Wednesday, November 25, 2015

How Does Copyright Office Know Whether I've Published?

Dear Rich: I understand that the unpublished and published works have different fees and filing processes. But when I'm registering a not-yet-published-work, when is it OK to publish them on my website after filing? I heard it could take months for them to review/process the submissions. If I publish the work on my website a few weeks after mailing (or submitting) the copyright registration, how does the copyright office know that the work was indeed unpublished before I sent the application? Do they check the wayback machine or something? How do they verify that the publication date was indeed after the application has been submitted? Or should I simply file as a published work, since I'm planning to publish it soon? 
The Copyright Office doesn't verify whether publication has occurred; they take your word that the information you've provided is accurate. That's because you've promised (Section 8, Certification) that "the work identified in this application and that the statements made by me in this application are correct to the best of my knowledge." You can publish your work during the period that the application is being processed. However, the benefits of registration would not apply to changes made in the published version.
Should you wait? As a general rule, if you know that you will soon be publishing your work, it's better to wait until you've published before registering it. That's because the version that's published is typically the "final" version, that is the one that is unlikely to be modified. Registration within three months of publication guarantees certain rights. As always, we remind you that you have copyright in the work without registration. Don't operate under the mistaken impression that it's a race to the Copyright Office (or that you should mail yourself a copy) to claim priority over other similar works that are registered after that date.

Monday, November 23, 2015

Poet Says No: Can I Say Yes?

Emily D: "I'm Nobody"
Dear Rich: I am a grad student in journalism and for my masters project I am putting together a website of a series of videos that I have done of people talking about the joy they find in their work. I took my inspiration from a poet who had a lovely poem about joy that I wanted to feature on the homepage and explain how that poem, and its last line in particular, inspired the whole project. I wrote to the publisher who told me that I could not use it. Since I meet the criteria for fair use in that I am repurposing it and contextualizing it and not gaining from it financially, can I just go ahead and use it anyway?
You're more likely to qualify for fair use if you reproduce a few lines, rather than the whole poem. Courts frown (with some exceptions) upon taking an entire work ("[it's] sufficient to preclude a finding of fair use," argued Justice Blackmun in his Betamax dissent). Still, if your use is highly transformative, you can overcome this third fair use factor. For example, an entire image,  reduced to a thumbnail for search purposes, qualifies as a fair use.
Good news! The good news is that if you use the work after permission was refused, you can still succeed with a fair use defense. The non-good news is that you've alerted the publisher as to your potential use (so much for flying below the radar). It's a close call and practically, it may really boil down to whether the publisher will actually do anything about your use.

Wednesday, November 18, 2015

Does Copyright Notice Indicate Expired Copyright?

Dear Rich: I want to use material from a webpage that says "Copyright 1996 to 2010." Does that mean it has expired?
No, the copyright hasn't expired. The copyright notice should reflect the date of publication of the current version of the work. Instead of doing that, many copyright owners use a series of dates (Copyright 1996, 2004, 2010) or a range of dates (Copyright 1996 to 2010) to let you know that the website or book has gone through multiple versions. Copyright lasts for the life of the author plus 70 years, or in cases of corporate authorship, 95 years from first publication. Either way, the website you're referring to is protected for decades.

Monday, November 16, 2015

Grouping Songs and Sound Recordings on One Application

Dear Rich: I'm a musician and have a question about filing my sound recording and song copyright applications. The copyright circular says that they can be registered in a single application provided the owners are the same. If I do a copyright assignment to my publishing company, does that mean the owners are now different and I couldn't use a single filing for both?
As you know, there are two copyrights at work in music: a song copyright and a sound recording copyright. The song copyright protects the composition. The sound recording copyright protects the recording of the performance of the song. If you're interested in registering both copyrights using one application you can do so if the copyright claimants (that is, the owners) are the same. That would not be the case if the songs were owned by a publishing company and the sound recordings were owned by another entity (see this previous post).
What about DBAs? In some cases, a songwriter's publishing company is a DBA -- that is, the songwriter is simply doing business under another name. In that case the songwriter is the owner for purposes of claiming copyright. If the songwriter also owned the sound recording copyright, both could be registered on one application.
What to do? If songs and recordings are owned by separate entities, the easiest thing to do is to register the songs and sound recordings on separate applications. If your budget is tight, register the songs first, then the sound recordings.
Does it matter if the sound recordings are published or unpublished? Yes, publication matters. The rules differ when registering groups of published and unpublished works.
By the way dept. If you’re registering a sound recording copyright and song copyright in the same electronic application, you would choose "Sound Recording" from the dropdown "Type of Work" menu. As we mentioned in a previous post, we discuss copyright applications in our online course at
P.S. Dept. Our newest online music law course just dropped!!!

Wednesday, November 11, 2015

Should I List My BMI Name or LLC Name on Copyright Application?

Dear Rich: Basically I was wondering whether I should use the BMI approved name of our publishing company, or the actual legal name of our LLC when filing the copyright for all my sheet music. BMI initially said that I should use the BMI name EVERYWHERE to avoid confusion. But recently I was told that I should use the legal name of the LLC on copyright filings, and not the DBA. 
When completing the application, you should list the songwriters as "Authors" of the song and the copyright owners as the "Claimants." If the publishing company (your BMI name) is a DBA for the LLC, then you can list the LLC (or if you want, "[LLC name] dba [Publishing Company name]"). If the Claimant is different than the Author, you must indicate how the Claimant acquired ownership. In your case if the song was transferred by a copyright assignment or by a contract, you would choose “By written agreement." By the way, we explain how to register song copyrights in our course.

Monday, November 9, 2015

Can My YouTube Video Get Fair Use?

Dear Rich: Can you check out my video and let me know if I can get fair use?
We can't tell whether your video qualifies as a fair use because Viacom has "blocked it on copyright grounds." We also can't tell you the basis for the YouTube takedown --  this article explains the possibilities (and this one explains YouTube's Content ID system). We do hope Viacom considered fair use before issuing the takedown -- here's why. As for fair use, here are the rules used by judges and summaries of some of the cases.

Wednesday, November 4, 2015

Can We Stream Pandora in Our Dorm?

Dear Rich: I work at a boarding high school. Recently the administration discussed whether or not it was acceptable to stream Pandora (whether a paid-for subscription or a free subscription with ads included) in the dormitory lobbies.  I understand that streaming Pandora in the classroom as background music and not as educational material would probably not be acceptable. But what about in a dormitory setting? Would the dorm lobby be considered an extension of the dean's home and therefore the dean could stream her music for the enjoyment of the girls living in the dorm?  We doubt seriously whether any judge would consider a dormitory to be an extension of the dean's home. (Is that like arguing that a prison is an extension of the warden's home?) In any case, as we explained in a recent post, if there is no educational purpose behind streaming music, this type of public performance would not qualify under the Section 110 exemption. It would also violate the Pandora terms of service and would most likely require a Pandora Business License.

Monday, November 2, 2015

Etsy Removed My Miniature Horse Figurines

our version of Superhorse
Dear Rich: I opened a small shop on Etsy that sells miniature horse figurines painted in popular culture themes (TV, anime, comics, etc). In the first 24 hours, I received a DMCA notice from Valve Software and Etsy removed one of my listings. Besides being stunned that they found me so fast, I was confused as to what intellectual property I was violating as Etsy is full of similar shops. Are my horses treading on trademarked names, designs, or all of the above and is there anything I can do to express my art without getting my entire shop closed down (or worse, getting sued)?
Valve Software is a video game maker (Half-Life, Portal, Counter Strike) and we assume that one of your figurines referred to one of their copyright-protected games or characters. Most likely Valve uses software that routinely searches Etsy and similar sites for references to its games. Once it finds them, it issues take-down notices (possibly without considering fair use). You can push back if you feel like the notice is improper -- that is you don't believe your figurine infringes or is excused under fair use principles -- by filing a counter-notice. Etsy simplifies the counter-notice procedure and would be obligated to re-list your item once you file it. After that, Valve Software's only other recourse is to sue you. Considering the vast number of bunk DMCA notices, it is always possible that Valve made an error targeting your store.
What can you do? Unfortunately there's not much you can do to avoid takedown notices. You could remove the text references to copyright and trademarked characters in the product blurbs -- the marketing equivalent of shooting oneself in the foot. It's probably best to deal with these notices on a case-by-case basis.

Wednesday, October 28, 2015

Am I A Part Owner If I Fix a Defective Audio File?

Dear Rich: Some friends made an audio recording of a discussion. They could not get the audio file to work so they they asked me to convert it to an MP3 file so it would actually be playable. So I helped them convert this to a tangible product and they asked me to keep a copy of it for them. They then copyrighted it without my knowledge and sued me for infringement. My question is since I helped make this a tangible working file for them to copyright am I not considered a joint owner especially if I have the written consent between us to convert it for them?
No, converting an audio file from one format to another or fixing defects that make a file unplayable do not amount to copyrightable contributions and you wouldn't acquire any ownership rights to the resulting work. As a result of a 1991 Supreme Court case, copyright law no longer rewards labor (or "sweat of the brow" efforts), only original contributions to works of authorship.
Sued for infringement? We're missing something, here. Why were you sued for infringement? If you only possessed the converted copy and were not distributing it, there are no damages and no unauthorized copying. So there's no basis for someone to sue.

Monday, October 26, 2015

There's No Place Like My Trademark

"home" for geeks
Dear Rich: We have a t-shirt business in which we use a slogan and then add a geographic location -- imagine something like, "I Wish I Were in [City]" or "There's No Place Like [City]." I know our slogan is ornamental and I want to overcome that objection. I have read and talked to other attorney friends that if we can add a logo/artwork to the shirt itself (think "Life is Good" pre-artwork incorporated, and then post artwork incorporated), we would then be able to protect the slogan (in addition to the logo/artwork under copyright law). 

If your goal is to cordon off a few words such as "I Wish I Were in ..." or "There's No Place Like ..." and stop others from using those words in connection with the names of geographic locations, you've got a very difficult challenge ahead of you.
What about Life is Good? The Life is Good trademark strategy (which we wrote about recently) is a combination of scale, legal maneuvering, and aggressiveness. Keep in mind that even though Life is Good merchandise generates $100 million annually and the company has spent a small fortune on trademark registrations and enforcement, other companies have been able to register the mark for other goods and services. And it's not clear -- at least there's no legal precedent -- that the company can stop others from using other "Life is ...." combinations although they've threatened to halt Life is Nutz, Life SucksLife is Gay, and even went after LG Electronics' use of Life's Good (the companies settled). In summary, unless you're well-funded, famous, and willing to take an aggressive hardline view of your rights, you'll have a difficult time protecting segments of your slogan.
What is an ornamental objection? The issue of "ornamentality" typically arises when seeking to register a trademark for t-shirts or other clothing and the claimed mark is the featured element of the clothing. The trademark examiner is essentially saying that buyers are not associating the art or logo with a particular source. For example, the buyer of a There's No Place Like Modesto t-shirt does not associate that shirt with a particular source or company. However, the same is not true for the buyer of a Just Do It t-shirt. If you're facing an ornamentality refusal, the USPTO suggests five ways to overcome it.
Creating a slogan and drawing used in conjunction with the shirts. What if you sought to register the words There's No Place Like ... in conjunction with an image? Is that a method of obtaining protection for a phrase that might be otherwise unregistrable? No, not likely. Even if you register the phrase with a design (commonly referred to as a “design plus words mark”), "the strength and value of that protection may be limited." As for the copyrightability of a "design plus words mark," that depends on the degree of originality, creativity and in some cases, ornateness of the artwork (something that even the Life is Gooders had to grapple with). Of course, copyright won't be an issue if all that is copied is the slogan and not the artwork.

Friday, October 23, 2015

More Questions About Licensed Fabric

Dear Rich: I have two questions related to your post, "Can I Sell Clothing Made From Copyrighted Fabric?" (1) You indicate that crafters may freely use licensed fabric to make new creations under the first sale doctrine. But, it was my understanding that the first sale doctrine only applied to unaltered or substantially unaltered items. So, if I buy a Mickey Mouse fabric, decide to make a children's dress out of it, how does the first sale cover such an alteration? (2) Your post states that selvage statements such as "for personal use only" are not binding on the end users due to lack of assent. Wouldn't purchasing the item even in light of the selvage statement be an indication of assent? Similarly, there are thousands of digital artists on Etsy who have licensing terms for their creations but there is no requirement of assent necessary before purchase - are those statement also not binding? 
(1) How does the first sale affect alterations of copyrighted fabric designs? When you make clothing from a fabric design, you're not modifying the copyrighted design, you're modifying the shape and cut of the fabric. (It's true that cutting the fabric at certain angles may change how the design is perceived but that's not the same as modifying the design and reselling it.) Therefore, selling your clothing items is permitted under copyright law. When you use fabric containing trademarks (a different area of law than copyrights), courts will permit the resale of clothing provided that there is a prominent disclaimer that the finished goods are not associated with or endorsed by the trademark owner (see also this case). Alas, we're citing case law and precedents, legal niceties that some trademark owners may ignore when aggressively asserting rights at Etsy, etc. Therefore, unless you can afford to defend your rights in a courtroom, proceed with caution when selling clothing made from fabric that features trademarked characters or logos.
(2) Have you assented to a license if you see the "for personal use only" label before you purchase? No. A license requires mutual assent and without an affirmative indication of assent, no license is formed. For digital licenses, as you mention, "click to agree" assent is required. Otherwise, the "license" has no binding effect.

Monday, October 12, 2015

Michelin Domain Challenge

Dear Rich: Two years ago, my mother received a medical diagnosis and was expected to live about nine months to a year. In order to pass the time, and take her mind off of things, she decided she wanted to eat at all the Michelin star restaurants in London and write a blog critiquing their vegetarian offerings. (My stepfather is vegetarian and she felt this would be a fun bucket list item, that would also help people). In order to help her with her project, I bought the domain “” I was shocked when I received a communication from Michelin’s legal representative saying that I was running the site in bad faith (he’s basing this on the fact I didn’t respond to the email he sent – I didn’t see it because it went to junk mail) and has started proceedings to seize the domain. He also threatened I would have to pay attorney’s fees - all for a site that was put up for fun- with no commercial interest- that used very little other than the name. The site didn’t look anything like Michelin’s, no logo’s were used, we did not imply that we had any kind of sponsorship and my mother chose the Michelin name because that’s how she decided which restaurants. In other words there was little other way to identify them. We believe this was fair use. However, even though we believe we are right with the fair use part -- and I have taken down the site as a precautionary measure -- we are still getting communications from Michelin’s attorney who continues to ignore our repeated requests that he explain why this is not fair use.
The Michelin attorneys have brought an action to cancel your registration of the domain using arbitration procedures established by ICANN, the organization that oversees domain name control. Under these procedures, Michelin can only cancel the domain if it demonstrates to an arbitrator that you acted in bad faith. The company has filed a complaint dated October 2, 2015 and you have 20 days to file a response. The rules for responding are explained here.
Did you act in bad faith? Under the arbitration rules, four ways to demonstrate bad faith include:
(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
We assume Michelin is basing its claim on the fourth item. Under arbitration rules, an acceptable defense is if "you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Under these standards, it does not appear as if you were acting in bad faith because your mother's blog has no commercial purpose (typically, the strongest factor); there is little chance of diversion as Michelin customers are sophisticated enough to realize that the blog is not connected with Michelin (as is obvious from reading the blog's mission); and you are making a nominative fair use of the Michelin mark.
What to do? Although we don't believe you are acting in bad faith, our opinion may not matter much as such arbitration rulings are difficult to predict, often biased in favor of the complaining party, and will likely require an attorney's assistance. At the same time, the lack of a response is sometimes even used to infer bad faith as was done in Michelin's complaint ("Respondent never answered the Complainant's letter is further evidence of bad faith ..."). For that reason, if you feel strongly about asserting your rights, you should fashion and file a suitable response to be filed with the arbitrator.
On the other hand, you may be able to say goodbye to the whole thing by contacting Michelin and simply agreeing to retire the domain. As you are aware, your mother's blog can exist without the domain name. To lower your chances of being hassled over the blog, a prominent disclaimer may help -- something to the effect that the blog is not endorsed by or associated with Michelin or the Michelin Star.

Wednesday, September 23, 2015

Wants to Register Book With Antique Glass Negatives

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

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

Thursday, September 17, 2015

How Often Do We Register SaaS Software Copyright?

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

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

Tuesday, September 8, 2015

How Do I Copyright Children's Book?

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

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

Thursday, September 3, 2015

Any Way Around Lyric Licensing?

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

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

Monday, August 31, 2015

Wants to Create a Book Using Onstage Banter

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

Monday, August 24, 2015

Wants to Copy Website's Terms of Service

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

Monday, August 17, 2015

What is the Time Limit for Filing Sampling Infringement Lawsuit?

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

Wednesday, August 12, 2015

Wants to Oppose Mark for Genericness

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