Wednesday, March 18, 2015

Little Rascals/Affordable Care Fair Use Question

Dear Rich: My original music video concerning the Affordable Care Act would illustrate the song's narrative with very short clips cut from online video: The Little Rascals from the 1950s, a major league pitcher 'doctoring' a baseball, documentary footage of an ambulance. Would these uses likely be considered fair use? 
If the clips are very short—just a few seconds—they would probably qualify as a fair use because you're using them for purposes of commentary. Of course, claiming the fair use privilege doesn't mean you won't get sued. And if you were sued, you'd still have to prove your claims in court, a stressful and expensive proposition. So, a more important question is whether the footage is recognizable to the copyright owner and whether the owner will learn of your use. In general, we believe that owners of copyrights in Hollywood studio films are among most likely to complain about these kinds of unauthorized uses. However, note also that the use of someone's footage for political purposes, particularly, to espouse a point of view contrary to that of the filmmaker may also trigger infringement lawsuits.

Monday, March 16, 2015

Should I Register My Domain Name as a Trademark?

Dear Rich: In your book on trademarks there is a discussion of whether you should register "" as a trademark if you've already registered "trademark." The example provided is a line of menswear that is now also going to be sold online. The conclusion is that you should consider registering the full domain name ( if establishing services or goods unique to the Internet business. Could you please explain why? If the PTO considers the ".com" piece of the trademark as unprotectable, what benefit would be gained by registering the full domain name? If you have a business that only sells online, should you register both "trademark" and ""? 
If you register a domain name as a trademark with the USPTO, you won't be able to claim any rights to the ".com" (known as a top level domain or gTLD) by itself. The USPTO considers elements of the domain address such as "http://" and  "www." and gTLDs as unprotectable features of the website address. Although they are unprotectable by themselves -- that is, you can't stop others from using .com --  a mark that combines these elements with a protectable term is registrable if it is unique to an Internet business.
More than an address. The main thing to keep in mind is that you should register the .com if it is more than an address, that is if it is a source-indicating trademark use. For example,, an online footwear and clothing company refers to itself as "" at its site. In this way,, like, is more than an address on the web, it's the brand itself. (The USPTO's Trademark Examining Rules for domain names are located here.) The benefit of registering .com depends on the company. Some want a deep trademark portfolio, one that enables the broadest claim to trademark rights. Amazon has registered over a hundred "Amazon" marks and about 25 "" marks (12 of which are still live). For smaller businesses, it may not matter much whether you register with or without the .com.
One more quirk. When registering a domain name, an applicant is permitted to furnish a drawing of the term within the address. For example, if registering, the applicant could furnish a drawing of the term "Amazon." (See TMEP Sec. 1215.02(c)))

Thursday, March 12, 2015

Five Lessons from the "Blurred Lines" Case

We've received many inquiries as to the verdict in the "Blurred Lines" case (in which a jury determined that the song, "Blurred Lines," written by Pharrell Williams and Robin Thicke, infringed Marvin Gaye's song "Got to Give It Up"). The jury awarded Marvin Gaye's heirs $7.4 million, reflecting the profits earned by "Blurred Lines," which (hard as it may be to accept) was the longest running number one single of the entire decade (racking up sales of $14.8 million copies). The case's outcome is dumbfounding, particularly for musicians. Hindsight, affording us excellent vision, reveals five lessons.
  •   Declaratory actions don't always succeed - The Gaye family didn’t file the lawsuit; it was Thicke and Williams who filed, using a procedure known as a declaratory action (used when a party has been threatened with a lawsuit and seeks a pre-emptive ruling). It's like the reverse Pacman strategy in which the pursued becomes the pursuer. The procedure has its advantages – Thicke and Williams got to pick the location for the case -- but the procedure can also backfire, as some legal experts believe happened here. By initiating the lawsuit, Williams and Thicke may have ruined the chances of a quiet resolution before the song became a super mega hit.
  •  Don't bother with the "high as hell" defense –Sometimes, one party to a lawsuit is perceived as a villain, and its all downhill from there. Thicke admitted during the trial that he wasn’t present when the song was written and was too high on Vicodin and alcohol to compose anything, anyway. That testimony painted him unfavorably as a lying pop star who wanted credit when the song was a hit but who denied liability when accused of infringement. Character judgment shouldn't be a factor when determining substantial similarity … but any case can get derailed when one party's veracity is put into question.
  • Don’t announce you want to copy someone’s song. Thicke told GQ Magazine, “Pharrell and I were in the studio and I told him that one of my favorite songs of all time was Marvin Gaye's 'Got to Give it Up.'  I was like, 'Damn, we should make something like that, something with that groove.” Similar comments were made to other publications. Later when asked by the Gaye Family lawyers what he meant, Thicke's defense was that his comments couldn't be trusted because he was “high and drunk” when he did interviews.
  • Don’t prevent jurors from hearing both versions. Many music listeners don't hear much similarity – aside from the uncopyrightable "live party" elements -- when comparing the recording of "Blurred Lines" with Gaye’s performance of "Got to Give It Up". But the jury never got the chance to make a similar comparison because they never heard Gaye's version. Lawyers for Thicke and Williams argued that Gaye deposited sheet music when he registered his copyright back in 1977 (standard operating procedure for the time) and therefore, the Gaye family’s claim could only be limited to the elements in the sheet music. In hindsight, limiting Gaye's claim to the sheet music may have worked against the "Blurred Lines" crew because it allowed the family's lawyers to take a non-holistic approach to the songs. Instead of getting a total feel for each song, the lawyers disassembled the sheet music and focused on eight distinct notated similarities.
  • Juries are unpredictable. 'Nuff said.

Wednesday, March 4, 2015

My Boss Made Me Appear in Yelp Commercial

Dear Rich: My employer at a small law firm has required his whole staff (about 8 of us) to appear in a Yelp commercial video. Please note that all the employees had no choice but to do it, and although we signed a release, no consideration was provided in exchange for the release. The day of the shoot, we all signed a release form (no one had to actually read it - just told to sign). My employer wanted me to speak on this video, even though I didn't want to. I was told we will get to edit prior to posting it on Yelp. I reluctantly spoke (and did a bad job so I could get edited out). I asked to view it right after my employer filmed me, and he said he was short on time, but that I could make edits to the final version. When the final version came out, I asked that very first day to be edited out on the part where I am speaking one-on-one (something that could easily be taken out without altering the rest of the company video). My employer kept saying "think about it," and that "I'm so pretty blah blah blah ask others opinion on it before wanting to be taken completely out." I told him its a personal choice that I don't want my face, name and video on the Internet so please remove it. Then two weeks later I saw that the final version still included me in it - and I requested over and over again not to post it until he removes me. He refused saying, "the window to edit is now over, and I'm too pretty to be cut out." I got upset and said I want to be cut out immediately. His response, via text, was: "You signed a release. You work for me. Case closed.” What do I do!? I don't feel comfortable and I feel violated! I know this will ultimately cost me my job, but this just isn't fair. I shouldn't be forced to be in it when so easily I can be cut out!
We sympathize with your predicament. Nobody wants their image used for purposes of commercial endorsement without consent. The purpose of a release -- assuming its drafted properly -- is to grant consent. We think that you're in a tough spot and may be bound by the terms of the release. Most courts consider a written agreement as the "final" statement on the deal and your release may even have a clause entitled "Entire Agreement" or "Integration" that guarantees this result. The fact that you didn't read the release (or were advised not to bother) does not excuse you from the obligation.
Duress? You also imply duress -- that you were pressured to sign. In a sense you describe a form of economic duress. That is, you'd lose your livelihood if you objected. But to prevail on a "duress" argument under contract law, you would  likely need more evidence of physical or mental coercion to demonstrate that your consent was not voluntary.
Consideration. As for additional consideration to sign the agreement, that's a tough call and may depend on your state law. In some states, such as Pennsylvania,  additional consideration by at-will employees may be required for certain agreements. In other states, like Wyoming, Colorado, and Ohio, it may not be required for contracts that establish non-competes (that is, keeping your job is sufficient consideration). (We're also not sure how much of this legal minutiae matters as we're assuming you don't want to take this matter to court.)
You're so pretty. We find your boss's comments about your appearance, such as "you're so pretty," as troubling but by itself, not enough to form the basis for a lawsuit.
For more information on using employee photos in social media, you may want to check out this blog post by one of our favorite employment law experts.

Monday, March 2, 2015

Quoting Dialogue From Raising Arizona in Novel

Dear Rich: I'm self-publishing my novel and I'm trying to track down Circle Films for permission to use four lines from "Raising Arizona." (I did get permission from the Cather Foundation to quote "My Antonia.")  The problem is, I can't even find a website for Circle Films. 
You might be able to find Circle Films information by signing on for an PRO subscription which offers contact information for producers and studios (the first month is free). Alternatively, you might try contacting producer Ben Barenholtz who apparently was the owner of Circle Films.
Why bother? After reviewing your use -- two characters talking about the film and quoting four lines of dialogue -- we don't believe permission is required. Yours is a classic example of fair use because you are using a small amount of copyrighted material for a limited and “transformative” purpose, something that authors who comment on pop culture (for example Elmore Leonard -- scroll down to "Spark") commonly do. Alternatively, you've taken so little from the movie it might qualify as a de minimis taking -- one that is so trivial that it shouldn't matter.

Wednesday, February 25, 2015

Do We Need Formal Contract for Private School Permission?

Dear Rich: I work for a fully online private school and am seeking permission to use images, videos, and links within the course. Do I need to have a formal contract with a signature confirming that permission is granted to use the item, or is it enough to have an email response saying that they grant permission for our suggested use? 
The copyright law says that you need a writing signed by the copyright owner or his or her agent to transfer or license any of a copyright owner's rights. The signature can be handwritten or it can be a digital or electronic signature. If the email contains permission and is "signed" by the person who has authority to grant rights, your collection of emails is probably fine for permission purposes.

Monday, February 23, 2015

Can I Make "Night of the Living Dead" Action Figures?

Dear Rich: Night of the Living Dead (the original film by George A Romero) is in the public domain. However someone trademarked Night of the Living Dead for action figures. If I wanted to manufacture action figures from the movie, would I be violating trademark law or would I be allowed to because the source material is public domain? Could I bypass it by calling the line "George A Romero's Night of the Living Dead"? Or "They're Coming to get you Barbara" with the tag line as Night of the Living Dead? Or am I just opening a can of worms not worth opening?  Normally you would need two permissions to sell movie action figures: permission from the copyright owner of the movie; and permission from the actor (referred to as publicity rights). Because Night of the Living Dead is public domain, there is no copyright owner from whom you'll need permission. However, you would need permission from the actors and it appears as if Sphereworx, (the company that has registered the trademark) has already acquired permission from the four actors used in their initial action figure release. So, besides the trademark issues (discussed below), you already face some major obstacles getting consent from the actors.
Using trademarks to protect public domain works. 100 years ago, the Supreme Court held that the title of a public domain book -- Webster's Dictionary -- also fell into the public domain and could not be protected by trademark law. The Ninth Circuit reaffirmed this rule in a case involving the John Wayne movie, McLintock. However, these cases involve someone claiming trademark rights in a book title for a competing book and a movie title for a competing movie. The rules are different if a public domain movie title is used for non-movie goods or services -- for example, It's a Wonderful Life is a registered trademark for lottery services. We can't predict the outcome of a case in which a public domain movie title is used to prohibit others from selling character merchandise ... but we doubt you want to pay to find out.
P.S. Speaking of salvaging from the PD, even Night of the Living Dead spawned a copyrightable slogan, "When there is no room in hell … the dead will walk the earth” (Dawn Associates v. Links, 203 U.S.P.Q. 831 (N.D. Ill. 1978)

Monday, February 16, 2015

Pre-roll Ads and Publicity Rights

Dear Rich: Our company posts news interviews online. Does the fact that we're using pre-roll ads require us to get waivers from our interview subjects? 
Whether you need to obtain a waiver/release depends on why you want to use a person’s name or image. If your use is for commercial purposes—for example, using the interview as part of an informercial—you need to obtain a release. If your use is for editorial purposes such as a news interview, you probably don't need a release. We don't think a pre-roll -- those 10 second ads before YouTube videos -- converts a news interview into a commercial purpose (any more than running an ad before a 60 Minutes segment). No court has ruled on the issue and if you’re concerned about liability, you can always talk to the person ahead of time — and video the subject's consent. We've written more about interviews and releases here.

Friday, February 13, 2015

Can We Copy Textbook Chapters?

Dear Rich: The Vice President of Academic Affairs of the two-year state technical college I work at told all Program Chairs it was ok to copy and attach "a chapter or two" of their course's textbook and attach it to their learning management system (ANGEL) "if students are having difficulty obtaining a textbook." Is this justification, or action, permitted under the educational fair use of copyrighted materials? As a result, some faculty are copying many chapters of a given textbook and posting to the LMS. Do you have any specific examples, or documented cases, where this type of justification (students do not have access to a textbook due to bookstore shortages or late distribution of financial aid awards) that is permissible? Permission must be obtained from the copyright owners of the textbooks for the type of wholesale copying you’re describing. It sounds like your college is, in essence, creating digital coursepacks. This is not a fair use. Educational fair use guidelines established by publishers and the academic community do allow some limited copying by teachers for classroom use. But these guidelines do not permit the copying of multiple book chapters you’re describing. You can read more about them in Copyright Office Circular 21. Answered by Stephen Fishman, author of The Copyright Handbook: What Every Writer Needs to Know

Wednesday, February 11, 2015

Who Owns Gameplay in Video Game?

Dear Rich: If I screen capture while playing a video game like Call of Duty, who owns that? I know I don't own any rights to the video game itself but can I stop someone else from copying or showing my screen cap of how I played the game? 
In order for you to stop someone, you have to be able to demonstrate you have some proprietary rights in what was captured on screen. We doubt whether your gameplay -- absent any additional content -- amounts to copyrightable authorship. The issue first came up in 1983 when the Seventh Circuit Court of Appeals held (in a dispute over an unauthorized chip board) that just because the Pac Man game had an interactive multiple choice storyline did not move the copyright from the manufacturer to the player. In other words, the user "plays" the game; the user doesn't create content (although there may be an exception in the case of custom-created avatars or similar modifications). By analogy, courts have held that participants in sporting events -- no matter how accomplished, graceful, or skilled -- cannot claim copyright in their play or in specific moves they make. (See National Basketball Association v. Motorola). If this isn't what you wanted to hear, keep in mind that there some who believe games should not be protected by copyright at all!

Monday, February 9, 2015

Wants to Claim Copyright and Sell Public Domain Photos

2014 Winner of Best Public Domain Gif
Animal Category
Dear Rich: I have a souvenir photo book (images of public buildings, gardens, outdoor scenes) which I purchased over 30 years ago. It was published prior to 1923 (now part of the public domain, as I understand it). The book has no printed credits or copyrights, no info on who photographed the images or published the book. An Internet search has turned up one other copy of this book – it is in a USA university collection. The pages have been scanned and included in the university library’s digital collection; they have assigned a copyright to their scanned images; the digital images are available for purchase through the university. I would like to scan my copy of this book and use the images in artistic works and derivatives to sell, as well as offer the scanned digital images for sale. Would I be within my legal rights to copyright my scanned images from this book and use/sell them?
You can scan, copy and sell the images in the book but you could not claim a copyright. Because this book was published before 1923, it is in the public domain in the United States (however, it could still be under copyright in other countries). An exact digital scan of a public domain book is not copyrightable, just as a Xerox copy of a book is not copyrightable—both lack sufficient creativity to qualify for copyright protection. You are free to make a scan of your copy of the book and sell or otherwise make use of it. The university’s copyright claim in the scan they made is spurious. Unfortunately, false copyright claims like this are made all the time. Answered by Stephen Fishman, author of The Public Domain.

Wednesday, February 4, 2015

Do Progressive Downloads Infringe Copyright?

Dear Rich: There are plenty of websites that provide pirated streaming tv shows and movies. These videos are not live streams, but they are known as "progressive" downloads. My question is: Are the viewers of these streams violating copyright law? And if they are, have content owners gone after the viewers who watch the pirated streams of movies and shows? Has the U.S. government criminally prosecuted viewers for just watching?
As the name "progressive download,"suggests, a media file is downloaded progressively so you can begin watching it once a substantial portion has been stored on your device. Though there are differences between streaming and progressive downloading -- you can't fast forward through a video segment until that segment has been progressively downloaded -- most consumers consider progressive downloading as a form of streaming.
Will they hunt me down? Legal arguments have been offered that unauthorized progressive downloads may not constitute infringement (or that they qualify as a fair use because of their temporal nature). We haven't located any federal caselaw that specifically states streaming or progressive downloads constitute an infringement but we believe that the verdict in federal courts will be infringement. As for getting hassled, the trend is away from pursuing end users. Federal government prosecution is fairly rare and a 2011 bill to make illegal streaming a felony failed to pass (though the content owners keep trying).

Monday, February 2, 2015

Can We Repost Super Bowl Ad?

Gerald Ford at Univ. of Michigan (1933)
Dear Rich: Are we allowed to take a Super Bowl commercial from YouTube, add comments on the screen and then publish it on our website? 
If you’re copying and reproducing the ad without authorization it’s an infringement.  Of course, there's always the "Can we get away with this?" approach. That is, how likely is it that the advertiser will clamp down on reproductions especially when the whole point of making the ad is to maximize exposure?
Fair use. Alternatively, if the advertiser complained, you might be able to succeed with a fair use argument. That is, you’re using the ad for purposes of commentary. Alas, that would be an argument you’d have to make in court and we doubt you want to do that.
Ask for permission. If your comments are  unfavorable and you're concerned about a backlash, or if your website is on the prudent side (and worried about liability), ask for permission. Many super bowl advertisers are happy to say "okay" so you may be able to obtain authorization from the owner (either the ad agency or the advertiser). And, of course, be careful when you use the special words "Super Bowl."
P.S. Your other legal questions about the big game are all answered here!

Friday, January 30, 2015

Reading Passages of Classic Literature in Movie

Dear Rich: There is a scene in the feature film I am currently making where a character turns on the radio and listens to the host read a small passage from classic literature (something like Romeo and Juliet). Would there be any copyright issues? 
Everything published in the United States before 1923 is in the public domain in the United States. Everything created by authors who died more than 70 years ago is in the public domain in almost every country other than the United States. Thus, classic works of literature like the complete works of William Shakespeare are in the public domain throughout the world (as well as 80,000 Shakespearean illustrations). When a work enters the public domain you are free to use it any way you want without obtaining permission from anyone. This means you are free to read from Romeo and Juliet or any other work of Shakespeare (or any author published before 1923 in the U.S.) in your film. Answered by Stephen Fishman, author of The Public Domain.

Wednesday, January 28, 2015

Can I Make Audiobooks for Private Use?

Dear Rich: Is it legal to borrow a book from my local library, make my own homemade audiobook, return the book afterwards, and keep the audio files I produced? I only want to make audiobooks for my own personal research and study, but I don't know if this breaks some copyright about making unauthorized copies. These audiobooks are just for my private research. Yes, you're likely violating copyright law; only the copyright owner can create derivative versions. But if you're the only one listening to them and you're not distributing copies, we doubt whether the copyright owners will know or care about your use. It's our little secret!

Monday, January 26, 2015

Nonprofit Wants to Translate Screenplay

Dear Rich: I'm the director of a small amateur nonprofit theatre company that puts on plays in Italian. We're planning our next production, and we want to adapt a movie screenplay into a stage play. This would involve translating the screenplay into Italian and adapting for the stage. Do we need to obtain permission to do this or would this adaptation by a nonprofit be a fair use? 
The copyright laws apply to nonprofits the same way they do to for-profit enterprises. When a person creates a work like a screenplay, he or she automatically obtains a bundle of exclusive copyright rights in the work. These include the exclusive right to adapt the work into a new medium or translate it into a new language. Thus, you can’t adapt a screenplay into a stage play or translate it into Italian without obtaining permission from the copyright owner. The fair use rule does not apply to the adaptation of an entire work into a new medium. Answered by Stephen Fishman, author of The Copyright Handbook.

Friday, January 23, 2015

Wants to Control Use of Video and Photos of Workshops

Dear Rich: I work for an environmental non-profit and I have a question about how to handle photos and videos at our workshops. While presenting to schools, or out in the community we sometimes have people video tape our presentation or shoot photos of our step to step instructions. If people are using the images or video for their personal use then we are ok with that, or if they have a blog and they want to post what they learned then that’s great, we could use the exposure!!! What we don’t want if people filming our workshops and then using that video to educate others, same with the photos. How can we protect ourselves from that happening? Is there some language we can include in our registration forms or we announce at the beginning of a workshop? Yes, you can put language in the registration form that permits recording for certain uses. That form should be executed at the time the user signs up for the workshop. (Alternatively, it can be executed after the user signs up, provided the user can get a full refund if he or she doesn't want to sign.) Use plain English to explain what is permitted and what is not -- for example, "Workshop grants a limited license to users to videotape the presentation solely for personal use and users may not share, duplicate or present the videotape to others." Like any contract, this limited license agreement is only as effective as in your ability to enforce it --  that is, to find violators and pursue them for breach of the license.

Wednesday, January 21, 2015

Can I Make a 90's Blog Using TV Images?

Dear Rich: I've recently created a 90's blog, where I would basically like to make posts with reviews and commentary about various things from the 90's (TV shows, music, video games, etc). I'm wondering...would it be considered "fair use" if I use a picture based on what I'm posting about? For example, if I'm reviewing a TV show, I would have a picture from the show in the post, if I'm giving my thoughts on an album, I would have a picture of that particular album in the post. Based on things that I've read on your website, I don't think that I would be in violation of any copyright laws, being that I'm only using a picture as part of what I'm reviewing. But, also based on what I've read, this seems like a very gray area that gets very confusing. I just wanted to get your opinion. Side note - I'm signed up on Google Adsense and Amazon Associates, so in theory, if my blog ever becomes huge, I could probably make money off of it (I'm not sure if that factors into anything). Although, with Amazon Associates, I would most likely just be promoting what I was reviewing anyway. 
The fair use privilege allows the public to make limited use of copyrighted works without obtaining permission from the copyright owners. One of the reasons for fair use is to encourage criticism and comment on copyrighted works. Quoting or excerpting a work in a review is a classic example of a fair use. Including a picture of a work you’re reviewing is also a good example of a fair use—this is done all the time in reviews. So long as you don’t use any more of the works involved than is necessary for your reviews, your intended use of works from the 1990s in your blog should qualify as a fair use. That said, not every copyright owner understands or agrees with the fair use rule, and some may complain even though your use is allowed by the copyright law.
Answered by Stephen Fishman, author of The Copyright Handbook.

Monday, January 19, 2015

Does Netflix TOS Trump Copyright Law?

Dear Rich: You’ve written that classroom use of Netflix might get a copyright pass but I have a question about that section of the copyright law ( Section 110). The Netflix TOS reads: "The Netflix service, and any content viewed through our service, are for your personal and non-commercial use only. During your Netflix membership, we grant you a limited, non-exclusive, non-transferable, license to access the Netflix service and view movies and TV shows through the service on a streaming-only basis for that purpose. Except for the foregoing limited license, no right, title or interest shall be transferred to you. You agree not to use the service for public performances."Wouldn’t the Netflix terms of service trump the exemption based on the idea that the acquisition for a non-private/personal purpose is illegal thereby nullifying the exemption?
It's true that Terms of Service (TOS) and End User License Agreements (EULAs), if properly executed, are considered legally enforceable and can force copyright law to the curb. But we can't say for sure how it would play out as no court appears to have addressed whether a license can defeat the educational exemption in Section 110. More importantly, the reader noted that when he contacted Netflix, they readily agreed with his educational use. That makes good legal and public relations sense. No company wants a Macarena on their hands!

Friday, January 16, 2015

Can I Video My Dedication to Public Domain?

Dear Rich: I was curious whether or not an author can declare their work as being in the public domain verbally, like say on video, as opposed to something documented and signed on paper? Does a persons verbal statements (on video or simply witnessed) hold the same legal standing as those on paper, if even at all with regard to declaring a piece of work... photo, story, video, painting, etc. as being remanded to the public domain?
Courts have held that a copyright owner may dedicate a work to the public domain simply by manifesting the intent to do so through an overt act. A signed document is not absolutely required. Thus, including a statement in a video that the work is dedicated to the public domain would likely be sufficient. However, to avoid possible disputes and misunderstandings, it is always best for the copyright owner to sign a document dedicating the work involved to the public domain. Such a document need not be long or fancy. The Copyright Office says that it need only:
  • identify the work involved--preferably including the author(s), title(s), and registration number(s) for the work (if any) 
  • provide the copyright owner’s full name and state that such person is the current owner of the copyright in the work 
  • state “I the copyright owner of this work, hereby release it into the public domain,” and 
  • be signed by the copyright owner or co-owners or by an authorized representative.
Answered by Steve Fishman, author of The Public Domain.