Saturday, August 23, 2008

A picture is worth a thousand bucks: Web templates and stock photo use

Dear Rich: I purchased a web hosting package a few years back that included free website templates. When I created a different website, I used one of the templates, including the top photo. I just got a letter from a major stock photo company asking for $1,300 and to pay for a license or remove the image. I immediately removed the image, but I can't afford to pay $1,300. I have all the documentation about the free templates. Do I have to pay $1,300 for something I thought was free? $1,300 for a website image? Wow! Here at Dear Rich headquarters we pay about $1 for low res images (like the one on the left). In any case, you did the correct thing by immediately removing the image (and keeping the documentation). Hopefully, that demonstrates your good will.

There are a few things that may be going on here. Your original web hosting package may have included a permission to use the photo but that permission did not extend to other web hosting services. Or, perhaps the first web hosting arrangement never really got the proper permission, so wherever you use it, you'll have a problem. The photo may have some digital watermarking embedded so that the stock photo company can trace all such uses and catch those who use it without permission. If you're using it under the terms of the original webhosting agreement, you need to look to your agreement and your webhosts for resolution. If not, the stock photo company likely has a legitimate claim for infringement.

How far will they pursue it? It's possible they could file a lawsuit, but that doesn't seem practical or likely -- they wouldn't recover the costs of the litigation. Odds are good that if you write and explain your mistake -- you mistakenly thought you had a license to use it -- the whole thing will go away. They may send some more threatening emails, but the chances of anything going beyond that are unlikely. If I'm wrong (hard to believe, but it happens), let me know and maybe we can trigger aStreisand effect.

Friday, August 22, 2008

Orphan Works

Dear Rich: I have a question. I am an illustrator. Is it true that the government is setting up a database of visual arts works? And is it true that any works that you don't place on this register will become "orphan works" that anybody can use without your permission? I'm so glad you asked. The answers to your questions are "maybe," and "not exactly." An orphan work is one that is owned by a hard-to-find copyright owner. For example, in 1975, a child sends a drawing to Elvis Presley. In 2008, a biographer wants to include the drawing in a Presley biography. The problem is that the artist can't be found and the publisher doesn't want to reproduce the image without permission. Two bills have been proposed in Congress that address this issue. The proposed bills would allow the publisher -- after performing a diligent search -- to reproduce the image. If the artist later appears, the publisher would have to pay a reasonable fee for the use. An unlikely crew of special interests favor the House version of the bill, including librarians,free-speech typescopylefties, academics, writers, photographers, and big industry groups like theRIAA (and, of course, Google). Under the House bill, anyone who wants to use a work must (1) document their "good faith" search for the owner, (2) file a "Notice of Use" with the Copyright Office before using the work, (3) provide attribution if they know the name of the creator, and (4) include a special "orphan works" symbol when the work is published.
Illustrators and artists are concerned about the bill because it would establish a registry of visual arts works. They're worried that if a piece of artwork doesn't show up on a registry search, all rights to that artwork may be lost. First, keep in mind that orphan or not, copyright is always preserved in the work. Second, there's nothing in the law that says that a failure to appear in the registry automatically creates an orphan. For example, even if the drawing of Suda (above) did not appear in a registry, I would still have a hard time claiming it was an orphan ... since the artist and his work are easy to locate on the web.

Thursday, August 21, 2008

Do you need permission to publish pictures of buildings?

Dear Rich: I have a question. Do I need to ask permission to publish a picture that I took that contains several local buildings and a city cultural monument? The short answer is "probably not". Here's the scoop. 
If you took the picture, you own the copyright (with exceptions, if you were hired to take it). As for the copyright in the buildings, it's true that architecture created after 1990 is protected under copyright law, but that's not an issue for you because there is an exception that permits you to photograph and publish constructed buildings that are publicly viewable. (That's not true if you must trespass on private property to photograph the building.) Even if the building contains sculptural elements like vampire figures, you can still photograph those elements and even use them as part of the backdrop in a Batman movie. (I'd refer you to Circular 41 -- Copyright Claims in Architectural Works -- for more information, but the Copyright Office is currently updating it.)
The city monument may be a different copyright issue. If it has been around for more than 85 years, it's most likely in the public domain (and even if it's newer than that, it may be PD as well -- see Fishman's fab PD Nolo book or his new treatise for more info). Post-1923-created monuments may be protected under copyright law, in which case, you can expect to get hassled (though public pressure can always change public policy). Generally, you don't need to worry about a lawsuit over photos of public art unless your use is blatantly commercial -- for example, in a movie, TV show, or on a poster.
There's a minor hiccup when it comes to trademark law. Building owners have claimed building appearances as a trademark when used in connection with the sale of goods and services -- think White Castle and the Sears Tower. But in order for a trademark owner to stop you, the following would have to be true: (1) the building would have to have an identifiable, distinctive appearance; (2) the building would have to be publicly associated with certain goods or services; (3) your use would have to be commercial (not editorial); and (4) your use would have to be linked to an offer or endorsement of similar goods or services. For example, you will run into problems if you use a picture of the Transamerica Pyramid in an ad for another company's financial services. Generally, this strategy hasn't always fared so well for trademark owners, and you probably won't need to worry about it. If you are concerned -- for example, you're working for an ad agency or movie company -- obtain a release for your photography. (There are property releases in my book on getting permission.) 
Actually, the biggest hurdle for photographers in public spaces is a national paranoia following 9/11, as exhibited by building owners, employees, and security guards. Photographers of public spaces are now considered suspect even when taking pictures of their own kids. Anyway, feel free to come by and photograph the Nolo building before the company is moved out of town. Or better yet, feel free to shoot the Dear Rich Building (see above) anytime -- the Dear Rich Staff will even take you on a guided tour.

How do you stop someone from stealing your bra?

Dear Rich: I have a question. I read recently that Victoria's Secret stole somebody's design for a bra. I have a design for something similar -- I don't want to say exactly what it is, because it kind of gives away the idea. How can I stop someone from stealing it? I'm so glad you asked. I'm familiar with the alleged bra theft, though I don't think it's fair to say -- at least not yet -- that Victoria's Secret violated the law. The woman claiming theft has a patent, but there are many ways to design around patents, and it's always possible to argue that the woman's patent is invalid. Alas, patent law is rife with misinformation regarding bra inventions, including the claim that Mary Phelps Jacobs invented the first bra in 1914 or that Herminie Cadolle of France invented it in 1889. (For those interested in the true story, I recommend Hoag Levins' wonderful explanation of brassiere inventions in his bookAmerican Sex Machines: The Hidden History of Sex at the U.S. Patent Office.)
Can you stop someone from stealing your idea? You can take preemptive steps -- one approach is to get a signed evaluation agreement (a modified nondisclosure agreement) before presenting your idea. The problem with that is that many big companies don't want to sign them because they're afraid it will prohibit them from developing similar ideas. Another approach is to seek patent protection. A patent -- as in this situation with Victoria's Secret-- gives the owner a hunting license to pursue infringers. If you're not sure about investing time and money in the full patent application, you can reserve your place in line at the Patent Office by filing a provisional patent application for $105. Nolo offers books and software to prepare a provisional application. And remember, whatever you've invented, please consider the safety issues.

Harry Potter and the little guy

Dear Rich: I have a question. Why should I care about the Harry Potter case? Isn't it just another example of a huge megacorp using copyright law to crush the little guy? I'm so glad you asked. I don't know why you should care about the Harry Potter case. And I don't know why you should care enough to ask me why you should care about it. I don't even know why you should care about reading the answer to your question. What people care about and why they care about it is a mystery to me.
The Harry Potter lawsuit -- in which a publisher and author are attempting to stop publication of a Harry Potter lexicon -- is not an unusual copyright dispute. Maybe you're too young to remember when J.D. Salinger successfully stopped a biographer from using his unpublished letters, or when ex-president Ford stopped The Nation from printing excerpts from his unpublished memoir. But you must be old enough to remember when the producers of the television show Twin Peaks stopped publication of a Twin Peaks guide, or when the producers of Seinfeld stopped a company from publishing a book of trivia questions about the Seinfeld television series. (Talk about being re-gifted!) In these situations, the courts have done a pretty decent job of separating those cases in which the author is being exploited (not a fair use) from those cases in which the author is being explained (fair use).
As for using copyright law to crush the little guy, that knee-jerk characterization may apply in cases of RIAA smackdowns but misses the boat here. (If anything, the little guy, armed with high-tech copying tricks, has collectively done more to crush copyright than any megacorp -- check out the many illegal Potters and the frivolous Muggles-related lawsuit.) The lexicon's author knew what was at stake when he proceeded and even insisted on an indemnity clause -- a provision that saved him from having to pay any attorney fees, damages, or court costs. (Kudos to his attorney.) Time-Warner and Rowling have been reasonable in permitting the free web-based version of the lexicon for years. The lexicon's publisher understood the realities -- the real money is made selling copyrighted units of content.

Wednesday, August 20, 2008

Can you patent a medical procedure?

Dear Rich: I have a question. Somebody told me that the Heimlich maneuver is patented. Is that true? Can medical procedures be patented? Does that mean somebody gets paid whenever a procedure like that is used in a hospital? I'm so glad you asked. The answers to your questions are No, Yes, and Maybe. The Heimlich maneuver -- the process that's reportedly saved over 50,000 lives, and has even been used successfully on a few pets -- is not patented. The process, though it seems obvious, now, was unknown before 1974. Dr. Heimlich did go on to patent some life saving devices, including a collapsible respiratory exerciser (4,323,078), and an improved tracheal tube (4,987,895).
Although the Heimlich maneuver isn't patented, medical procedures can be protected under patent law -- over 100 of these medical process patents are issued every month. And yes, patent owners can sue when their procedures are used without authorization. (FYI Dept.: A veterinarian won a caselast year over his patented process for declawing a cat.) There is one big limitation on these patents. Under a 1996 federal law, the patent owner can't sue a doctor for infringing a medical process patent. In other words, a surgeon can use a patented process in the operating room without asking for permission beforehand. Still, that hasn't stopped lawsuits.
Anyway, thanks to Dr. H., many people -- for example, Cher, former New York Mayor Ed Koch, Elizabeth Taylor, Goldie Hawn, and Carrie Fisher -- are alive today. And since there is no copyright or patent on the method -- though there is a trademark* -- , let's all review it for our own selves. Here's the setup: A choking victim can't speak or breathe and needs your help immediately. Follow these steps*
  • From behind, wrap your arms around the victim's waist
  • Make a fist and place the thumb side of your fist against the victim's upper abdomen, below the ribcage and above the navel.
  • Grasp your fist with your other hand and press into their upper abdomen with a quick upward thrust. Do not squeeze the ribcage; confine the force of the thrust to your hands

P.S. Don't you love this Heimlich imagery created by "Little Miss" Sunshine?
*Previously I suggested that you avoid backslapping in favor of the HM, but a tip of the hat to Mexican Radio (see comments below) who points out that the HM has been demoted in favor of the back slap. (See Heimlich's response to back slaps, here.) Although there is no copyright or patent on the procedure, MR points out that the Dr. does have a trademark on the term "Heimlich Maneuver" -- which may explain why the American Red Cross now simply refers to the procedure as "abdominal thrusts."

Monday, August 18, 2008

Don't drink and plagiarize: Living with

Dear Rich: I have a question. My school is making me submit my term paper through a company called That company checks the paper against other papers for plagiarism. That seems illegal. Don't I have a right to not submit it through Turnitin? Isn't it just like when people have a right to not take breathalyzer tests? I'm so glad you asked. As you're aware, is a repository for student papers and bills itself as "the standard in plagiarism prevention." According to the company's website, your paper will be compared to 15 million (or 40 million, depending on who you believe) papers that Turnitin already has on file.
One question that arises from the company's use of student papers is whether it's committing copyright infringement. The company says no, that it's a fair use because they're using the papers for a transformative purpose -- catching cheaters. When students object to the practice, the lawyers for respond that their website prevents copying by students -- a goal of copyright law. Hmm. As to whether the practice actually is a fair use, we'll have to wait and see what the courts decide, and at least one such case has been filed. (BTW kids, if you're copying Dear Rich blog entries into your term papers, you have nothing to worry about; nothing's been filed at Turnitin... yet.)
As for your right to not take a breathalyzer test, that's a little bit out of the Dear Rich universe. However, since Rich once was required to edit books on motor vehicle codes, he can assure you that there is a downside to not taking a breathalyzer when requested. Many states have implied consent laws, which means that by getting a license, your consent to take a breathalyzer is implied, and if you don't, you could be fined, lose your license, or get sentenced to time in jail. So think carefully before refusing a professor's or police officer's request.

I'm not gay but my trademark is...

Dear Rich: I have a question. I want to trademark a product that I will sell primarily in gay catalogs and I want to use the word "queer" as part of my trademark. I've heard that I'll have trouble if I try to register it. Since registration costs $325, I'd like to know if that's true before I file. I'm so glad you asked. There are dozens of trademarks with the word "queer" that have qualified for federal registration including Queer Beer, Queer Channel, Queer Duck, Queer Eye for the Straight Guy, and my personal favorite, The Coast is Queer. So it's unlikely that the USPTO will hassle you based on that term alone. It's true that the USPTO can reject marks that are scandalous and twice rejected the "Dykes on Bikes" trademark. However, that mark eventually achieved registration after the organization sponsoring the registration demonstrated that the term "dyke" was not disparaging to lesbians. (The trademark also survived a legal attack by a lawyer who claimed that the term denigrated men.) It's true that some terms are still considered as scandalous and derogatory but, assuming nobody is using a similar mark on related goods, you won't end up donating $325 to the feds. P.S. Did you know you can save $50 by filing your trademark as a TEAS PLUS application?

Tuesday, August 12, 2008

Using fillable PDFs to file patents

Dear Rich: I've tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It's driving me nuts because I can't figure out the problem. I'm so glad you asked. Chances are you're using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you're interested in the other kind of acrobat...

Thursday, August 7, 2008

Can your name be a trademark?

Dear Rich: Can I get a trademark on my own name so that I can use it exclusively for the crafts items I make and sell? Or do I automatically have a trademark on my name? I'm so glad you asked. The short answers to your questions are "maybe" and "no." Yes, it is your name, but that, by itself, does not create trademark rights. Otherwise, anyone named Gallo could sell wine (or cheese) without getting sued; anyone named Victoria (or Victor) could have a secret; and anyone named Violet Blue could offer sex advice. As with all trademarks, the rights go to the first person to use the name in connection with certain goods and services.
In fact, your name creates a bit of a disadvantage when seeking to register a trademark with the U.S. Patent and Trademark Office (USPTO). You can't register a personal name with the USPTO unless you can demonstrate that consumers associate your name with your goods or services (referred to as "secondary meaning"). In other words, you need to show that you've been using it for a while to sell goods or services, or have invested some money in advertising the name.
All of this is kind of ironic since the earliest trademarks were the names of crafts people who marked their pottery and silverware with their names.
You can get an idea of whether anyone else is using a similar personal name for crafts by checking the USPTO trademark database (click "Trademarks," then "Search TM database"). Of course, one solution is to combine the use of your name with another term -- for example, Dear Rich -- and then you can go after those competitors with identical monikers or annoyingly similar ones, as well.

Can you claim rights to an animal's appearance?

Dear Rich: I have a question. I read about an artist who is trying to get paid by the State of California. They're using his painting of a whale on license plates. I thought all images of animals were in the public domain. I'm interested because I'm a crafts artist and I'd like to replicate certain animal images on jewelry. I'm so glad you asked. I've written about one aspect of your question -- the copyrightability of art that borrows from nature -- in a Nolo article, so check that out. If you're too busy to get through the whole thing, I can summarize it by saying that the natural appearance of birds, bees, flowers, and the likeare in the public domain. So if you're making wax candles that look exactly like a corn cob, or animal heads that look exactly like a leopard, you'll have a hard time claiming copyright.
But if you're going beyond an exact replication of an animal -- for example, painting an inspiring shot of a whale's tail as the animal dives into the water, or creating a whimsical bespectacled penguin that also understands IP law, your original expression is protectable and you can stop others from copying.
In regard to the whale license plate, the bigger issue seems to be that the artist made a handshake deal with the State of California. (Who knew states had hands?) As readers of the Dear Rich blog know, all arrangements transferring intellectual property should be in writing. Lacking any paperwork, the state's got a weak defense.
BTW, we almost quoted directly from the Associated Press story on the subject. As you're probably aware, there's no way the The Dear Rich blog is going to move beyond its current obscurity without being publicly chased by a big-time plaintiff (and the AP is a tempting, though unglamorous target). Alas, we decided to hold out for Mr. Right.

Tuesday, August 5, 2008

Repurposing copyrights and trademarks: the first sale doctrine

Dear Rich: I have a question. Can a copyrighted or trademarked item be reused or "repurposed," as they like to say in the recycling circles, into a new product for sale without permission? For example, can someone take a cereal box, cut it up, use the front of the box as a notebook cover and legally sell that notebook? Can someone tear a page from a magazine or calendar, fold that page into an envelope and legally sell that envelope? How about a bottle cap? Can someone fashion a piece of jewelry from a bottle cap that is identifiable in the finished piece? I'm so glad you asked. The short answer: Making jewelry from a bottle cap is probably okay, ripping pages from a magazine and selling envelopes could be fine (but ripping pages from a book or calendar may not), and making notebook covers from cereal boxes may lead to trademark problems.
The long answer (zzzzzz) is a bit more nuanced. Here goes: Copyright law permits the purchaser of a copyrighted work to resell, destroy, or do whatever they want to that work, as long as they don't step on any of the copyright owner's exclusive rights. This principle is known as the first sale doctrine, and that's why people can sell used books, movies, and music on eBay and Amazon. The term "first sale doctrine" comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold. (One exception: If it's a limited edition artwork or fine art work -- for example, signed and numbered photographs created in limited editions of 200 or fewer copies -- you can't destroy it.)
Naturally, things aren't always so simple. For example, two cases involving the resale of artwork seem to have arrived at different results. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. A court of appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988).) (A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc.,932 F.Supp. 1210 (C.D. Cal. 1996).) In a different case, a company purchased note cards, mounted them on tiles, and resold them. A federal court in Illinois determined that this practice was okay. (Lee v. Deck the Walls, Inc., 925 F.Supp. 576 (N.D. Ill. 1996.) (The same result occurred in C.M. Paula Co. v. Logan, 355 F.Supp. 189 (D.C. Texas 1973).) So, under these rulings, a person cannot rip individual images from an art book and resell them, but a person can mount individual note cards and resell those. Another case added further confusion when a federal court ruled that the purchaser of a bundle of software programs could resell the individual components (separate programs on CDs). (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001).)
You definitely want to take some care selling repurposed items that contain trademarks. Although you're free to sell empty cereal boxes, you want to avoid implying that the cereal company is endorsing or is associated with your notebook products. That's going to be tough to do if the cover of your notebook is identical to the cover of the cereal. Consumers will necessarily confuse the two and likely think the cereal company is selling notebooks (not a major leap, considering they sell to kids). A prominent disclaimer may help -- for example, a statement that your business is not affiliated with or endorsed by the trademarked company. But who's going to want to look at a big disclaimer on the cover? Whatever you do, don't play up the trademarks you use in your company's marketing or business name. For example, it's not a good idea to name your website "Cheerios Notebooks." Finally, as with all issues like this, the lower you are on a company's radar -- that is, the less you sell -- the more likely you are to avoid any hassles.

Monday, August 4, 2008

Do you need permission to reproduce interviews?

Dear Rich: I have a question. I am a science journalist and I've recorded interviews with many famous scientists. I've used this material in books and articles and would now like to use these on a website for free, open-access listening. Someone has suggested that I obtain permissions from all my subjects or their estates. I believe that no permissions are required because the subjects implicitly granted me permission to use the interview material as I saw fit when they sat down with me and my tape recorder and pad. I'm so glad you asked. You are navigating through one of the grayer areas of copyright law so in answering, I'll have to use a lot of equivocating language, such as 'likely,' 'may,' and 'probably.' If you don't have time to read all of that stuff, the bottom line is that you are probably okay to do what you plan to do. The courts and legal scholars are not a beacon of clarity when it comes to divvying up the rights for interviews.
From the limited case law available, it's likely that a court will consider an interview to consist of two separate works: one work created by the interviewer's questions, and the other created by the subject's responses. These works may be protected under traditional copyright principles (or they may be protected under what's referred to as common law copyright). Under that 'two-separate works' approach, you'd need permission to reproduce the subject's answers. That permission may be implied by the subject's consent to the interview. In fact, one court -- dealing with an interview with Ernest Hemingway -- hinted that Hemingway's failure to limit usage at the time of the interview implied unlimited use.
Some legal scholars argue that a better approach is that the interviewer and subject jointly create one work. Under that analysis, the interviewer and the subject are joint authors. In that case, either author can use the interview for any purpose provided that the party using the interview accounts to the other for any profits. If this approach were applied to your case, your use should be fine since you are distributing the interviews for free and (assuming you are not making money off the website) no accounting would be necessary. You can read more on these two approaches at the site. Also, as you are probably aware, if you proceed without permission, you would have a strongfair use argument for distributing these interviews based on their historic and scientific value.
The whole thing becomes more complicated if you are making money from the sale or licensing of the recordings -- a situation that may trigger a right of publicity claim or (if you and the subject are considered joint authors) an accounting of moneys earned to the interview subject. Finally, there is some question as to whether federal copyright protection extends to a recorded interview, since simultaneous recording of the performance of a work of authorship (that is, not being broadcast) isnot considered to be fixed. That means that the interview is not protectable under copyright law (hence the need to use common law copyright, as described above). There's no guarantee that this will all play out as described. A lawyer would advise you that the only 100% safe course is to obtain permissions. But I think your chances of avoiding hassles are good and I personally look forward to listening to the interviews. There is always so much to learn about our scientific heroes.