Tuesday, August 19, 2014

Life After Reversion: Who Gives Permission?

Dear Rich: I want to reuse a table or image from the second edition of a book. Copyright for the fourth edition of that same book has been transferred back to the author by the publisher. Would I go to the publisher or the author for the permission? Are there cases where a publisher retains rights on some editions and not others? We think the author is probably the one to give permission (assuming the author still retains copyright). However, there are a couple of caveats.
Authors and copyright. Sometimes authors retain (or obtain) copyright ownership of a work but exclusively grant all rights to their publisher. In that case, the book may state "© Author" but permission would be granted by the publisher. (That's the way publising contracts often established rights pre-2000.) So, it's possible that either the publisher transferred copyright back to the author but retained exclusive rights over the text, or the author granted exclusive rights to a new publisher and retained copyright. Check to see who the publisher is for the fourth edition. If the work is not self-published, you may need to ask the publisher.
Authors and reversion. More likely, copyright returned to the author under a principle known as reversion. The author's contract  may state that if the book is out of print, or sales are below a certain amount, rights revert to the author. In that case, the ex-publisher gives up all rights to previous editions (except perhaps the right to sell out remaining copies). Assuming the author created the table and image (and claims them under copyright ), then the author would have authority to grant permission. If you're using a permission agreement (and especially if you're paying for permission) ask the author to warranty ownership of rights. A warranty is a contract promise you can include in your permission agreement --- something to the effect of "the Author has the authority to grant the rights granted in this agreement."

Monday, August 18, 2014

Celebrity Height Index

Dear Rich: I've created a list in ascending height of interesting athletes, celebrities, and historical figures. Here are some examples of figures on the list: George Washington, Peyton Manning, Marilyn Monroe, Albert Einstein, etc. I've also included some well known literary characters such as Dobby from Harry Potter and Oompa Loompa from Willy Wonka and the Chocolate Factory. All told, my list consists of 42 different figures ranging in height from 3' to 6 1/2' I'm printing the list on a wall decal and plan to sell it in toy stores for children to measure their height against. Do I need permission from each height entrant before I can include them on the list? Can I copyright the list so others can't recreate it? You don't need permission from celebrities to list their names and heights. Permission is not needed for "informational" uses -- for example, posting sports figures and their stats at a website. You would need permission for photos that are not in the public domain.
Can you stop others from copying your list? If it's just a list of names and heights, you probably can't stop others from copying. Facts such as height measurements are not protected under copyright ad compilations of facts may be protected if the choice and collection demonstrates substantial creativity. We can't say for sure whether your chart qualifies, but the Supreme Court has ruled that alphabetic listings don't merit protection so we doubt whether numeric charts qualify. Still, compilation protection is complicated and we could be wrong so you may as well include a copyright notice and pursue registration. Of course, you can always protect original graphic imagery included with your chart.

Thursday, August 14, 2014

Politicians and Right of Publicity

Dear Rich: I have an idea for a product both practical and humorous (to some, at least). It does however use the likenesses of political figures. Do politicians have any claim to likeness rights? If so, what are they? The right of publicity -- the right to prevent others from using your name, image or personna for commercial purposes -- extends to all people (and yes, politicians are people). However, we don't think you will get hassled for two reasons. First, politicians have historically been hesitant to hassle merchandisers because of the possible political fallout. Second, politicians usually don't want to get entangled in the first-amendment arguments that arise when a merchandiser fights back. (For example, the maker of a Governor Arnold Schwarzenegger bobblehead argued that his product was a three-dimensional political cartoon.)
P.S. Even presidents sometimes wade into the merchandising free-for-all (yes, presidents have a right of publicity as well).

Wednesday, August 13, 2014

Wants to Use Movie Images on Tarot Cards

The Lovers as inspired by
The One I Love

Dear Rich: I am creating a Tarot card deck that is made from original paintings of famous people, or movie scenes all based on photos. I'm not sure how much is infringement or fair use, or do I need permission for each card, or can it fall as "Parody"? I intend to self publish this deck but would like to know the "risk " involved. We've taken a look at some of your samples and we think the risk meter is low for your Tarot deck. As you're probably aware, the underlying concepts of the various cards (or visualizations) are not proprietary and the most famous set of visualizations is in the public domain
Your imagery. Thanks for letting us see your deck. Most of the underlying (original) photos are copyright-protected and you would need permission unless you could claim fair use. You have a reasonable fair use defense based on your distinct style and transformative use (although the cards would probably not qualify as parody). More important than a fair use defense, we doubt whether the copyright owners (should they see your cards) would go after you because of the probability of a Pyrrhic victory in court. Our conclusion might be different if all of the cards were from one movie or TV show, or if the cards were licensed by a large manufacturer with a substantial ad budget. But you should be secure with a self-published set.
P.S. Dept. You inspired us to create a Tarot card dedicated to a movie we saw recently.

Tuesday, August 12, 2014

Should We Use "All Rights Reserved"?

Dear, Rich: I work for a company that is writing course content that will be sold to schools. We are in the process of seeking permission for all copyrighted items, and are providing attribution under the images from the public domain. In addition to providing the author’s name and license information (where applicable), is it safe to write “All rights reserved” for all images even if they are from the public domain? We don’t want students to think they can use the images for other purposes just because we have permission to use them in a specific way, but we don’t want to restrict rights on images that don’t require restriction. Is it ever problematic to write “All rights reserved”? Publishers and content providers have adopted the phrase "All rights reserved" as a conventional but toothless type of copyright notice. In other words, it can't hurt but it has no legal effect. (The use of “All rights reserved” was once required as a condition of copyright protection in certain South American countries but that's no longer the case.) We can understand your desire to limit duplication for licensed works (the ones for which you sought permission) but unless the person licensing the work requires a credit, warning, or other statement, you don't really need to provide the notices. As for placing the warning on public domain images, that seems like overkill and implies that you have rights in the public domain works when you really don't.

Monday, August 11, 2014

Wants to Use Wally the Green Monster™ on Onesie®

"I am not a monster."
Dear Rich: My friend at work commissioned me to make a onesie with "Wally the Green Monster" the Red Sox mascot. Is this a copyright infringement? Surprisingly, you're more likely to get hassled over your use of "onesie" than Wally. That's because the term ONESIE ("an infant's one-piece close-fitting lightweight garment, usually having sleeves but leaving the legs uncovered and fastening with snaps"), is a registered trademark of the Gerber company (which has gone after some Etsy-ites as well as the owners of "OneZ"). Considering the widespread non-Gerber use of the term, it's possible that Gerber's ONESIE is headed towards genericide (much like Raisin Bran and Escalator) but we won't know the likelihood of that until someone with deep pockets is willing to take on Gerber's legal department. Till then, crafters and Etsy-ites should be aware that Gerber's lawyers are on the prowl. If you want to stay low on Gerber's radar, you might want to do what retailers such as The Gap do ... they use the term "bodysuit" with their products but apparently buy keywords for "onesie" in order to direct consumers to their websites.
Right, you had a question about Wally. Team mascots are trademarks (or trade dress) of sports teams. They may be federally registered (as is Wally the Green Monster) but registration is not required to claim trademark rights. In any case, we don't imagine you'll be hearing from Red Sox lawyers over your onesie, as professional teams tend to aim their guns at offensive uses or high-profile merchandisers.

Friday, August 8, 2014

State Employee Wants to Publish Self-Authored Guide

Dear Rich: I work for a state agency, and as part of my job duties several years ago, I wrote a guide. The guide was not copyrighted, is in the public domain, is available only as a pdf, and has never been printed. I am the sole author, and am noted as such on the title page. My question: I am retiring soon, and may want to update and expand the guide. Is it legal for me to have the guide printed as is and to sell the print copies? If I revise and expand the guide, would it be legal for me to copyright and sell it? We're not sure why you have concluded the work is in the public domain but if it is, you're free to do what you wish.
Who owns what? It sounds as if your employer owns copyright under work made for hire principles -- that is, it's a work created in the course of employment. Unlike works by federal employees, works by state employees are not in the public domain although some states such as California and Florida do place state-produced works in the PD.
Is it public domain? When you say the guide is "not copyrighted," do you mean it was not registered with the Copyright Office. Filing a registration is recommended but it's not essential for protection.

Wednesday, August 6, 2014

Fraudulent Kickstarter Company? Do They Own My Video?

Dear Rich: I was contacted by a start-up company to make them a video for a Kickstarter campaign they were putting together. The contract mentioned nothing about ownership of licensing of the video; only that I was being given 1% equity of the company in exchange for unspecified trade. A friend of mine agreed to act in the video, under the condition that she would have the right to approve of disapprove the final edit. So we shot the video, and under increasing pressure from the company, I gave them a copy before any release form was signed by the model. They published it to Kickstarter. Then, I learned via someone in the company that the CEO was using an alias and upon searching his real name, it soon came to light that the CEO has a lengthy criminal record. So my question is if a contract is signed with an alias by the acting representative of the company, with the obvious intention of hiding a criminal background, does that constitute fraud and would I have sufficient cause to sue the company for monetary damages amounting to the value of the work I produced. Would a video produced "for hire" based on a fraudulent contract still be considered the property of the party that perpetrated the fraud? As there was never any signed image release/model release, what rights does the model have in requesting an injunction or suing for monetary damages? Having a criminal record doesn't preclude an individual from contracting (or becoming a successful businessman). But concealing a criminal past for the purpose of inducing someone to contract might be fraud. That depends on whether you can prove that you relied on the CEO's deception and suffered harm as a result -- an analysis that will focus on the context of the deceit and the nature of the criminal record.
The remedies. If it was fraud and the CEO duped you into signing a contract (sometimes referred to as “fraud in the inducement”) you can either rescind (void) the contract (which would put you back where you were before the agreement), or you can ask a court to enforce the contract (or “affirm” it) and seek contract damages. In some cases, a claim of fraud can be brought as a tort (not a contract claim), and it is possible for the injured party to seek special damages to punish the bad behavior (known as exemplary or punitive damages”), as well as damages for pain, suffering, and other emotional distress caused by the fraud. In your case, it seems as if rescinding the contract would be the easiest course to take. You give back your 1% interest and the company gives up any claim to the video or you.
The model's rights. We're not sure where things stand with the model. If her image is being used to sell goods and services without her consent, she may have a claim against the company for right of publicity violation. She also may have a contract claim against you since it appears as she entered into the agreement with you, not the Kickstarter company.
Practical realities. Knowing your legal rights is different from enforcing them. If the company disagrees with this analysis, you're facing a wallet-depleting experience chasing an individual or an entity that may be practiced in the art of deception. We'd advise showing all of the evidence to an attorney and getting a legal opinion before starting your pursuit.

Tuesday, August 5, 2014

Selling Refurnished Products

Dear Rich: Do I need authorization from the manufactures (such as Apple, Samsung, Sony etc.) to buy and sell their used/refurbished products on-line and in-store in the USA? You can re-sell other manufacturer's products as long as you don't mislead consumers into believing that you are an authorized dealer or agent of the manufacturer. You also shouldn't mess with the manufacturer's logo, lift advertising copy or images from the manufacturer's site,  or replace the manufacturer's authorized parts with third-party parts. (As happened with Rolex watches.) Your right to resell is based on the first-sale doctrine (or trademark exhaustion).

Monday, August 4, 2014

Can I Publish Photos of Kissing Couples?

Dear Rich: I'm a writer and photographer with a question about using candid street photos in a for-profit book. Let's say I'm writing a book about romance. During my travels, I take some candid shots of singles and couples. These people are flirting or holding hands in public. Or commuting on the subway or at cafes and pubs. (Always in public.) Can these photos be used inside an electronic or print book without compensation or a model release/waiver? I presume the law would be different if a photo was used on the cover of the book as that would require a model release. Is the law different if I'm publishing a "travelogue" instead of a book of stories? I'm interested in both U.S., European, and Japanese law as this project may take me overseas. If a flirting person is in public, the general rule in most countries is that you are free to take and publish an image. (Here are  the international consent requirements.) However, you would likely need permission if using the photo for commercial purposes -- that is, to sell something. (So, yes, you are correct that using an image on the cover might require permission -- although some kissing covers end up rewarding the subjects in other ways.) To avoid legal problems, the text that accompanies the photos should not defame your subjects (for example, implying one of the parties is a prostitute) or invade their privacy. (These laws may differ from country to country and state to state.) Other than these concerns, you should be fine using the images within a book whether fiction or travelogue ... unless of course, you trigger some kind of nonlegal reaction -- for example, revealing adultery like Google View or red light cameras.

Friday, August 1, 2014

How Do We Make Risk Analysis for Trademark?

Dear Rich: We are a new juice company in California and we've been considering various names. One name we've considered is a three-letter word. We searched the USPTO records and found a few similar uses in related classes but we were most concerned by the fact that Starbucks had a registration for the exact same name preceded by the word Starbucks. We didn't believe anyone would confuse our products with that of the Starbucks drinks and their use of the word "Starbucks" would also prevent confusion but we were concerned because they were a big company. How do you analyze the risk when choosing a trademark like this? You were correct in your concerns. Starbucks, like many branded services, is aggressive in protecting its marks (although it is also reasonable in its pursuits). The size and aggressiveness of the trademark owner is one of many factors in a risk analysis. Other important factors are the similarity of the marks and the similarity of the goods and services. As for the latter, Starbucks has three registrations for the mark in question and one of them is in your class (032) for "non-alcoholic drinks; soft drinks; energy drinks; fruit drinks and fruit juices; fruit drinks and soft drinks containing fruit juices ..." Although the house mark "Starbucks" precedes the term, the primary element of the mark is identical. We don't know whether you would prevail at the USPTO or in a court battle, but we assume that's not the risk you are concerned about ... it's about being dragged into a dispute with a major corporation at a time when you're launching your brand. Considering that, we think you made the right decision.

Wednesday, July 30, 2014

Registering Copyright For Deceased Photographer

Dear Rich: My father, who died in 2008, was a talented amateur photographer in the 1950s and 1960s, and I’ve started to post some of his medium-format images online (none were ever published). I’d like to batch-register his images with the copyright office. I’ve registered many of my own images, but I’m not sure how to register images for someone who has died (I do have a copy of his death certificate, if that helps). Can you suggest the procedure? It sounds like you're already familiar with batch registrations of photos but if you need more information, read this circular. You'll have to do two registrations: one for published works, the other for unpublished works. When registering works for a deceased photographer, you would need to provide the photographer's year of birth and death. If you are the owner of copyright, you would list yourself as copyright claimant. Otherwise, list whoever it is who now owns copyright. You must also list how the claimant acquired copyright. On the electronic application there is a  drop down menu and one of the choices is "By inheritance." If that's accurate, choose that. Otherwise indicate how copyright was transferred. (Below are some screenshots of the online application).
FYI Dept. Your question reminded us of another photographer who is no longer with us. 

Tuesday, July 29, 2014

Relationship Between Fair Use and Infringement

Dear Rich: I was troubled by the blanket assertion in a recent post in which you stated that if you copied a copyrighted work without authorization, you're infringing. I believe that if your use is a fair use, you are not infringing. Or are you trying to suggest that a fair use is a form of authorization? We wrote, "If you copied a copyrighted work without authorization, you're infringing. Whether that's unlawful depends on whether you can mount a successful defense." In other words, we think fair use means "permissible infringement," and we think your position is that it means "no infringement." From the defendant's POV, we're both right because in either case, the defendant is off the hook. (The distinction might matter in a dispute over indemnity or insurance coverage.)
Where we're coming from ... Fair use is an affirmative defense and affirmative defenses allow a defendant to avoid liability even if the defendant committed the alleged acts. That's why a court usually won't consider fair use until after making a finding of infringement. As the folks at Chilling Effects put it, "Once the plaintiff has proven that his or her copyright was infringed upon, the burden lies with the defendant who invokes the fair use defense to prove that her or his use of the copyrighted work of another should be legally permitted ..."
That said dept. We stand corrected -- see comment below. Thanks Peter!

Friday, July 25, 2014

University Won't Patent My Invention

It looks like I may have made a scientific breakthrough with definite commercial applications. The thing is the university patent office (who would own the work) is reluctant to start paperwork on it as they say a few patents have already been filed using similar "terms" and applications. The thing is, those ideas have been proven NOT to actually work, whereas I now have good solid data proving my concept (not based on anyone else's work) is the one that will produce results. If someone files a patent for a process, but that process is flawed and does not work, does their patent still hold? It's like someone claiming they can build a faster-than-light spaceship, but never actually getting one to work. Then someone else succeeds, and the first party claims their original patent covers all faster-than-light work. We can imagine your frustration at having created something useful and then learning your superiors don't want to patent it. However, the decision seems to be out of your hands. We assume that as a university employee you signed some sort of pre-invention agreement under which you agree to assign all your university-related discoveries to the university. In that case, the university is free to do whatever it wants with your discovery (unless there's a provision in your agreement providing for reversion or buy-back rights).
Your faster than light scenario. In order to obtain a patent, the applicant must have a reason to believe that an invention will "work for its intended purpose." If that's not the case -- the spaceship can't travel faster than the speed of light -- then that can be the basis for attacking the patent's validity. (By the way, the USPTO does not test each patent's functionality.)

Thursday, July 24, 2014

Sold Original Painting: Who Gets Copyright?

Dear Rich: Is it possible to sell an original painting and keep ownership at the same time? For example, if I sell the original to someone and later contract for the work to be used in another area of entertainment, could I maintain ownership of work? Unless an artist has signed a written agreement assigning copyright to the buyer  or establishing a work for hire agreeement, the artist retains copyright ownership of the image. That is the "default" arrangement when an artist sells a work. The artist retains exclusive rights to reproduce, license or make derivatives of the work while the buyer obtains only property rights to the physical painting. To avoid any issues over this, some artists and photographers include a statement in their invoice to the effect that the artist retains all copyright in the imagery.

Wednesday, July 23, 2014

Wants to Use 1970s UK Public Service Films

Dear Rich: I was hoping to use sections of the script/narration from a series of UK Public information films from the 1970’s as one visual element in my original artwork. The lines are either a short sentence or part of a sentence (no more than 12 words in one piece or work), and the artwork will be sold in a very limited print run. We think you can use the material without seeking permission. Even if the copyright owner of this 40-year old source material saw your limited edition prints, it's unlikely they would bring an action as the copying is probably too trivial to cause any damage (de minimis copying). Alternatively, it might be excused as fair use because you're taking so little  (and you're transforming it).
Disclaimer Dept. We're writing about U.S. Copyright law. Britain doesn't have a fair use defense but it does have "fair dealing."
FYI Dept. We're pretty sure that's the remarkable Donald Pleasance narrating the first segment of our video.

Tuesday, July 22, 2014

Collage of 1950s Magazines: Fair Use?

Dear Rich: I want to photograph a collage of magazines from the 1950s and reproduce it in a book about the ‘50s. Does this count as fair use – transformative? Putting aside our usual boilerplate response -- fair use can only be determined by a judge or arbitrator -- we think your use is likely to qualify. Our conclusion is based on a few fair use cases: In Warren Publishing Co. v. Spurlock, a Pennsylvania court ruled that it was fair use to reproduce covers of several out-of-print monster magazines from the 1950s, ’60s, and ’70s. The covers were used in a biography of the cover artist. In Bill Graham Archives v. Dorling Kindersley Ltd., the Second Circuit ruled that it was a fair use to reproduce thumbnail-sized Grateful Dead concert posters within a book. In Kelly v. Arriba-Soft and in Perfect 10, Inc. v. Amazon. com, Inc., the Ninth Circuit ruled that thumbnail-sized reproductions qualified as a fair use. Based on these cases, you are likely to successfully claim fair use if the images are used for a purpose other than selling magazines, if the magazines are out-of-print, and if the reproduced covers have been reduced in size.

Monday, July 21, 2014

Am I Infringing My Client's Newsletter?

Dear Rich: 1) I am an Independent Contractor and web/graphic designer, and my client thinks that I have appropriately shared proprietary information. Do electronic newsletters constitute proprietary information? 2) I forwarded several emails newsletters at the request of a former employee and friend with whom I had collaborated on the newsletter design. Did I unlawfully share a proprietary work? 3) Does my client own full copyright to the electronic newsletter which I designed? 4) Does usage of the newsletter in a portfolio violate any copyright laws? We think the answers are yes, yes, yes and yes. Newsletters whether in print or electronic are protected under copyright law.
If you copied a copyrighted work without authorization, you're infringing. Whether that's unlawful depends on whether you can mount a successful defense. One possible defense is that you are a co-owner because you designed the template used in the newsletter. Proving that will be an uphill battle because common elements of web designs are not protected by copyright --- font choices, look and feel -- and because many of the design choices are limited by practical realities and should be free for everyone. If you can overcome these presumptions (and there are no written work made for hire agreements or assignments), you might be able to claim co-ownership. You might also be able to claim fair use considering that your use was for portfolio purposes and did not cause the owner a loss in revenue. Because co-ownership and fair use are expensive to prove (only a judge or arbitrator can decide), many graphic and web designers deal with these issues in their contracts by including a "portfolio provision" or by retaining non-exclusive rights for certain design elements.

Wednesday, July 16, 2014

How Many Seconds From TV Show?

Dear Rich, I would like to ask you how long/how many seconds we can use from movies and, well any video material. I think the answer is like 5 seconds or something. What I mean is that can we mix in with our own material with some material that is copyrighted? I am building a 'TV intro' to be used on my website that is an upcoming Online Business Incubator. I live in Sweden. It would be so great if there were a "five-second rule" or something similar. Alas, any assurance of safety based on the number of seconds borrowed is a myth. The same is true for the so-called "8-bar" and "8-note" rules. The U.S. Congress refuses to quantify the border between permissible borrowing and infringement and the legislators leave the heavy lifting to the judges. In the U.S., the only course is to review the fair use caselaw to see what's been permitted in the past (and why). By the way, as a very general rule, it's not the amount of time taken but the importance of the section taken and the context in how it is used. Also, our usual disclaimers here: our staff doesn't know Swedish copyright law although a cursory look seems to indicate there is no fair use equivalent.

Tuesday, July 15, 2014

Can State Department Employee Modify Meme?

Dear Rich: I work at the U.S. State Department and I was wondering if you had any references on government agencies’ fair use? For example, if we were to take a Game of Thrones meme (w/a quote) and replace the character’s face with a Russian official, titling it “Russia’s Foreign Policy?” we are not parodying Game of Thrones per se, but we are criticizing the Russian government’s actions by modifying a well-known meme. There is ostensibly no “market” for this product. It is criticism of a policy. Does this qualify as Fair Use? In a straight rule-following world, meme-makers would most likely need permission from the owner of the underlying photograph (In the case of GOT, we're not sure which of the five production companies claims copyright ownership). However there probably wouldn't be any copyright associated with the accompanying text. It's too short to garner protection. In any case, as we intimated in a previous entry on memes, if you're concerned about the legal issues, you're probably too old to be making memes.
What about fair use? Copyright owners seem to have reached a truce with meme-ists, realizing that hassling meme owners isn't worth the potential backlash. However, the owners of Game of Thrones could always make an exception if they feel that the government is using its copyrighted characters in furtherance of an unpopular policy. (Remember when George Lucas almost sued Reagan over the use of the Star Wars trademark?)
Can they sue the feds? Yes, the U.S. government can be sued for copyright infringement. It's possible that the government could defend itself using a fair use defense as it did here, but as we remind our readers, only a judge or arbitrator can make a final determination about what is fair use.