Monday, September 19, 2016

Someone Else is Registering My Trademark: What Do I Do?

Dear Rich: I attempted to register a trademark in 2005, which became abandoned by the USPTO in 2007 as I did not have the proper resources to complete the process. The trademark is associated with an event I have been producing since 2002, and as such, I believe I have common law rights to this trademark. I own the .com and the .org domains for this trademark, as well as the gmail account. Further, I have newspaper articles, t-shirts, and flyers which establish a solid first use prior to 2005. In addition, I have had an active .com domain site with the trademark since the early 2000's. I recently checked the USPTO because I now have the resources to resume the process of registering this trademark, only to find out that another organization is in the process of registering the same mark, in the same class, but for a different purpose. They offer a yearly conference, and their first use date is listed as 2013. My event is a charitable arts event intended to aid non-profits. The trademark has not yet been published, after which time I understand there is a window within which I could oppose their registration of the mark. (1) Do you recommend that I reach out to the organization and attempt to negotiate with them for their registration of a different mark? (2) Or do you recommend that I wait until the publication period (which I believe is next month), and oppose the mark via the USPTO? (3) Are there any strong exemplar materials you can direct me to to help me mount the best case for opposition? What about a template for a letter asking them to work with me on the registration of a different mark? (4) If I am successful with the opposition, or their cessation of the registration process for this mark, is there any strategy you would recommend to get a successful trademark registration on record with the USPTO despite the abandoned mark from 2007? i.e. Is there any chance that I could resume the registration of the original abandoned trademark under a different class? (I originally registered the mark in class 41, do you think class 35 would be viable since effectively the charitable event is meant to ultimately help non-profits thrive?) (5) If I hire an attorney for the opposition, what is the maximum amount of compensation you believe would be reasonable for taking on this particular matter? (6) Should someone else successfully register the trademark that I believe that I have common law rights to can they legally then ask me to stop using the mark? 
Even with our new Nespresso maker, we're not sure we're caffeinated enough to get through all of your questions. Let's start with some of the basics.
Your previous application. Your 2005 application was abandoned in 2007 based on a failure to file a proper trademark specimen. You cannot revive that application but you can file a new application and claim your original 2002 priority date. However the application you filed was for entertainment services, "namely, live performances by a musical band" which is typically used when claiming trademark rights for a specific band, not for an annual charitable arts event with multiple performers. So if you do re-file your application, you would want to tweak your explanation of services to make it clear you provide event services.
The other application. The other trademark owners filed their application in 2016 claiming the following services: "Organizing live exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes." From an examining attorney's point of view, their services -- as broad as they are -- may overlap with your event services. Their application has been approved for publication which should occur on October 4, 2016. If you file in a different class (Class 35 doesn't seem appropriate for your services), an examining attorney could: (a) possibly find the other application for the same mark, recognize the overlapping services and object to your registration; and/or (b) determine your choice of class is inappropriate and recommend refiling in Class 41 (which could prove expensive).
Opposing the other application. If you want to oppose the other application, you have thirty days to file a Notice of Opposition (fee: $300) on the basis that there is a likelihood of confusion. You can pay to extend that deadline up to 180 days. (It's possible an attorney may also advise that you file a trademark application which you would then reference in your notice of opposition.) You can file your notice of opposition electronically (and the USPTO has provided a manual explaining the procedure). The notice will require a response by the applicant and that will result in an inter-partes proceeding before the Trademark Trial and Appeals Board (TTAB), basically an administrative mini-trial.
Electronic filing basis for opposition
What's your best strategy? Unless you're familiar with legal proceedings and making legal arguments, opposition proceedings at the TTAB will likely require an attorney's assistance. You can read about typical TTAB actions at the TTAB blog, research TTAB final decisions, or you can search the TESS trademark database and click on the "TTAB status" tab when you find a registration that includes opposition proceedings. If you plan on contacting the other party before filing a Notice of Opposition, you should know what you're seeking beforehand  (a concurrent use application, a promise not to oppose your use within your region, a license, etc.) and you should keep your eye on the clock (so you don't lose the opportunity to file an opposition). Your best strategy will be determined after speaking with an attorney familiar with TTAB filings. We can't ballpark the cost of that representation although we're pretty sure it will cost more than your last root canal surgery.
Can the other applicant stop your use? Unregistered marks, even if they have priority, have limited rights versus registered marks. If you can prove priority you will probably be able to preserve your rights within the geographic area in which you have been operating ... but you won't be able to expand into other regions.

Monday, September 12, 2016

Can I Sell Public Domain Image as Vector Image?

Dear Rich: I am a graphic designer. I am wondering if I can use a public domain image as a model to create a vector image, then sell that vector image on posters or a t-shirt. I created a famous chandelier in Illustrator, based upon a photograph of that chandelier that I found with a Public Domain license. Another example might be creating a vector drawing of the Golden Gate at Versailles. Each element was hand-created using illustrator tools, and not auto-traced.
If the image is in the public domain, you are free to convert if for reproduction on posters or t-shirts.
Does vector conversion create a separate copyright? The more your vectorized image differs from the original, the more likely you can claim copyright in the distinguishing features and stop others from using your work. If, for example, your work resembles more of a hand-drawn work than a photo, you can claim copyright. But if your vectorized image is simply a slavish reproduction of the original image, you will not be able to stop others who copy it. You cannot stop others from vectorizing the public domain image, even if the result is substantially similar to yours.
A public domain license? You refer to the underlying illustration as being subject to a "public domain license." We're not clear what that means. If the chandelier illustration is in the public domain no permission or license is needed. If you are referring to a Creative Commons license or some other license, then the work is not in the public domain and you must abide by the conditions of the license -- for example providing attribution if required.

Wednesday, September 7, 2016

Can I Republish "The Raven"? Evermore!

Dear Rich: I wanted to make an illustrated book out of Edgar Allan Poe's The Raven as a gift to my son. I recently changed career paths and am now studying graphic art and am wondering if I could publish and sell the book as opposed to just keeping it for personal use. I see his work is in the public domain.
You are correct that Poe's The Raven -- first published in the U.S. in 1845 -- is in the public domain. You are free to  modify, illustrate, translate, publish, animate, or even rap to Poe's fresh rhymes. You can claim copyright in any original, non-trivial contributions you add to the poem and you are also free to price the work as you wish (though $9 might be "poetic justice" as that's what Poe was paid for the poem - approximately $250 in today's dollars). If you provide illustrations, you'll also be joining a remarkable group of illustrators including Gustave DorĂ©, John Tenniel, Harry Clarke, John Rea Neill, Edouard Manet, Lorenzo Matteotti (who collaborated with Lou Reed), and Gahan Wilson.
left: Edouard Manet, center John Rea Neill, right: John Tenniel

Sunday, August 14, 2016

Seeks Permission For Chinese Translation

Dear Rich, I am an independent permissions editor and have the opportunity to clear rights on behalf of a reputable Chinese scholarly/academic publisher. They plan to translate a U.S. title from English to Chinese. First, they need to clear the rights for protected material in the volume. Is there anything I should consider, that might not occur to me, about the process of clearing rights from the United States for a foreign publisher? Or is there any exposure I might have that I should be aware of?
As a permissions editor, you're probably already aware of most of the important issues but we'll cover some of the basics just in case. Clearing rights for a foreign language publisher involves acquiring at least two separate rights: the right to publish in the territory (China); and the right to publish in the language (Standard Chinese). Defining the territory is especially important as it limits where the translation can be distributed (and may prevent export or sales outside the territory). Also important are issues regarding duration of the permission, approval of the translation, and format(s) of publication (trade, hardcover, eBook). And of course, don't forget to check photo, artwork, and text permissions which may have been negotiated separately.
Your exposure? Your legal liability if any, could conceivably come into play if someone pops up after the translation is published claiming that he or she is the real owner of rights. You might be able to shield yourself in a few ways:
  • you can ask the person granting permission to attach proof of rights ownership (a publishing agreement, etc.) to the permission agreement and incorporate it by reference. 
  • you can also include a warranty and/or indemnity provision in the permission agreement. Warranties are contractual promises. The warranty can be something basic such as "Licensor warrants that it has the right to grant permission for the licensed uses as specified above and that the material licensed does not infringe the rights of any third parties." A licensor who provides indemnity is agreeing to pay for the licensee’s damages for certain situations. Indemnity provisions are also sometimes referred to as “hold harmless” provisions because the provision often states that the person granting permission shall hold the other party harmless from any losses, etc. Many persons granting permission balk at indemnity provisions and you may not have the bargaining power to include one. In addition, the enforcement of warranties and indemnity may be difficult as it involves filing a lawsuit based on the permission contract -- often an expensive proposition when dealing with parties outside the U.S.

Tuesday, August 2, 2016

E&O Insurance Needed for Documentary

Reed Bontecou’s Portraits of Wounded Soldiers (1865)
Dear Rich: I have been working on a historical documentary for about two years now and just started submitting it to film festivals. I have about 50 historical still images in the short film. These images are all from 1860-1900. I have confirmed with film festivals that I should be okay on all rights. However, this piece is now being considered to be televised nationally and I’ve been asked for further confirmation on rights. In addition, I am now being told I need to buy E & O insurance and I’m not sure where to go for that. I created this piece with all of my own time and money. They are not offering me any money to televise it and I’m supposed to pay for the insurance myself. Any thoughts you have on the rights and insurance would be greatly appreciated.
Assuming the photos were published before 1923, (or if unpublished, the photographer died before 1946), the images are in the public domain. In other words, these photographs are free for you to use without permission. However, simply explaining that to a television station is not enough. The company will want you to back that up with insurance, and the insurer may want to consult with an attorney before issuing the policy.
What is E & O insurance and why do you need it? Errors and omissions insurance doesn't just cover claims of copyright infringement. This media liability insurance also protects against claims for right of publicity  and invasion of privacy, trademark infringement, and a few other media-related problems. It is extremely unlikely you will obtain distribution deals or television broadcast without this insurance in place.  According to Michael C. Donaldson's Clearance & Copyright, 4th Edition: Everything You Need to Know for Film and Television, the cost of insurance for a documentary ranges between $3,000 to $10,000 and most policies are issued by three insurers: Axis Pro, Hiscox, and Chubb. We recommend you invest in a copy of Donaldson's book as it explains the nuances of policies, how to apply for E & O insurance and it provides email addresses to write for qualified insurance brokers and clearance attorneys.

Monday, July 25, 2016

Do I Have to Pay to Use Pre-Installed Fonts?

Dear Rich: I own a Macbook Pro computer that came with the fonts Avenir and Avenir Next in the system. I have used these fonts extensively for my consulting work to produce reports, many of which are available as PDFs (with font embedded) online and one of which may now be printed and sold online. I recently read that I may need to pay for the rights to these fonts. I have asked the Apple copyright division and also asked if they could send me the license agreement for the fonts pre-installed on my computer. It seems like a stretch, to say the least, that I should have to pay to use fonts that came with my computer and have presumably already been paid for. However, I have read conflicting things about how copyright law applies to use of fonts.
Here are the general rules regarding copyright and fonts.
Typefaces are not copyrightable; font software is copyrightable. The appearance of a font will not be protected by copyright law. However, the software programs that display, manipulate, and modify the font can be protected under copyright. Practically, when working with design programs and with digital publishing files, the font software is inseparable from the font's appearance --- that is, in order to "see" the font, you need to install the software in programs such InDesign or to "embed" it in PDF or ePub files. Embedding a font stores data about the font (not just the appearance of the font) within the document, so that a third party, receiving the PDF or eBook, will see your font as you intended. If it is not embedded, the third party's computer will substitute an equivalent font, sometimes resulting in aberrations.
Font software is subject to license agreements. Like most software, font software is subject to licensing -- that is, somewhere along the line you must agree to a set of rules about how you can use the font software, for example, limiting the number of computers on which it can be installed. When users violate these licenses and distribute the software without restriction they are infringing copyright. In other words, even though font software may come pre-installed on your Mac, that doesn't mean you can install or embed copies on other machines (any more than you can reproduce software like GarageBand and iMovie on other computers).
Apple's Software License. Apples Mac OS X EULA includes the following statement about fonts:
F. Fonts. Subject to the terms and conditions of this License, you may use the fonts included with the Apple Software to display and print content while running the Apple Software; however, you may only embed fonts in content if that is permitted by the embedding restrictions accompanying the font in question. These embedding restrictions can be found in the Font Book/Preview/Show Font Info panel.
Unfortunately, this isn't particularly enlightening because there are no embedding restrictions in the Avenir section of the Font Info panel of the Mac Font Book (see below). (Actually there don't seem to be restrictions posted for any of the Mac fonts). Font Book indicates that Avenir is owned by Linotype Gmbh, a German company. Linotype Gmbh (also operating as Monotype) has a variety of end user licenses and charges $78 for an ePub embed license.
Bottom line dept. Apple's failure to place restrictions on its pre-installed fonts makes it more difficult to determine your rights and obligations, if any, when embedding pre-installed fonts such as Avenir. It's always possible your use may trigger a cease and desist letter, but we think it is unlikely. Font foundries are primarily focused on unauthorized reproduction of the software fonts, particularly high profile abuses where companies exceed the number of users in a corporate setting, embed fonts in apps, or flaunt unlicensed fonts in marketing materials. Nevertheless, if you are concerned you may wish to consider fonts from sources such as Adobe which have a liberal embedding policy.

Thursday, July 14, 2016

Will Fictional PR Consultant Get Sued?

Dear Rich: I would really appreciate your input on a piece of fiction I am writing, involving a public relations employee. In my book, the PR employee divulges information about one of her clients to a newspaper reporter, The reporter then publishes the information about how the client has been lobbying to have a law created. I'm thinking that the PR employee would have signed a non-disclosure agreement. Could she be sued? Is it likely that her employer would bother, since she is young and has little money.
Being young probably won't make any difference in the employer's decision to sue the PR consultant (unless the employer suffers from Ephebiphobia). However, the PR employee's impecunious status may be one factor affecting the decision; other factors include the value of the confidential information disclosed (or financial damage caused by the disclosure), the financial status of the employer, the emotional composure of the employer (litigious or avenging?), the relative strength of the case, and the desire for (or avoidance of) public scrutiny.
Would the PR employee have signed a nondisclosure agreement? It is very likely that your fictional PR consultant used a letter of agreement or a more formal contract and it's also very likely the agreement includes confidentiality provisions. These arrangements are SOP for PR professionals, publicists, and crisis communications specialists. If the PR person is an employee, not a consultant, the employee would be bound to maintain confidences even without an agreement.
What would happen to a PR professional who breached confidences? A public relations consultant who breached client confidences would face three potential problems: a lawsuit or arbitration filed by the client, professional discipline (expulsion from the Public Relations Society of America for violation of their code of ethics); and loss of business (who's going to trust a PR consultant with loose lips?). Assuming your PR person can be dragged into court the disgruntled employer must still be able to demonstrate that the information disclosed amounted to a trade secret. If it's not a trade secret -- that is, it was publicly known information before the disclosure -- then the employer will have a hard time claiming it's a breach of confidence.


Saturday, June 25, 2016

Can I Sell Stuff I Found in a Dumpster?

Dear Rich: Can I legally sell products that I found in a dumpster?
The general rule is that you can keep and dispose of property once it has been deposited in a trash receptacle from which routine collections are made (and once the person throwing it away has left the area). For example, a carpet is abandoned once someone drops it in a dumpster and walks away. The Supreme Court has ruled that once an article has been left for collection, the person throwing it away has no reasonable expectation of privacy in that article.
Diving for IP. If the discarded article is protected by copyright or patent law, you can sell it but you can't reproduce it. For example, studio engineer Bones Howe found Elvis Presley master tapes in a  dumpster behind a Hollywood studio. Years later he sold the tapes back to Elvis's label but Howe never had the right to make copies of "All Shook Up" and other Elvis tracks. At the same time, you have no rights to sell a discarded article if it has been stolen as a Manhattan woman learned after she found a $1.1 million painting on the street. Dumpster diving for trade secrets is common practice for industrial spies. Although some experts disagree, federal courts have held that trade secrets placed in the trash are not legally protected.
Legal problems for divers ... If the dumpster is fenced in or on private property, the dumpster diver may be guilty of trespassing. The diver may also be charged with theft if the items were not actually discarded -- for example, someone puts out furniture for pick up. Or, alternately, the diver may be charged with littering if trash is scattered after the dive or under nuisance/disorderly conduct laws if the diver has made a scene. And of course, diving for the purposes of identity theft is verboten.


Saturday, June 18, 2016

How Do I Argue That Something Isn't a Fair Use?

Dear Rich: We are attempting to have something removed from Google's search results as it is infringing on a client's copyright. I understand that in many cases this may be "fair use" and that is Google's current argument as well but they are requesting additional information on why we assume it doesn't fall under the "fair use" umbrella. Are there letters to Google that state or show examples of why things aren't "fair use" that I can read to see if it fits our situation? And/or do you have any suggestions on additional reading so we can make a strong argument why it is indeed infringing? There is also defamatory information being posted and for that reason we do not want to go directly after the site owners as they may retaliate.
We couldn't find any sample letters to Google so we suggest you write your own "legally reasoned" letter. Legal reasoning is simple: After stating the issue (Is this fair use?) and explaining the facts and the law (hint: fair use consists of four factors), you make your argument. The key to making a winning argument is finding fair use rulings that are similar to your situation
The Copyright Office to the rescue. Fortunately the Copyright Office has made life simpler for people researching fair use. The Fair Use Index summarizes hundreds of fair use cases.
First, the site allows you to search cases by jurisdiction. In your case (dealing with Google), all jurisdictions are relevant though, of course, Supreme Court cases swing the most weight. Second, select the category or categories that are similar. For example, if your situation involves a filmed news clip that was parodied, you would check Film, News Reporting and Parody and the search page would look like this:
Click on the cases that appear and find examples that support your position. You'll notice that each case summary contains a fair use analysis. Feel free to mimic these analysis in your letter (or attach them to your letter). Your goal is to succinctly explain that courts, facing situations like yours, have ruled against fair use. If your research shows the opposite result -- courts, in situations like yours, ruled for fair use -- then you may have to abandon your argument.

Friday, June 10, 2016

Can You Copyright an X-Ray?

Dear Rich: I am developing a mobile educational app using diagnostic x-ray images obtained from free access websites. Are x-rays subject to copyright protection in the U.S. and the rest of the world? Would I even be able to use x-ray images from published books?
We can only speak to U.S. law where the position taken by the Copyright Office is that copyright will not protect diagnostic medical x-rays.
X-rays are useful articles. The Copyright Office Compendium Sec. 924.3(D) states that "Generally, the U.S. Copyright Office will not register medical x-rays or imaging, regardless of whether they are claimed on an application as photographs, images, artwork, or graphics. These types of images are considered useful articles, because they have an intrinsic utilitarian function, and the skill or craft used to create the images (if any) is dictated by that functional purpose." This rule also applies to MRIs, echocardiograms, mammograms, ultrasounds, iodine imaging, angiograms and electrocardiograms.
Exceptions: compilations and x-ray art. The Copyright Office will register x-ray imaging in two situations.  First, the author of a textbook or website that incorporates x-rays may register the compilation of images. A compilation copyright protects the order and selection of the images but does not protect individual x-rays. Second, copyright will protect imaging technology when it is used for artistic purposes in which case the purpose of the imaging "must be conceptually separable and sufficiently creative." Examples of x-ray art include works by artists Hugh Turvey and Nick Veasey.
P.S. Dept. Avoid posting x-rays with any identifying information that violates patient privacy laws.

Friday, June 3, 2016

What Should My Cease and Desist Letter Say?

From the PDR's Decayed Daguerreotypes
Collection (Portrait of Emma Bostwick)
Dear Rich — I just stumbled across a commercial venture’s Web site that uses my photograph at the top of their main page and their about page, without permission or credit. I registered the image with the Copyright Office long ago. I don’t want to be a hard ass — I’d be happy to license the image for my regular fee or see it taken down. Do you have language you recommend for when I first email the firm? 
The communication you send to an infringer -- commonly referred to as a cease and desist letter -- should convey proof of your ownership, a summary of the rip-off, a demand that the infringer stop its activity, a proposed resolution, and request for a response within a fixed time period.
To threaten or not to threaten? Although many cease and desist letters threaten legal action, you’re probably wiser not to do so at this stage. As attorney Stephen Fishman writes in the Copyright Handbook, "The specter of imminent legal action is likely to make the other person paranoid, defensive, and unwilling to cooperate. It may also send him straight to a lawyer." (Also a letter that threatens a lawsuit may enable the infringer to justify what's known as a declaratory action.)
The right tone. The tone of the letter is up to you (and your lawyer if using one) but we recommend remaining dispassionate rather than being angry, sarcastic, or using legalese. Keep in mind that if the matter escalates, your letter could become an exhibit in a court battle. So don't say anything that you wouldn't want a judge or jury to see, as well.
Sample cease and desist letter. Here's a suggested opening salvo:
Dear Sir or Madam: I recently became aware that your website has published two of my copyrighted photographic images: "Title of photo 1" (URL for infringing material) and Title of photo 2" (URL for infringing material). I created these images in June 2005 and subsequently registered them with the U.S. Copyright Office (a digital scan of the Certificate of Registration is attached). I own all of the rights in these photographs. Because I never authorized you to reproduce these images, it appears that you have infringed my copyright.
I am hopeful that we can resolve this matter in a nonlitigious manner and am prepared to grant you a license for your past and future use based on my standard fees. If I don't receive a response within ten days of receipt of this correspondence, or if you disagree with my assessment, I will pursue my legal rights. As your attorney can advise you, I would be entitled to reasonable compensation in the form of statutory damages as provided under federal law. I look forward to speaking with you.
Ideally, cease and desist letters should be sent by some method that guarantees proof of delivery.
P.S. Dept. If the website refuses to respond or own up to the infringement, you can consider filing a DMCA notice.

Thursday, May 26, 2016

Does Weird Al Qualify as a Parody Fair Use?

Dear Rich: In a recent answer you linked to a blog posting by Weird Al Yankovich in which he says the following: "My parodies have always fallen under what the courts call “fair use,” and this one was no different, legally allowing me to record and release it without permission." He adds, though that it has always been his personal policy to get the consent of the original artist before including his parodies on any album. What do you think of Weird Al's fair use analysis? Is putting different, humorous words to an existing song automatically a parody that does not require permission? 
We appreciate Weird Al's contribution to popular music but we think he may be mistaken about fair use.
Is Weird Al a parodist? His songs make us laugh but that's not enough to qualify as a parody. Under copyright law, a parody comments on the work (or author) being parodied. As the Supreme Court wrote:
 For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works․ If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish) ...
An example of this principle can be found in a case involving a book -- The Cat NOT in the Hat! --that borrowed from Dr. Seuss. Although the author took Dr. Seuss's style, language and characters, his book was not a parody because it did not comment on Dr. Seuss; it simply used Dr. Seuss's style to re-tell the trial of O.J. Simpson. In other words, when Weird Al makes fun of the songwriter or subject matter of the song, it may be a parody but "ridiculing other unrelated stuff is a big no-no." A Weird Al song like "Smells Like Nirvana" may qualify as a parody but the same may not be true for "Like a Surgeon." (If you find this distinction between parody and satire to be artificial, many legal experts agree with you.)
Is permission required? Even if his songs qualify as parodies, a bigger issue may be the amount of material taken from the original songs. By its nature, parody demands some borrowing in order to “conjure up” the original. But even with this more extensive license, less is more when it comes to fair use. For example, in one case, fair use was found for  a twenty-nine second parody entitled, “When Sonny Sniffs Glue,” which altered the original lyric line of "When Sunny Gets Blue," and borrowed six bars of the music. Similarly, very little was borrowed in the Pretty Woman case. The rap group 2 Live Crew only took the opening musical tag and the words (but not the melody) from the first line of the song “Pretty Woman” (“Oh, pretty woman, walking down the street”). The rest of the lyrics and the music were different. Compared to these cases, the extensive reworking of lyrics, combined with the complete taking of musical compositions (similar to what happened here) would make it difficult for Weird Al to successfully claim fair use for his compositions.

Monday, May 16, 2016

Are Teachers Public Figures?

the "involuntary public figure"
Dear Rich: I worked for the public schools in Minnesota and after observing many things I didn't like, I resigned and then wrote an expose that I now sell for my Texas based business. This expose discusses things like union monitoring and teachers lying. A former friend said this might get me into trouble since the law might not consider these school employees "public figures." But don't newspapers publish stories of school employees' misdeeds all the time? Also don't I have a right to tell taxpayers what transpires in our schools? 
You can speak freely, but if you make false statements that damage another person's reputation, that person can sue you for defamation. If you are sued, you're more likely to prevail if the person suing you is considered a public figure -- for example, a celebrity, sports figure, politician, or a public official or someone involuntarily placed in the public spotlight (someone accused of a high profile crime). That's because a public figure would have to show that you published your statements with "actual malice" -- that is, you knew the information was false and you published it anyway. Public figures are held to a higher standard because they are expected to have thicker skins.
Are school employees public figures? Courts in a few states -- Arizona, Connecticut, Illinois, Kansas -- have ruled that teachers are public figures (public officials); and a few states have ruled that they are not -- California, Florida, Texas, Maine, and Virginia. Some lawyers contend that the teacher should be considered a private figure unless serving in an official capacity such as a principal or school superintendent; others have argued that teachers should be classified as public officials.
When newspapers publish stories of teacher misdeeds ... they're typically repeating criminal allegations. In other words, they're reproducing charges that are a matter of public record (and at the same time, the arrest may make the teacher an "involuntary public figure.") If a newspaper reports on a teacher's misdeed that is not yet a criminal charge, the newspaper usually has sufficient evidence to prove the truth, an absolute defense to defamation. That's fine for newspapers with the funds (and insurance) to defend these battles. But no matter what rights you may have, the expenses and risks of defamation claims are serious enough that you may want to reevaluate your reporting.
P.S. Dept. Besides defamation, you may also want to consider whether your disclosures could trigger an invasion of privacy lawsuit.

Friday, May 13, 2016

Will Your NDA Still Work After DTSA?

Dear Rich: I'm pitching a product to a potential licensor soon and planning to use an NDA from your book. After the new law, will your NDA still work?
We assume you're using the NDA from our book, Profit From Your Idea. (You can find similar nondisclosure agreements at our NDA website.) If you're pitching to a potential licensor, you can use the agreement as is. No changes are required as a result of the recently enacted Defend Trade Secrets Act (DTSA).
Employers must include notice. The DTSA does affect agreements with employees and independent contractors, however. Employers are now required to include a notice of immunity in any employee agreement "that governs the use of a trade secret or other confidential information." (The notice should also be included in agreements for independent contractors as well.) An employer who fails to include the provision and later sues under the DTSA is prohibited from recovering exemplary (double) damages and attorney fees from the employee or IC. The failure to include the provision does not prevent filing in federal court under the DTSA. A sample provision looks as follows:
Notice of Immunity from Liability. An individual shall not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal. An individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual (i) files any document containing the trade secret under seal; and (ii) does not disclose the trade secret, except pursuant to court order.

Wednesday, May 4, 2016

Never Say Forever: Music Master Ownership

Dear Rich: The term "in perpetuity" appears in record contracts quite often in regard to ownership of masters yet that same term is quite often the subject of many problems, in particular as they relate to the statute of frauds. I am in the process of negotiating a joint venture agreement with my band. The record label that is planning to sign the band will co-own the masters for 10 years from the release date after which it will give full ownership of the masters back to the band. Since the band is planning on just one album and the joint venture agreement has an expiration date, "in perpetuity" seems to be the only way to go regarding the ownership after the record deal and joint venture are done. Any insight?
For those unaware of the term, "in perpetuity" is legalese for "forever" (and synonymous with "until hell freezes over"). (Note, when it comes to grants in perpetuity, lawyers can sometimes transform "forever" into "whatever").
Should your band acquire the masters in perpetuity? We don't think the "in perpetuity" language is necessary. On a  technical basis, no copyright transfer can be forever. That's because a copyright has a fixed term -- for example, life of the author plus 70 years -- after which the work falls into the public domain and anyone is free to use it. So, in reality, a grant in perpetuity is a grant for the life of the copyright. In any case, the "in perpetuity" language seems like overkill especially if your band wants to later sell or license rights.
Contract concerns. The joint venture agreement should state that after the venture ends, all rights granted under the agreement revert to the band and the label will cooperate with any paperwork necessary to make the reversion possible. (The agreement may also provide for a sell-off period to get rid of existing stock.)
Who's going to receive the reversionary rights in 10 years? What happens if the band breaks up or members leave over the next ten years? If you're concerned about these issues, you'll need to formalize the band's arrangement -- that is, whether it is a partnership, sole proprietorship, LLC, or corporation. That's discussed in our Music Lawbook.
Statute of Frauds. The Statute of Frauds requires certain contracts be in writing to be enforceable -- for example, contracts that can’t be performed within a certain time period (typically one year). If you're using a written contract, the Statute of Frauds isn't an issue.

Wednesday, April 27, 2016

Why Can't I Post Erotic Fiction About a Real Celebrity?

Dear Rich: I wrote a short satirical erotica series about a C-List public figure. She already knows as she mentioned me in an online magazine article. One digital publishing platform removed these works because "publishing erotica regarding living people can result in both you and [the publisher] being sued by the person in question." I want to believe I have a First Amendment right to do this as didn't "Hustler Magazine vs. Falwell" affirm this?
The first amendment and freedom of speech rules limit restrictions by the government, not by private businesses like Apple, Amazon or other digital distributors. So if your publication violates the terms and conditions of Kindle or iBooks or some other digital publishing platform, it doesn't really matter what the Supreme Court said in Hustler Magazine v. Falwell, you're likely to get bounced without any recourse.
What did the Supreme Court say in Hustler Magazine v. Falwell? In the Hustler case, the Rev. Jerry Falwell was the subject of a crude sexual parody that described Falwell having sex with his mother in an outhouse. Falwell sued Hustler and its owner, Larry Flynt, for defamation, invasion of privacy and intentional infliction of emotional distress. The invasion of privacy claim was dismissed, and a jury ruled against Falwell on the defamation claim because the parody was clearly fictitious and because Falwell was a public figure. (Public figures are presumed to have thicker skins than us mere mortals and have a harder time prevailing in defamation cases because of what is known as the actual-malice" standard.) But the jury awarded Falwell $150,000 damages for intentional infliction of emotional distress. The Supreme Court in an 8-0 decision reversed the emotional distress award determining that it was basically an attempt to make an end-run against defamation standards -- that is, if there was no defamation, there should not be a damages award. The Hustler decision (unpopular with some legal scholars) would apply to your case only if the C-List celebrity sued you for defamation.
P.S. Dept. The trial was portrayed in The People v. Larry Flynt, a first-rate, first amendment movie with a super cast.
BTW Dept. Larry Flynt and Rev. Falwell eventually became friends.

Wednesday, April 20, 2016

Can Publisher Say What is Fair Use?

Dear Rich: I'm an academic co-editing a book with a major university press. Out of an abundance of caution, our editor requested we check on permissions for a number of quotations, etc., with the original publishers. None were an issue til now. But one was an 85 word block quotation transcribed from a novel (and properly cited). The subject of the quotation is critically analyzed and discussed by the chapter author and this discussion is used to help frame the remainder of the chapter, which is not about the novel at all. I submitted the permission form to the publisher (a major US trade publisher). Four and half months later, they just informed us that we need permission and to pay a fee. I subsequently received communication from the publisher stating "Please note that it is up to [the copyright holder] to determine whether a quotation falls into fair use." Is this accurate?
No, it's not accurate, though it is scary. If copyright owners called the shots, it would render fair use meaningless and defeat the constitutional foundations of copyright law. After all, copyright is intended to benefit the public and as the Supreme Court has held, rewarding copyright owners is "a secondary consideration." In other words, think of fair use as means of unshackling the copyright holder's monopolistic grip.
Does your use qualify as a fair use? Before we discuss fair use, we provide our usual caveats: only a court can make the final decision; and you may not be able to afford being "right." Although judges consider the four fair use factors when making a fair use analysis, we think the key issues in your determination are the amount of material used (in relation to the complete novel), whether your use is transformative, and whether it serves as a"market substitution" for the novel. Using that criteria, we think your quotation qualifies as a fair use.
Less is more. Although courts discourage blanket rules as to the percentages permitted for fair use, as a general rule, less is almost always better. For example, it was a fair use when a biographer paraphrased less than one percent of the material from unpublished letters of author Richard Wright. Considering that the word count for a typical novel ranges from 70,000 to 115,00 words, your use of 85 words is negligible -- probably less than one-tenth of one percent.
Transformative/market substitution. The Supreme Court has emphasized "transformative use" as fair use benchmark. Providing a commentary and critical analysis of 85 words of text from a novel seems to clearly fulfill a transformative purpose. Also crucial to fair use analysis is an underlying economic issue: Does your use (reproducing 85 words) create a market substitute for the original work (the novel)? That is, does it in any way displace the market for the novel? We think not.
What to do? Based on the information you've provided, the publisher is either ill-informed or fishing for fees (or some combination). Unfortunately, the publisher is also well-heeled and capable of bankrolling an expensive lawsuit. On the other hand, the publisher may be bluffing, or may come to its senses realizing it can't afford the lawsuit, the potential negative publicity, or worse still, the legal precedent that may result from the case.
P.S. Dept. Check your contract with the university press. If it requires you to indemnify for lawsuits, you would have to foot the bill.

Sunday, April 10, 2016

How Do I Stop Compulsory License?

Dear Rich: How does one prevent a compulsory license from being obtained? For example, what if I don't WANT anyone else recording MY song? Can a publisher and/or a copyright owner refuse to grant a compulsory license? What if some non-respectable band decides to record and release a song that I have published, which then tarnishes my band's reputation with our fans? Nobody ever gets clearance to cover Led Zeppelin without authorization. How does that work? I mean, doesn't a compulsory license kind of render copyright null and pointless?
First, a little background: The compulsory music license permits a musician or record company to distribute a version of your song on a compact disc, vinyl, or digital download (all referred to as "phonorecords") if they pay the statutory rate, currently 9.1 cents per copy. The compulsory license does not permit you to use a song in a movie, TV show, commercial or a music video. Those uses would have to be licensed separately. The compulsory license is available only after you have first distributed copies of the song to the public. It's not available if you never distributed your song as a phonorecord -- for example, if your song was only used in a movie or TV show. The compulsory license is also not available if the musician covering your song wants to make substantial changes to the music or lyrics -- for example, Weird Al Yankovich negotiates permission* to create his parodies. The compulsory license has been around for over 100 years and was considered a boon to songwriters when it was first enacted because it guaranteed compensation for "mechanical" reproductions. Should your band sign with a label, the label is required to pay songwriters the compulsory license fees (or a lesser negotiated amount known as a three-quarter rate).
Right, you had a question. As for your concerns about another artist tarnishing your reputation, we have doubts about that. Other artists might release versions of your song that you don't like but we don't see why that would tarnish your cred. We didn't care for Britney Spears' remake of "Satisfaction," or Jessica Simpson's version of "These Boots Are Made For Walking," but they didn't diminish our love for the original versions (and from a financial perspective, we think the songwriters were okay with these lesser gems, as well). And of course, sometimes, a mundane cover reveals something unexpected or sometimes a cover is so good, fans believe it is the original version.
Copyright realities. Finally, you need to keep in mind the goal of copyright: the government is granting a limited monopoly because it wants to encourage creativity. The compulsory license fulfills that purpose. In fact many people wish that compulsory licenses exist for photography as well as for all intellectual property.
* BTW -- here's the happy ending to the Weird Al/Gaga story)

Thursday, April 7, 2016

Does A Federal Trademark Applicant Need Physical Presence in U.S.?

Dear Rich: Can a non-U.S. citizen obtain a federal trademark application?
Yes, a non-U.S. citizen or company can register a trademark in the U.S. However, if the foreign-applicant doesn't reside or have a physical presence in the U.S., the applicant will have to  appoint a domestic U.S. representative -- that is, someone residing in the U.S. (typically a trademark attorney) who is appointed to receive notices and correspondence regarding the trademark and application. Keep in mind we're only talking about applications for U.S. registration -- that is the foreign citizen or company must be using the mark on goods or services within U.S. borders (or have a good faith intent to use it). A non-U.S. citizen or company that has registrations already issued in the applicant’s home country (that cover the same mark and essentially the same goods and/or services) can also seek federal registration under Section 44(e) of the Lanham Act.

Thursday, March 31, 2016

Why Is It So Hard to License Pop Music for Podcasts?

Dear Rich: Are there standard fees negotiated for using pop music in podcasts? Does music licensing work as it does in commercial use, where one must obtain both master and mechanical licenses?
No, unfortunately, music licensing for podcasts doesn't work as predictably as it does when licensing music for CDs, downloads or streaming. The music industry has made it especially difficult for a podcaster to license pop music and we assume that most podcasts that use Adele, Taylor Swift or any other contemporary music in its intro, as background, or as a featured musical track is either infringing copyright, or possibly is excused under fair use principles.
Why is it so hard to obtain the right to use pop music in a podcast? Pop music is based on two copyrights: a musical works copyright owned by the songwriter or music publisher that protects the musical composition; and a sound recording copyright owned by the artist or record company that protects the recorded version of the song. In order to reproduce a song on your podcast you need permission from both copyright owners.
Music publisher permission. Because the song copyright owner is usually a music publisher, you can find the contact information by searching the song records at,, or Once you know that, you can contact the publisher directly and negotiate a podcasting license. Alternatively, you may be able to do obtain the license from the Harry Fox Agency, which represents many publishers. However, how Harry Fox -- which classifies podcasts as user generated content -- accomplishes the licensing is a mystery to us (and the company hasn't responded to our inquiries).
Sound recording permission. In addition to the song copyright, you would need to obtain the rights for the sound recording copyright. SoundExchange represents the rights of sound recording copyright owners, but alas, it’s not empowered to license music to podcasters. So, you’ll need to determine the owner of the sound recording copyright – most likely a record label -- and then contact the company and negotiate a sound recording license. As you can imagine the whole experience may prove to be frustrating, expensive, and completely fruitless. Even more frustrating, if you plan to use music with a video podcast, you would also need what is known as a synchronization license from the music publisher and a master use license from the sound recording owner.
Podsafe music. That leaves podcasters with two choices: operate without permission (and hope to be excused as a fair use if hassled) or acquire Podsafe music. One source of Podsafe music is under Creative Commons license -- go to and choose a music resource such as SoundCloud, and type in your search – for example, blues, rock, or electronic. Note that sources such as SoundCloud may offer a Creative Commons License for a remix of popular music, say a Janet Jackson remix. In these cases, beware, that the provider may only be granting a license for the sound recording, not the underlying musical composition. If the provider has created and owns the underlying song, then you are good to go and no further permission is necessary. Also, although not free, the musical loops that come with GarageBand (as well as loops from other providers) can be used to construct Podsafe intros and backgrounds. And of course, if you have a budget for it, there are always production music libraries (PMLs) or you can hire a musician to create music.