starting a replica bar based on a location from a popular TV show (no, not Cheers). I can't find any evidence that the bar name in question is trademarked, though the name of the original show certainly is. Regardless, I'm guessing the characters and settings are all covered by copyright. Still I wonder if there is any way we can use the name from the show without violating copyright? If we were to model the bar's design/decor after the location from the show, would that violate copyright?  If you are pursued by the TV show's owners, most likely you'd be pursued under trademark claims, not copyright. That's because the injury claimed by the TV show is primarily based on customer confusion. At least, that was the approach taken by DC Comics, owner of Batman, when it sued a chain of Batcave comic book stores that appeared in the 1980s. DC Comics claimed that consumers would associate the stores with its brand. Even though BATCAVE was not a registered trademark, the comic book company prevailed in court based on its common law trademark rights. This same rule may hold true under trade dress principles -- that is, even if you don't use the name of the bar. Bottom line, we can't tell you whether you will get hassled but you might want to get a second opinion from a trademark attorney before investing serious dinero in the project.
What about copyright? Copyright does protect characters and settings provided they are distinctly defined -- that is they must be more than what are known as scénes à faire.
P.S. Dept. Also beware of including any replicas of actors from the TV show in your bar setting.

Friday, September 19, 2014

Can I Use Stage Name to Credit Songwriting?

the diabolical Biz Markie credits
his songwriting to Marcel Hall
Dear Rich: I use an artist name with a last name that is not my legal last name and has no relation to my birth name. I have no interest in legally changing my last name, and all my music copyrights are filed under my legal name. My question is when I credit myself on a CD with "music and lyrics written by...." can I use my artist last name, or should I use my legal last name? I find it visually confusing to have one artist name on the CD and a different last name for "music written by." But am I legally obligated to use my real last name? You're not legally obligated to credit your songwriting with your "real" name, but many artists do it. Sometimes they do it to personally acknowledge the songwriting, sometimes to simplify copyright registration, and sometimes just to make it clear whose name goes on the check. If you're going to credit your songs to your stage name, that pseudonym should be included on the copyright registration and at your performing rights society (ASCAP or BMI).

Friday, September 12, 2014

Copyright in wedding ring design?

My wife and I decided to have custom wedding ring made at a national level chain store jeweler three years ago. This past weekend we stopped at the jeweler and saw a custom ring book where my wife saw her ring in that book and she was not happy. What can I do to have the jeweler stop promoting the ring in their custom book? I read about copyright would this be a good idea? Maybe ... but first you need to consider some possible copyright concerns.
Did you sign anything? Did you or your wife sign any paperwork at the store? We imagine you probably haven't kept your invoice ... but it's possible that you may have unknowingly agreed to permit the use of your customized design in the custom ring book. The small print on your invoice would provide the details.
Is the design sufficiently original? Chances are that your design meets the minimum standards of originality ... but just so you know, you can't claim copyright if the design is not original to you or if the design consists primarily of standard elements -- geometric shapes or forms.
Did the store co-design the ring? If the store employees assisted in the design --  that is, they provided a major contribution -- then the ring may be a work of joint authorship and the co-authors of the ring would have certain rights and obligations.
Assuming you have copyright ... If you're serious about stopping the store from featuring your design, you're probably going to need a certificate of registration and you may also need an attorney's assistance. A certificate of registration is not essential for claiming copyright but it is necessary for filing a lawsuit and most corporations won't take the request seriously unless a certificate of registration is waved in front of them. This Copyright Office tutorial explains more about registration. You can expedite the registration for a hefty fee; otherwise, it will take six to 12 weeks for a registration filed electronically. As for the lawyer's help, we wish it weren't necessary but unless the store is benevolent, they probably won't seriously consider a claim of copyright infringement unless you're represented by an attorney. By the way, some disgruntled copyright owners choose the public relations route rather than the infringement method. That is, they seek to marshall online publicity for their claims thereby shaming the business into doing the right thing.

Thursday, September 11, 2014

#publicdomain?

Dear, Rich: I’m trying to properly attribute public domain images in a course pack I’m writing and I’m confused about public domain tags. If a work has entered the public domain without being directly dedicated to the public domain by the owner, there are nearly 100 tags listed under US copyright to indicate exactly why it is in the public domain (i.e. the copyright expired). Some images I’ve come across ask you to use these tags, while others don’t; meanwhile in Canada, there are only four different tags. My question is, do I need to use these tags to explain why it’s in the public domain when I attribute these images? Also, if I’m writing a course pack in Canada, but planning to offer it to American students, do I follow the tag of where the image was created, where it is being re-published, or where it is being “consumed” by students? There is no legal requirement that you include public domain tags. So why do they exist? Read on!
Label this! Copyright law lacks a labeling system -- some system that clearly and accurately identifies the copyright status (or lack of copyright status) for any work.  For example, the absence of a © symbol does not establish a work as public domain any more than the presence of the © symbol proves that a work is protected.
The problem with public domain works. Unless a court has ruled that work is in the PD, the potential user must make a private determination or rely on the kindness of academics and legal professionals. For example, if a work was published before 1923 in the U.S., it's in the PD. But questions may linger. For example, if it was a painting, was it "published" for copyright purposes. Other categories of public domain works create additional questions. For example, copyright does not protect typefaces, so it is assumed -- trademark law aside -- that logos consisting solely of a typeface are public domain. But that general rule may not apply to all typeface logos, and as a result a dispute may arise as to PD status. These PD disputes are more likely when there's a lot of money at stake. For these reasons, a system of tagging was developed by so that users of works would understand their public domain provenance and make decisions accordingly. (Stephen Fishman's book and treatise can be very helpful when sorting out these issues.)
What about you? You definitely don't need to reproduce these tags. If a work is PD, attribution of any sort is not required. However, for your own purposes, you may want to keep track of the tags in case a dispute should ever arise as to one of the works.
PS. We can't speak to Canadian copyright law but we have a feeling, the same rules apply.

Wednesday, September 10, 2014

British Site Stole My Fan Site Trademark

Dear Rich: I am the owner of a domain name which I registered in 2001. My wife and I used the name and website to create a large online community and forum consisting of fans of a well known classic rock band. The community at its height had over 8000 members, and was well known among online fans of this band. In early-mid 2011, after my wife and I endured separate serious illnesses, we closed the website location but retained the domain name and moved the community forum to Facebook under a group name identical to the website name. I still currently maintain ownership of the domain name, as well as being the senior admin of the Facebook group. Today I learned a large media group that operates out of the UK, and runs a very well known website, had chosen to "re-brand" their website and trademark name for the month of June 2014 using a name identical to the name of my website and community forum. This appears to have been done as a means of increasing capital by associating themselves with that classic rock band. I believe this website broadcasts, advertises, and sells merchandise via amazon.com and backstreetmerch.com to U.S. residents. To my knowledge this name was not in use prior to my registering the domain name with Network Solutions in 2001 and creating the website. Even if you have a strong case (and we're not sure you do), we think you will have a difficult time squeezing any payments out of the British media site.  You face practical and logistical problems.
Jurisdiction. The first hurdle is jurisdiction, the right of an American court to make a ruling that binds the British company. You would have to show that the media company either maintains an American headquarters or has a "continuous and systematic" presence in the state in which the case will be heard. This preliminary skirmish could be enough to exhaust your bankroll. Obviously, the British media company, because of its size, would have an advantage in this and other legal battles.
Trademark claims. Assuming you can bring the British company into an American court, you would have to prove that consumers of your site are likely to be confused by the British re-branding. That is, your fans believed the British site was associated with your site. If fans were misled and confused by the two sites than part of your damages would be the profits from the U.S. sales of merchandise.
The defense rests. Keep in mind that the British media site will vigorously defend itself. They may argue that you have no federal trademark registration for the domain name and can't claim nationwide priority. Although unregistered marks provide rights, they can be harder to enforce than a federally registered mark. The British media company may also argue that you're not entitled to trademark rights because your domain and forum names incorporate the band's name, and therefore your domain name is misleading and possibly unenforceable. In other words, they may claim that fans affiliate with your site because they believe it is endorsed by or associated with the band. The British company may also argue that their damages should be mitigated by the fact that they only used the name for a month.
That said dept. If you're looking to bolster your ability to go after others, the best strategy would be to seek federal registration. Beware, that also has risks -- the band may object to your application.