Wednesday, June 24, 2015

Can I Stop App Maker From Using My eBook Title?

Dear Rich: I recently discovered that a new Apple app is using my exact common law trademark -- a phrase associated with my former profession. Through Apple, I contacted the app designer, who said she registered the trademark with the USPTO and it was tough luck for me. Since February 2013, I have used my trademark for the title of my copyrighted eBook, which is available globally on Apple, Amazon, Barnes and Noble, Kobo and Smashwords. Since that date, any cursory internet search for those keywords would reveal my eBook, my website and my personal contact information. How can I regain control of my common law trademark? I used the trademark first, the app trademark is identical, both are used for digital products and both are available in the Apple store (and appear in close proximity in online searches).
Sorry to deliver the bad news but if you've only used the phrase in connection with a single book title, you probably have not acquired any common law trademark rights. As the USPTO puts it, "the title of a single book cannot serve as a source identifier," and as we've indicated previously, only a book title used as part of a series is registrable as a trademark. There may be exceptions for blockbuster books but you would be in a better position to chase the app developer if you offered other goods or services with the phrase.
The app developer's trademark registration. Looking at the USPTO trademark records, it appears as if the app developer's statement that she registered the trademark may not be completely accurate. Although the examiner has approved the mark, there seem to be two steps remaining in the registration process: (1) publication of the mark on the Principal Register (which is supposed to occur on July 7, 2015); and (2) the app developer must submit evidence that the mark is being used in commerce (the developer filed an intent to use or "1B" application). That leaves two possibilities. First, you can file a notice of opposition following publication. We don't think you have sufficient basis to do that but you would be best served by seeking out a trademark attorney for guidance. Alternatively, the registration may not be granted if the app developer fails to file a Statement of Use  (or seek an extension) within six months of the Notice of Allowance (The USPTO explains these procedures.)
Copyright claims? If the app developer is taking more than the title from your eBook, you may be able to frame the dispute as copyright infringement.

Monday, June 22, 2015

Wants to Use Recycling Logo As Part of Trademark

Dear Rich: I started a small comic book publishing company called Disposable Fiction Comics, LLC. We are using the recycling logo as part of our logo. I know that the recycle logo is part of public domain, but I was considering trademarking it, but I started realizing that may not be possible as it would make it private property. 
The classic recycling logo -- three bent arrows in a triangle shape --has been used in many variations in dozens of registered trademarks from recycled fabrics to recycled metals to cement to photocopier cartridges to edible marijuana seeds. It even has its own design code at the USPTO (24.17.19 - Recycling symbol) which can be used when searching the USPTO trademark database.
How the USPTO handles the recycling symbol. The USPTO treats the recycling symbol as a "universal symbol"which is "any design, icon, or image that conveys a widely recognized or readily understood meaning. The USPTO advises examiners (Note: Word document download) that a mark using a universal symbol is registrable if it:
"... is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed."
In light of the registered marks, we believe that your use of the recycling symbol meets the standards described above. Hopefully, if there are no other impediments (for example, prior users in the same field of goods or services) or other registration issues, you should be cleared for takeoff.
None of our business dept. In light of the universally recognized meaning of the recycling symbol -- to designate recyclable materials -- isn't there a disconnect when you combine it with a word like "disposable" ("something designed to be thrown away after use")? Our re-branding suggestion is attached.

Wednesday, June 17, 2015

Making an NDA With Someone in Remote Location

Dear Rich: Can you advise me as to the best process for arranging a non disclosure agreement with a party in a remote location? Can the agreement be signed and attached in an email? Would this be sufficient or is an original necessary?
Thanks to the federal e-signature law, contracts that are signed and executed electronically are as valid and enforceable as paper contracts. All you need to do is email it to the remote party who emails it back with an electronic signature. People use different types of e-signatures, including typing the signer's name into the signature area, pasting in a scanned version of the signer's signature, clicking an "I accept" button, typing in the name between forward slashes, or using cryptographic "scrambling" technology.
Jurisdiction: Where does the remote party reside? Always keep in mind that enforcing the agreement -- that is, keeping your secrets a secret -- requires a lawsuit. If you are suing an American worker -- even one temporarily at a remote location outside U.S. borders -- you're okay because U.S. courts have jurisdiction over those who reside in the U.S. But if the NDA is with a foreign national or a foreign company with insufficient ties to the U.S., you may have difficulty enforcing your agreement, especially if you must sue in a foreign country. It may help to include an injunctive relief provision and a foreign arbitration provision.

Monday, June 15, 2015

How Do I Register Revised Version of Previously Published Book?

early print-on-demand system
Dear Rich: Some years ago, I wrote a novel. I briefly offered it through a print-on-demand service, but only a very few copies were actually printed before I thought better of it and all of those copies went to me or close friends. The work was not registered with the Copyright Office at that time. Since withdrawing the book from the P-O-D service, I've made various revisions to the text, fixing some errors, refining dialogue, and so forth. I am now interested in registering the work, but because of the short-lived print edition, I'm not sure how I need to approach it. Am I obligated to submit the version published, noting the date, and then file a separate continuation with the revision? Is there a way to simply submit the current version and note that a previous, unregistered edition was published? (The current version is still close enough to the previous one to be immediately identifiable as a different draft of the same thing.) Yes, you can register the most current version but you might be better served by registering the earlier P.O.D. version assuming there are no major changes -- new characters, new plot line -- in the revision. Here's the skinny:
Do you need to register at all? Start with the principle that both versions are protected under copyright law and registration is not required to obtain rights. Registration is encouraged because it provides some benefits most of which are important if you must sue someone. Because few people have seen the P.O.D. version and nobody has yet to see your new version, you may not need to be concerned with infringement ... that is, until you distribute your revised version. 
If you do register ... The Copyright Office views your revised work as a derivative of the P.O.D. work and therefore your registration is intended to provide protection for your modifications. When you complete the limitations section of your application, you would fill it out as shown below:
Assuming the P.O.D. version is close to the revision, we would recommend registering the P.O.D. now. Later, when you are ready to publish the revised version, register that one as well, including the information shown above, as well as previous registration number and year of registration. Keep in mind that you can use your P.O.D. registration to stop someone who rips off your revised version (even if the revised version is not registered) because only the copyright owner (you) would have the right to make derivatives.
By the way dept. You would not file a "continuation." We think you're applying the patent definition of that term.  Under copyright law a continuation sheet is used to provide additional information that doesn't fit within the original paper application.

Wednesday, June 10, 2015

Can I Write Fiction Using Patented Inventions and Copyrighted Architecture?

Dear Rich: To what extent do writers of prose editorial works (whether fiction or nonfiction) need to worry about patents and architectural copyrights? Can I write a novel in which characters use or discuss some invention or technology that is covered under a current patent? Is a fiction or nonfiction description of a work of copyrighted architecture an infringement of that copyright? For example, if I write a (fictional) novel containing scenes that take place in a building subject to architectural copyright and that include narrative descriptions of relevant design features and layout (e.g., the rooms through which characters run during a chase scene), does that infringe the architectural copyright? Does it make a difference if the building is a public? 
Write away! It's highly unlikely that you'll get hassled for writing about about patents or architectural works.
Patents. Patent infringement occurs when you make, use, or sell a patented invention without authorization ... not from writing about a patent. Keep in mind, a patent is not a secret; it's published for all to see. Even quoting from patents won't get you in trouble. As the USPTO states at its website: "Subject to limited exceptions ... the text and drawings of a patent are typically not subject to copyright restrictions." That said, you could get hassled for reproducing a patent drawing. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings.
Architectural works.  Infringement of an architectural copyright occurs when someone copies "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings."Architects have many modes of expressions but we're hard pressed to imagine an architectural rendering solely in words. Writing about an architectural work would not infringe the work, anymore than writing about a Warhol silkscreen, a Robert Frank photo, or any other visual work.

Monday, June 8, 2015

Can I Score a Movie Using Existing TV Themes?

Dear Rich: While scoring a movie I've been asked to use two existing TV themes. Is this even doable? Do I need a music lawyer? Anything is doable in the world of music licensing. Assuming the owners of the TV themes are open to licensing the rights, the major factors affecting the licensing price will be the type of film -- indie, documentary, studio feature (in other words, your budget), whether the song will be included on a soundtrack recording, whether you will recreate the theme (or use an existing recording), the length of use and where it is placed within the movie (for example, over opening or closing credits), and whether the theme will be used in advertising for the movie.
Do you need a lawyer? A lawyer's advice can be helpful, particularly if you must furnish the licensing agreements. But it may not be as essential if someone in the production has experience with these types of negotiations (and the TV theme owners are furnishing the agreements). You may find it more cost effective to deal with a music licensing agent, an expert in music licensing and clearance, instead of an attorney. These agents are familiar with the necessary rights and agreements and can negotiate terms that may be most favorable for your movie. Type "music clearance expert" into your search engine.
Theme music trivia: Director Robert Altman's 14-year old son earned a million dollars in royalties for writing the lyrics to the movie music (and TV theme) for "M*A*S*H. Altman earned $70,000 for directing the movie.

Wednesday, June 3, 2015

Can I Say "Life is Good" on Zazzle Products?

Dear Rich: Could someone register a phrase as a brand name and not let anyone else use that phrase? For example: I created a design using the words "Life is good when the fish are biting." I posted it on  and a couple days later they took it down saying I may be infringing on someone's intellectual property. I asked who it was and what proof did they have. They gave me this website address: I thought the words "life is good" was in the public domain and no-one could own those words and/or prevent others from using that phrase in a sentence. Can they do that or are they trying to bluff me?
We don't think they're trying to bluff you. You can freely use "life is good" in a song lyric, or as the title of your book or for other copyright purposes, but you'll run into problems using it for trademark purposes on merchandise like t-shirts, hats or ceramic cups.
How two brothers cornered the "life is good" marketplace. Life is very good for the two brothers who own Life is Good (LIG), a Boston-based t-shirt and licensing company. The brothers were struggling t-shirt manufacturers until they stumbled on their bright-sided branding mantra. Nowadays LIG generates $100 million stamping their optimistic message on greeting cards, coffee, pet supplies, frisbees, cups, musical festivals, and a whole bunch of other products and services desired by an ever-hopeful ever-consuming world. Along with this licensing and expansion, LIG has made a serious investment at the U.S. Patent and Trademark Office where LIG registrations have been issued in dozens of classes of goods including backpacks, dog leashes, luggage, bed blankets and towels, children's and baby clothing, toys, etc.
Bottom line department. Other companies have acquired trademark registrations for "Life is Good" (and its variations) for products or services not exploited by LIG. Further, you may even be able to prevail in a dispute by demonstrating that consumers are not confused -- that is, your phrase is distinguishable. But practically, we think LIG has the legal firepower (and legal presumptions) on its side. Keep in mind, that LIG has even become embroiled in disputes with people manufacturing "Life is nutz," "Life sucks" and "Life is gay." As much as we hate to see the English language cordoned off by manufacturers, we think you should consider moving on to another line.

Monday, June 1, 2015

Do I Need Model Release for Khmer Rouge Documentary?

Dear Rich: I shot an on-the-open-road documentary revolving around the killing fields of Cambodia and interviewed many people along the way about their experiences with the Khmer Rouge. I thought I was covered under the journalistic news banner and did not need model releases but now more than a few people are telling me I screwed up and will either get sued or won't get E and O insurance and then no outlet to carry my show. What do you think? By signing a typical release, the subject consents to participate in your documentary and waives the right to sue over claims such as defamation, invasion of privacy, and right of publicity. A release doesn't always shield a documentarian from a lawsuit, but it's a strong defense, and it may be required by your insurer, distributor, or exhibitor.
Releases. A release doesn't have to be in writing. Video releases -- in which the subject is video recorded agreeing to the terms of a release -- are also enforceable. A consent to participate may also be implied. In Clearance and Copyright: Everything You Need to Know for Film and Television, attorney Michael Donaldson writes how Lily Tomlin sued documentarian Nick Broomfield to stop distribution of his documentary about her one-person show. One of her grounds was that she and the people around her, never signed a release. The trial court ruled that neither Tomlin or the other participants ever objected to Broomfield's cameras, a failure that prevented later objection to their participation in the film.
Bottom line dept. If you can afford the attorney fees we would suggest consulting with an attorney knowledgeable about film clearance.

Thursday, May 28, 2015

Notarizing Trademark Instead of Registration

Dear Rich: I may be interested in securing trademark rights for a blog some time in the future, but I'm reluctant to pay for a trademark registration which may prove to be unnecessary. If I got a notary to print and then notarize a screen shot from her computer, could that document be used to support a trademark application at a later time? If this is a valid approach, what are the pros and cons, and do you have any advice about what the format and content of the document should be?
We suggest you abandon your notary plans. First,  a U.S. notary won't notarize a screen shot; notaries identify and screen people who sign important documents. Even if you prepare a document containing the trademark image and a statement about how you created it and you sign it, you'll still be wasting your money. Trademark rights are acquired by being the first to use the mark in commerce, not by being the first to create the mark. In any case, the USPTO makes you sign an oath as to the accuracy of the information in the application.

Tuesday, May 26, 2015

Amazon Seller Counter-Notice

Dear Rich: I am an Amazon seller and received a notice that I was infringing another seller’s rights and that my seller page had been taken down. I’m pretty sure this was a bogus strategy done by one of my competitors. I have rights to sell and post what I’m selling. My attempts at contacting Amazon have been useless because they just send the same email back. 
We're not sure whether the notice you received constitutes a DMCA takedown notice but to hedge your bets, we would suggest sending a DMCA counter notice to the seller performance team (even if you don't think it will do anything) and send a copy to At least you will have it on file with them in the event that this is part of a DMCA procedure. You must be sure of what you're claiming in the takedown notice because you're making this statement under penalty of perjury. You can read more about counter-notices, here.
If the counter-notice doesn't work ...  If that doesn’t work, and Amazon isn't responding in a meaningful way, you can try moving up the food chain and sending letters and emails to Amazon’s legal department ( Legal Department, P.O. Box 81226, Seattle, WA 98108). If that doesn't get a response, you can file for arbitration under Amazon’s participation agreement.  This is a last resort, of course, and there are risks because if you lose and the arbitrator determines your claims are frivolous, you will have to pay Amazon's legal fees and costs resulting from arbitration.

Counter Notice 

Material that was removed: (describe Amazon advertising material taken down)
Location of where the material was located (URL): (list the URL for your Amazon seller page)

This letter is a formal response to a claim of rights infringement against material that I uploaded to Amazon. Please consider it as a DMCA counter notification as defined in 17 USC 512(g)(3).
I believe the claims of rights infringement are inaccurate and should be rejected for the following reasons: I either own all rights in the material posted or I have acquired permission from the rights holder. Further, I do not believe that the complainant has provided any credible claim of rights. All of my attempts to reach the complainant have been futile. In summary, any allegations of rights violation are unsupported.
I declare under penalty of perjury that I have a good faith belief that the complaint of rights infringement is either based on mistaken information or is an intentional misuse of the law (and violation of the Amazon Participation Agreement).
I ask that Amazon restore the material in dispute unless the complainant files suit against me within ten (10) days, pursuant to 17 USC(g)(2)(b). I further consent to the jurisdiction of federal district court for the judicial district in which I reside. I agree to accept service of process from the complainant.
Sincerely [Electronic of actual signature]
Full Name: (provide name)
Address: Phone Number: (provide address and phone number)

Wednesday, May 20, 2015

Band Wants to Add New Members

Dear Rich: I'm in a band that has an incomplete lineup at the moment. Right now it is just 3 of us (2 guitar players, 1 drummer). We have a good handful of songs fully written and arranged. In the meantime, we are still looking for more people to join. How would it work if we go about copyrighting our music now just to get out there as a trio? I know when you file a copyright, you can always add to it later but is there a way to make the three of us principal songwriters and have the rest of the band (once it's completed) still get credit for the music later on?
Copyright is automatic so once your trio creates a song (song copyrights) or records an album (sound recording copyright) the three members are all co-authors and co-owners by default (assuming that all three contributed to each effort). If you filed copyright applications for either the songs or the sound recordings, you would list the three contributors as the "authors."
When you add a fourth member ... You should not revise an existing registration (or file a new one)  unless the new member modifies one of your existing songs or recordings -- for example, a bass player helps you modify an existing tune by composing a new chorus and bridge. You can always share revenue from existing copyrights with new members -- for example paying them song royalties for songs written before they joined the band but that doesn't require modifying the copyright information for existing copyrights. We recommend that you create a band partnership agreement to best deal with adding new members (and we explain how do that in our Music Law book).

Monday, May 18, 2015

What Do I Write to Prevent Infringement?

Dear Rich: I read your post on How Do I Word a Copyright Disclaimer for YouTube? How about if I am the copyright owner? What should I write to prevent somebody from infringing on my content? 
If you want to post a warning, something similar to the following would be standard:
"© 2015 [Name of Copyright Owner] This work is protected by copyright and you may not copy, distribute, or modify it. Failure to comply exposes you to legal action for copyright infringement."
If you want to give your warning a more dramatic vibe, you're also free to download and post the FBI's badge-like warning.
However, don't expect these warning to be much of a deterrent. As the RIAA and MPAA are already aware, copyright warnings have negligible effect on content piracy (just as alcohol and tobacco warnings have little effect on drinking and smoking).

Be Prepared. We think it's more important to be prepared for copyright infringement than to warn against it.  For example, registering your work can provide benefits if you must chase an infringer (and the certificate of registration adds some gravitas to your cease and desist letters). You should also learn how to police for infringements -- for example, for free you can create a Google alert or a Google reverse image search. And of course, include your copyright notice (© [Year] [Name]) whenever possible.

Wednesday, May 13, 2015

Who Do I Have to Sue to Get a Cup of Coffee?

Dear Rich: The Keurig company sells coffee brewers equipped with DRM technology. The next model will discontinue the DRM as Keurig cited poor sales and consumer complaints. Another coffee company has been selling a little plastic device that allows consumers to circumvent Keurig. Are these devices grounds for a lawsuit?
Digital rights management systems (DRMs) may be used to limit access to Java®, but we don't think they'll work for java. For legal and customer relations reasons, we don't think Keurig will pursue those who circumvent their technology.
Keurig's system. Keurig's coffee machines won't make coffee if a non-authorized coffee-filled pod is inserted (unless consumers jerry-rig a workaround). As a result of declining sales, Keurig is reintroducing its re-useable pods (permitting users to choose their own brew) but it's not clear whether Keurig will ditch its scanner/DRM entirely.
Is Keurig's system a DRM? DRM (or digital rights management) refers to methods for restricting post-sale usage of (or access to) a copyrighted work such as music at the iTunes store or books sold via Kindle. Cracking, reproducing, or tampering with DRM technologies violates the Digital Millennium Copyright Act (DMCA). This all works out well for movie studios seeking to protect copyrightable content but not so well for manufacturers seeking to limit access to non copyrightable works like garage door openers and printers (and we assume coffeemakers). As one commentator put it:
In cases involving manufactured products, where the products are part of an interoperable system, courts have found that DRM controls must be closely linked to the underlying copyright interest in order to have DMCA protection. 
So, we don't think Keurig will have much luck claiming a DMCA violation. In addition, the DRM-ing of coffee makers may also lead to antitrust problems.
P.S. #1 The Keurig consumer fiasco is part of a growing consumer rebellion (sometimes known as the "right to repair" movement) involving farmerscar customizers and other angry consumers blocked by software from modifying and fixing products.
P.S. We're going to assume the last sentence of your question was either an unintended pun or the product of an over-caffeinated mind.

Monday, May 11, 2015

Corporate Use of Lego Star Wars

Dear Rich: I make many presentations for internal company use on topics in the range of safety, health and quality. I wanted to start taking photos of Lego Star Wars figures in different poses and staging for some of my slides. Would this be a Lucas Films or Disney infringement on the Star Wars characters? I would not be selling the presentations and they would remain in house. I would, however, be printing slides in the form of a handbook for use within the company and would therefore have the Star Wars lego characters displayed. I will also be presenting at a national trade show in the future. Would the use of the Star Wars Lego figures change in any regard assuming it was ok for internal company use? In other words, now that the presentation would have a larger audience, would that be infringing on the star wars brand? Does any of this change if I use a more generic Lego figure like a fire fighter or construction worker?
We preface this by saying that there's a big difference between the uses you describe for corporate purposes than if the characters were used for personal creative purposes -- for example, for a few YouTube episodes. The Lego Group and Disney are more likely to tolerate personal uses than corporate uses because corporate borrowing may imply association or endorsement, and because corporations are solid targets with bigger pockets. In general, we think:

  • your internal uses on slide presentations are infringing but may go unnoticed by lawyers for the Lego Group and Disney, 
  • your national trade show presentation is more likely to be noticed, 
  • your use of the handbook, if discovered, could add to legal problems for your company, and
  • use of non-Stars Wars Lego characters, if discovered by the the Lego Group, would likely lead to the same problems.

You've been warned. If any of the uses are discovered -- for example, a disgruntled employee or a competitor reports you to the Lego Group -- you'll likely be liable for copyright and trademark infringement. As the Lego Group explains succinctly here, and in their downloadable Fair Play Brochure (the link can be found on this page):
Time and again, we see our products and trademarks used in the marketing of totally unrelated products and services, giving the impression that the Lego Group is somehow involved in or associated with such business activities or services, with which we are not actually involved. When used in these unrelated settings, be it in printed material or on the internet, the value of our trademarks may be diminished and the identities of our company, our products and our trademarks can lose their distinctiveness.
These statements don't have the force of law but you get the picture. You don't want cease and desist letters showing up in the mailroom. It's best to either obtain permission or find another method of making your point.
P.S. If this seems daunting, keep in mind that even the makers of The Lego Movie had trouble getting permission.

Wednesday, May 6, 2015

Interactive Streaming Plus Singer Imitation

Dear Rich: I need to find out how to internet-post my own recording (cover) of some songs by a well-known Canadian singer/songwriter. There is a wrinkle. I have the ability to imitate the style of the original artist fairly closely. Not an exact duplicate, of course, but done "in the style of" the artist. I would like to find out how this would affect the permission-seeking process and if there is something special about this kind of request. My plan is to: record a capella versions of the songs; post them on a Tumblr blog with a suitable still-photo. I'm not planning to charge anyone who wants to listen to the short clips or entire songs.
What you're planning sounds like "interactive digital streaming" (also known as "on-demand"). That's when a user can listen to a song upon request without having to download a copy. It's the process used at Spotify, Bandcamp, Rhapsody, and any website with a music player that allows you to start and stop the music. If you're permitting interactive streaming of a cover song, the proper legal course of action is to obtain a license from the Harry Fox Agency (HFA). According to HFA's site, the company offers licenses for interactive streams for one cent ($0.01) per stream via its Songfile service. Licenses are available for a minimum of 100 interactive streams up to 10,000 interactive streams per song licensed. These licenses are valid for one year.
Imitating the singing style. We're not sure imitation is always flattery, but we are pretty sure it's not infringement. Copyright doesn't recognize style, vibe, feel, or genre only original content (though that rule has been tested recently).  Where you might get into trouble is if you lead people to believe that the recordings are by the original artist. That shouldn't be an issue unless you begin selling the music in a manner that causes people to believe that the artist is involved with your tracks, or if you use the recordings to sell a product or service. You can probably avoid that issue with a prominent disclaimer such as "Mr. Famous Canadian musician is not associated with this recording."

Monday, May 4, 2015

Songs About Twitter

Dear Rich: I'm a composer looking to set texts from blog/Facebook/Twitter posts. Probably 20-30 words from each post, woven together in a musical work. My question is are posts made on social media sites considered public domain? If not, does fair use come into play here since I'm using so few words from each post and weaving them together into a new and unique work? 
We think you should proceed with your project. Here are some rules to guide the process:
Short phrases are not protected under copyright. That's right, copyright does not protect short phrases. The trouble is that nobody is clear as to how "short"  a short phrase can be. We've written about "protectable brevity" before and as we pointed out, it's not the number of words taken, it's the uniqueness and value of the words as well as the way in which you re-use them. The risk meter generally goes up when you take more than about 20 words.
Fair use may work but ... Even if the posts are protected, your project sounds ideal for fair use protection -- that is borrowing short amounts of verbiage for purposes of commentary or transformative purposes. Of course, we must always point out that fair use is a defense that is raised after you're in a dispute.
Just Sayin' Dept. It's unlikely someone will sue over the use of a tweet or a 20-word Facebook entry but one individual who borrowed Tweets for her own artistic purposes suffered backlash in the marketplace. For the same reason you should avoid posting any tweets or posts that identify an individual and reveal personal information. It's unlikely someone can claim privacy concerns over a Facebook or Twitter post, but if you're seeking smooth sailing, you should avoid that sort of activity.
BTW Dept. There's exciting news for copyright geeks: The Copyright Office has unveiled a searchable fair use database. Check it out.

Wednesday, April 29, 2015

Hockey History Book: What Can I Use?

Dear Rich: I am writing a hockey history book and would love to include photos of players and memorabilia, but I don't know how I can do this while keeping my costs low, and making sure I don't use someone else's photos illegally. What if, for example, I buy an original photo (like a press photo)? Can I legally use this in my book or do I need to get permission from the photographer? Also, if it is an old hockey card from the 1970s, can I scan it and put it in my book since I paid for the hockey card and it is mine? What about memorabilia? If I take a picture, for example, of an old ticket stub or a t-shirt, would this be considered my own photo, and thus, making it legal for me to include it in my book? I'm very confused right now. I should also add that I am a resident of Canada, but there is a good chance my book will be published by an American publisher since the topic of the book is the California Golden Seals. 

Unfortunately the rules are complicated (so complicated we had to write a book about it). Here are a couple of U.S. legal principles to help you avoid the penalty box:
PS Dept. If you self publish your hockey book you have the constitutional right to sell it outside hockey stadiums.

Monday, April 27, 2015

Generic Soccer Balls

Dear Rich: (1) My understanding is that the word "soccerball is in the public domain and can't be registered as a trademark, am I right? (2) What about if someone invents a sport? Does the inventor of the sport get trademark rights? 
(1) Terms that are generic for the goods or services are not registrable on either the Principal or the Supplemental Register under any circumstances. So, "Soccer Ball" can't be registered as a trademark for soccer balls. But it can be registered as a trademark for other products, for example, bubble gum.
(2) You wouldn't get trademark rights for inventing a sport. You only get rights when the mark is exploited in connection with goods or services. So, if someone invented a sport, or recreational activity, for example, Knockerball, and exclusively exploited the mark in commerce, a trademark registration may be awarded. The challenge for the owner is to avoid having the mark become the generic name for the activity, in which case trademark rights will be lost .

Wednesday, April 22, 2015

Wants to License Oral Histories

Dear Rich: I founded a nonprofit that is an archive of oral histories. A European museum wanted to feature three stories from my project in an exhibition. They asked me under what conditions I'd allow use of material belonging to the nonprofit and whether my license would also cover the rights of the three stories in particular. Since this is the first time I've had to seriously consider how to protect my work I'm unsure as to what I should request to ensure my work is safe. 
The answer depends on what rights you have to license. We reviewed your standard release and it authorizes your nonprofit to "use, reproduce, and/or publish video footage for educational and informative purposes" and to use it in "public affairs releases, or for other related endeavors." That language is suitable for using the material in association with your nonprofit, for example, at your website or perhaps at presentations made by the nonprofit. We're not clear about the meaning of "related endeavors" but, a conservative analysis would not include licensing the material to a third party. (We would feel better if the release specifically granted you the right to license the material to third parties.) If we're correct, you would should contact the subject and seek consent to license to the European museum. That makes sense, considering the personal nature of oral histories.
What should you seek from the museum? Once you have the necessary permissions from your subjects you would enter into a license agreement with the museum. You would need to define and limit reproduction and display/performance rights (how many copies, how many streams, what forms of media), length of license (how long the museum can use the material) and payment, if any. These arrangements are sometimes simple, sometimes complicated. We provide examples of these types of licenses with explanations in our book on permissions. Also, because it could be a challenge to enforce an agreement with a European museum, we'd suggest a little bit of research, if possible, to learn about the museum's past business dealings.

Monday, April 20, 2015

Who Periscoped My Game of Thrones?

Dear Rich: I have a basic understanding of copyright law, and my impression is that certain types of live-streaming could be defended as fair use -- for instance, if someone Periscoped "Game of Thrones" while offering a live critique of it. Or maybe if someone Periscoped a group of friends watching the show. My question is – at what point, if any, does live-streaming become “transformational”?
"Periscoping" refers to live streaming via the Periscope app to friends, and we doubt whether transmitting a complete episode of "Game of Thrones" would qualify as a transformative use, even with a live critique. A transformative use occurs when someone alters a copyrighted work and creates something "with new expression, meaning, or message," parody being a good example. Being transformative is only one factor in a fair use victory. However, the more transformative the use, the less important the other fair use factors (nature of work, amount taken, financial impact). In a recent example, a judge ruled that borrowing the characters and settings from "Three's Company"to create "an upside-down, dark" theatrical drama, was a transformative use. (You may also get guidance on transformative uses by checking fair use rulings.)
It's a moot question if ... If the user had agreed to a license — for example a click-to-agree EULA for HBO GO -- that agreement would likely pre-empt fair use arguments.
By the way dept. It's been a long time since a court okayed reproducing a whole TV show as a fair use; 31 years ago the Supreme Court held that "time shifting" a single copy of an over-the-air TV show for personal use was okay.