Friday, August 1, 2014

How Do We Make Risk Analysis for Trademark?

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

Wednesday, July 30, 2014

Registering Copyright For Deceased Photographer


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 You'll have to do two registrations: one for published works, the other for unpublished works.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

Tuesday, July 29, 2014

Relationship Between Fair Use and Infringement

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

Friday, July 25, 2014

University Won't Patent My Invention

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

Thursday, July 24, 2014

Sold Original Painting: Who Gets Copyright?

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

Wednesday, July 23, 2014

Wants to Use 1970s UK Public Service Films

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



Tuesday, July 22, 2014

Collage of 1950s Magazines: Fair Use?

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

Monday, July 21, 2014

Am I Infringing My Client's Newsletter?

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

Wednesday, July 16, 2014

How Many Seconds From TV Show?

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

Tuesday, July 15, 2014

Can State Department Employee Modify Meme?

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

Sunday, July 13, 2014

Do I Sign Solo Artist, Band, or Both?

Dear Rich: I recently started a music production business and I am in the process of signing a new artist as his manager. I have some questions regarding the contract between myself and the artist. He has a solo singer-songwriter act and a small band, that I will oversee. Do I need two separate contracts, as a manager for both his band and his solo act? He has agreed to a five album term instead of year by years contract. Can I change the terms of the contract, in your Music Law book, as we both agree on our terms? If the solo artist and the band operate as two separate entities, you should sign two separate contracts. That will allow you as a manager to keep separate accounts reflecting income and expenses. Otherwise, income destined for the band may be hijacked to pay off the solo artist's debts. If they are not separate entities -- for example, the solo artist hires the band as contractors and pays them an hourly rate -- then one management contract with the solo artist should suffice and there is little need to sign the band.
What about changing the agreement? It's more common to sign a management contract based on years (or financial goals), not on number of albums. (It sounds like you are crossing a record contract with a management agreement.) After all, what happens if the artist doesn't have (or keep) a label deal? Does that mean the management agreement ends? In any case, you're free to make any changes you wish to the agreement but we would suggest that when modifying the standard agreement, always review the instructions that accompany the agreement. Also, beware that in some cases, managers may need to be licensed in California.

Thursday, July 10, 2014

Micro-Entity Costs For Design Patent Filing

Dear Rich: If I am filing a design patent electronically, how do I know ahead of time what the fees are? I am a micro so does that mean $190.00 ($45 + 30 + 115)? Is that correct or will I find out a different number after I have uploaded my application. You can always calculate current micro-entity fees by using the USPTO fee schedule. And yes, your calculations are correct ($45 for basic filing fee, $30 for the search fee, and $115 for the examination fee).

Wednesday, July 9, 2014

Using Lyrics in a Website Logo

Dear Rich: If we would like to use a few lines of a song for a logo that will represent a website or blog logo, is that ok? Traffic to the site is not huge but would like to use it for logo art and if we want to share thoughts on how the song inspired us?  Here are some reasons why you probably won't have to worry about being pursued: (1) If traffic to the site is not substantial, the song owners are unlikely to learn of your use. (2) If the song owners do learn of it, they may not care (unless they find the use offensive). (2) If they do care about it, they probably won't bother to pursue you because a lawyer will likely advise them that you have a fair use defense. (3) If they decide you don't have a valid fair use argument or they want to pursue you for trademark claims, they will likely decide against lawsuit unless they have reason to believe that your pockets are deep. Of course, if the songwriters smell money -- for example, if Facebook, Apple, Amazon, or Google buys your site -- disregard the reasoning, above. Also, because your logo functions as a trademark, to further protect yourself, consider a disclaimer on your homepage stating that the songwriter isn't associated with your site.

Tuesday, July 8, 2014

Why Bother With Foreign Patents?

Dear Rich: Why would you bother getting a patent in other countries if you have been granted one in the USA. Surely, if a patent were granted in the USA that would be enough to deter someone from taking it out in other countries? If you had taken out a PCT and filed for the patent in other countries but only taken it to full patent in the USA someone else would surely be prevented from taking a patent out on your idea in the other countries as it had already been published. Is this correct thinking or am I missing something here?  It's true that after you file your patent application, inventors outside the U.S. may be blocked from getting a similar patent in their respective countries. But the lack of foreign patent rights makes it easier to make and sell your invention abroad. After all, if nobody has a patent, anybody can make the invention. (As you're aware, a U.S. patent is only enforced within national borders.) For many inventors, control over the U.S. market is enough -- after all, the U.S. often accounts for one-third or one-quarter of a new product's sales. Also, the cost of obtaining foreign patents can be prohibitive and often outweighs their speculative value. But for big multinationals with global product introductions, international patent protection is necessary.

Wednesday, July 2, 2014

Design Patent Protection for Pendant

bird food pendant
Dear Rich: I want to protect my designed pendants in the USA. What should I do? And what cost per pendant design? And how long will it take? A design patent may take one year or more to issue (although half of the applications issue in less than a year). An applicant can speed things along -- that is, obtain a design patent within two to six months -- by filing a Request for Expedited Examination of a Design Patent and paying a hefty fee. Here's an article about the expedited system. You can learn more about design patent strategy in this article and we explain the steps for preparing an application at this site. You can learn current fees at the USPTO website.

Monday, June 30, 2014

Simple Song Co-Ownership Agreement

mick and keef:
two of our favorite co-owners
Dear Rich: Presently, I'm trying to memorialize some collaborations. One is a set of songs that I and a producer worked on. I wrote words and the melody, and he did arrangements based on that. One is a set of songs I and a producer worked on. I wrote words and the melody, and he did arrangements based on that.  The other is a remake I'm expecting to do with another colleague, on one of her earlier songs. I'm re-producing the track and writing new lyrics to it. 
Whatever you and the producer have agreed upon as songwriting percentages credit is fine. However, just so you're clear, the creator of the words and music (melody and chord structure) is usually considered the songwriter for copyright purposes. As you're aware, the term "arrangement" can have many meanings from the ordering of parts, to the styling and coloring of a music composition. But under copyright law, arrangements are only considered a songwriting contribution if they are material to the composition -- that is, if the arrangement is dictated by more than musical convention or tradition.
The co-ownership agreement. In any case, you and the producer should write up a simple co-ownership agreement that states each party's songwriting contribution and share. We've enclosed a bare bones co-ownership songwriting agreement with an optional arbitration clause. That should deal with the basic revenue-sharing issues that arise from co-ownership of songs. If you are also dealing with master recordings (a separate copyright), you would execute a similar agreements for the recordings. Also, this does not establish any sort of music publishing arrangement, it merely confirms that each of you are co-owners. And of course, you should also register the songwriting copyright application at some point. (There are instructions at the Copyright Office and in our Music Law book.)
The remake. If you’re writing new lyrics to an existing track, that’s different than the situation described above. You can probably use the agreement below to establish a simple revenue sharing arrangement (and hopefully you will give the song a title that distinguishes it from the previous composition). But the copyright application requires some attention as it's doubtful whether you're co-authors under copyright law (as explained in this previous entry). An attorney's assistance might be required when preparing the application.

Songwriting Co-Ownership Agreement

Introduction
This Agreement is made between _____[insert name and address of owner #1]_____ and _____[insert name and address of owner #2]_____ (the "Parties") as of _____[insert date agreement is to be effective]_____. The Parties wish to set forth their respective rights to and obligations for the musical compositions (“the Compositions”) listed below:
The Compositions
___________________________
___________________________
 ___________________________
 ___________________________
 ___________________________
 ___________________________
 ___________________________
 ___________________________
 ___________________________

Ownership Percentage Interests
The Parties to this Agreement are the co-owners of all legal rights in the Compositions described above. The percentage ownership interests of the Parties are as set forth below. Unless otherwise set forth in this Agreement, all money accruing from the exploitation of the Compositions shall be divided as set forth below, and all contracts we enter into for exploitation of the Compositions shall provide for royalty payments reflecting the percentage interests set forth below:
Name                                       Percentage Interest
_____________________      __________
_____________________      __________
Credit
The Compositions shall be credited as follows: _____________________________
Warranties
We represent and warrant to each other:
  •  Each of us is free to enter into this agreement.
  • Our contributions to the Compositions are original or all necessary permissions and releases have been obtained and paid for.
  • None of our contributions infringe upon any copyright or other proprietary right of any other person or entity.
  • We each agree to indemnify the other(s) for any loss, liability, or expense resulting from the actual breach of these warranties.
Arbitration [Optional]
The Parties agree that every dispute or difference between them arising under this Agreement, shall be submitted to binding arbitration at a location mutually agreeable to the Parties. Any decision or award as a result of any such arbitration proceeding shall include the assessment of costs, expenses, and reasonable attorneys' fees and shall include a written record of the proceedings and a written determination of the arbitrators. An award of arbitration shall be final and binding on the Parties and may be confirmed in a court of competent jurisdiction.
Assignment
Neither party may assign his or her rights or delegate his or her duties under this agreement without the other party’s written consent. However, any party may assign the right to receive royalties or other income from the Compositions by giving written notice to the other party.
Miscellaneous
Each Party shall act in good faith and not take any action which hinders the rights of the other parties. The provisions of this Agreement shall be binding upon the heirs, executors, administrators, successors, and assigns of the Parties. If any provision of this Agreement is held to be invalid for any reason, such invalidity shall not affect the validity of the remainder of this Agreement. This Agreement constitutes the entire understanding between the Parties and can only be modified by written agreement. This Agreement shall be governed by the laws of the state of _____[insert state law that shall govern the agreement]_____. In the event of any dispute arising under this agreement, the prevailing Party shall be entitled to its reasonable attorney's fees.

MY SIGNATURE BELOW INDICATES THAT I HAVE READ AND UNDERSTOOD THIS AGREEMENT.

Signature __________________________    Dated: __________


Signature __________________________    Dated: __________

Friday, June 27, 2014

Copyright Recipes? 86!

one of our favorite recipes:
arepa sandwich from Victory Burger
Dear Rich: Our neighborhood watch committee is going to raise money with a street fair and food and we're also selling a cookbook that we're making on CreateSpace. One of the people contributing three recipes said he wanted the copyright on his recipes to be in his name. What do I do? Including a copyright notice on his recipes -- for example © 2014 Chef Jones -- would be meaningless because copyright doesn't protect recipes (and here's your proof). However, the complete collection of recipes (and additional text and photos) may be protected as a compilation copyright. And recipes that have not been publicly disclosed can be protected under trade secret law, assuming that they can't be easily reverse engineered.

Thursday, June 26, 2014

Can Co-Writer Reprint Lyrics in Book

Lorenz Hart
(one of our favorite lyricists)
Dear Rich: If John (lyrics) and Mark (music) create a joint-work both owning 50% of the copyright, can John write a book of poems with his lyrics to the song in the book, without getting permission from Mark. If James (record company owner) owns the master, does John need to seek permission from James to use the lyrics to the song in a book of poems? Unless there is a written agreement to the contrary, each co-owner of a joint work has the right to commercially exploit the copyright, provided that the other copyright owner gets a share of the proceeds. So, if John reprints the lyrics as a poem, he would owe 50% of the proceeds from use (assuming there is revenue) to Mark. In other words, after the joint work is created, it no longer matters who created what -- either co-owner can use either contribution.
What about James? James may own a sound recording copyright (for the master recording) but that doesn't give him any dibs over the song copyright. This circular distinguishes the two.

Wednesday, June 25, 2014

The Case of The Partially Public Domain Character

Dear Rich: Help! I'm working on a graphic novel using Dr. Jekyll and Mr. Hyde and Sherlock Holmes. I thought Sherlock Holmes was in the public domain but recently read that some Sherlock Holmes is now in the public domain but some isn't. That made me wonder if Dr. Jekyll and Mr. Hyde were public domain? How do you know for sure which is PD and what isn't? Yes, Jekyll, Hyde and Holmes are in the public domain (although some Holmes is still protected as we'll explain below). Determining public domain status is not exactly elementary, but there is a method of figuring it out based on the year of publication in the U.S.  Basically, any characters that appeared in publications prior to 1923 are PD in the U.S. The Strange Case of Dr. Jekyll and Mr. Hyde was first published in 1886 and has therefore fallen through the public domain trapdoor (along with the characters within the covers). Sir Arthur Conan Doyle's characters appeared in approximately 50 stories published before 1923, and 10 stories afterwards. In the case you mentioned, Doyle's estate argued that the "whole character" was not formed until the final post-1922 work was published. The Seventh Circuit court of Appeals disagreed and held that the Holmes character who appeared before 1923 is PD -- so, you're free to copy him and Watson. But the remaining 10 works are still protected and you cannot use elements from these works -- for example, you can't reference the fact that Watson had a second wife. (Here's a summary of Sherlock's copyright history.)
BTW Dept ... If you're looking for more match-ups between public domain characters check out this site or this one.

Monday, June 23, 2014

Can We Use "Twilight Zone" Intro?

Dear Rich: I want to do a parody of the Twilight Zone, not mentioning Twilight Zone but have a Rod Serling imitator say the text. Can I lift direct script from the show, word for word? If I do, do I have to give credit? When is a script not copyrightable? Also: I love the opening lines of the move Fargo where they display in text: "THIS IS A TRUE STORY. The events depicted in this film took place in Minnesota in 1987. At the request of the survivors, the names have been changed. Out of respect for the dead, the rest has been told exactly as it occurred."I want to use this as a template for the video, while changing a few words... Is this ok to include, legally if you credit them, or too similar? If you copy the text from either Twilight Zone or Fargo, you're infringing copyright. (Twilight Zone debuted in 1959 and is still copyright-protected.) Attribution -- giving credit to the authors -- won't help your situation. However, if you're just borrowing the intros, for a transformative parody purpose, you're likely to be excused under fair use principles. We would go into a deeper fair use analysis but we feel like we've said it all here.