Thursday, April 30, 2009

Family rights to old steel patents

Dear Rich: I wonder if you can help. My great-grandfather patented several steel inventions back in the early 20th century in the U.S. How do I find these and what happened to them after he died in 1941? Do the next of kin have any rights to them? I'm so glad you asked. The short answers to your questions are: (1) you can find out more about the patents at the Google Patents site, (2) anything patented in the early 20th century is in the public domain now, and (3) there are no rights in public domain inventions. The Dear Rich staff recommends Google Patents instead of the U.S. Patent and Trademark Office searching site because Google is easier to use and more comprehensive. Try the Advanced Search feature to search by inventor name. Prior to 1995, U.S. patents had a duration of 17 years, after which the invention is free for anyone to use or manufacture. We wonder if your great-grandfather was one of those early 20th Century steel pioneers who gave us stainless steel, modern dry-blasting, or a revolutionary method of making rails. (Digression Dept.: Speaking of steel, the Dear Rich staff learned today that it takes 7 kg (15 lbs.) of steel to manufacture a bicycle and 816 kg (1800 lbs) to manufacture a car. No wonder H. G. Wells said, "When I see an adult on a bicycle, I do not despair for the future of the human race.")

Wednesday, April 29, 2009

Revoking Copyright Transfer of Poetry

Dear Rich: My mother wrote and copyrighted a poem which she used as a basis for a book. In the book contract she expressly denied the publishing company the rights to her poem but a year or so later there was a letter that she signed that gave subsidiary rights to the poem to the publishing company. As the trustee of her estate and on behalf of my siblings I would like to revoke the subsidiary rights so that we may have control. Is this possible and do I need an attorney? I'm so glad you asked. The short answers to your questions are, "You may be able to terminate although you may have to wait" and "Yes, you will probably need an  attorney". As to your first question, if your mother made the grant after 1977, you (the children or grandchildren) may terminate the transfer any time after 35 years from publication or 40 years from the transfer, whichever comes first. However, according to the Dear Rich staff, you must take advantage of this right within five years of eligibility. For example, if the transfer and publication occurred in 1980, you must terminate within a five year window after 35 years -- that is, sometime between 2015 and 2020. Also, if the assignment is terminated, the rights in derivative works -- for example, a song based on the poem -- would not be terminated.

If the contract was made before 1978 -- and here's where it gets even more complicated -- you may terminate the contract any time during a period of five years beginning at the end of 56 years from when the copyright was originally secured or beginning on January 1, 1978, whichever is later (see why you may need a lawyer). So if your mother made the transfer in 1953, you would have five years, commencing in 2009, to terminate. The method of effecting the transfer -- it involves sending a notice -- is set forth in the Copyright Act at 17 USC 203(a)(4) and 304(c)(4) (again, the lawyerthe lawyer). It's possible you may also have a right to terminate the grant if the written agreement has been breached by the publisher -- for example, the publisher has failed to account for or otherwise honor the agreement. Ennyway... congratulations to your late Mom for getting a book deal based on a poem. We don't know much about poetry but we remember being twelve years old sitting around listening to a recording of this.

Additional Note: Dan from "A" Side Music, points out that the "subsidiary rights" you describe may not necessarily be a copyright assignment. Good point! As he notes, if it was simply an amendment to the book contract or a nonexclusive license to print the poem for a limited time in a publisher-owned magazine, you may not need to go through the "considerable hoops" required to terminate a copyright transfer. Check the paperwork and if it was a simple license, see if you can contact the publisher and arrange to terminate it (if it hasn't already terminated on its own).

Tuesday, April 28, 2009

Have I forfeited my patent by disclosing it to a company?

Dear Rich: Last night I emailed a small company about an idea I had about a product I thought they should make. This morning I received an email from them thanking me for the suggestion. Then I realized that I should have patented the idea and tried to license it to them. Have I forfeited the right to patent it by disclosing it to them? If I file a provisional patent before they file either a provisional or nonprovisional patent on the product, do I maintain the rights to the product? I'm so glad you asked. The short answers to your questions are: (1) "No, you haven't forfeited the right to seek a patent, (although you have started the clock ticking)," and (2) "As long as you can prove you invented it and you meet other patent requirements, you retain the rights to your invention regardless of whether the company files a patent application." 

Hmm. That's annoying isn't it? The answers are supposed to be short but they end up being kind of long ... sort of like my recent root canal. Ennyway. You have one year from any publication, public use, public sale, or offer to sell your invention, in which to file a patent application or provisional patent application (PPA). (If you file a PPA, you will then have one year from that filing date to file a regular patent application). So if you disclosed the novel and nonobvious aspects of your invention -- that is the patentable stuff -- and if you don't file a regular patent application or a PPA within one year of your public disclosure or offer to sell, then the invention passes into the public domain and cannot be patented. 

Although you haven't lost your ability to patent, you probably forfeited any claim to any disclosed concepts or ideas as trade secrets. Since the U.S. is still a "first-to-invent" country (the only one, actually),  you don't have to worry about a race to the patent office (although the Dear Rich staff reports that many U.S. patent attorneys still follow the maxim, "file early and file often.") In any event, as we've pointed out before, a patent application must be filed in the name of the inventor (that's you, right?), so the other company will commit fraud if it does not list you accordingly. 

What's the best way to solicit a company with an invention idea? Ideally, obtain a nondisclosure agreement. If that's not possible, make disclosures in stages, avoiding disclosing anything patentable or any trade secrets until absolutely necessary. Hopefully, if you can build up some credibility, you can then obtain an NDA, an evaluation agreement -- or even an option agreement. For more on these concepts, check out my book, Profit From Your Idea. If you're in a hurry to file a PPA, check out Nolo's Provisional Patent Application or check out this interesting new patent-filing startup site by Rocky Kahn.

Monday, April 27, 2009

Copyright in Employee Photos of Clothing

Dear Rich: I worked for a very large clothing retail company in the corporate office. Photography was not in any way in my job title. One of the marketing managers knew that I did photography and asked if I would shoot some of the clothes that they were trying to sell to a huge retail company. I first agreed to shoot the products for them to use as line sheets to increase the chances that the other company would buy the products. Then it turned out the president of the company wanted me (more like "made me") to do a much larger shoot with hundreds and hundreds of items over two days. He also hired two professional models. The deal went through and the company carried our products. Then I found out that my images were being used in the stores for huge posters and ad campaigns. My company provided them with the posters and banners to put in their stores. I did not sign anything during the shoot or after. My company never did pay me a bonus as they stated they would. I no longer work there and have not received any compensation for that photo shoot. What would other professional photographers like you out there charge for this type of two-day shoot that was later used for an ad campaign? I'm so glad you asked. Even without a written agreement, an employer owns copyright to everything created by an employee in the ordinary course of employment. For example, do you remember that photograph of the fireman cradling the baby after the Oklahoma City bombing? That was taken by an employee of a gas company whose job was to investigate gas explosions and take photographs of the scene. The gas company employee tried to assert ownership of the photo in order to sell it on t-shirts, but a court ruled the photo was taken within the ordinary course of employment and belonged to the employer. To determine what's the "ordinary course of employment" courts sometimes ask three questions: 
  • Was it done on the clock? (Yes, in your case.) 
  • Did you take any actions or say anything that indicated that your employer owned the copyright? (We're not sure about that.) 
  • Was it part of your job description -- that is, was it one of your duties as an employee to take photographs of the goods? (Apparently not, according to your letter.) 
As we mentioned in a previous entry, we would also need to know the contents of your employee handbook or employment contract. In any case, the Dear Rich staff thinks you have a reasonable argument to claim copyright ownership but that it is probably a close call, primarily because the photographs were taken on company time, at the company's facility, and with contributions from the company - they hired the models and apparently supervised the shoot. We're also concerned about that bonus you discussed. If it was negotiated as separate payment for the work, then that could influence your ownership claim. As for what would other photographers charge for similar services, the best answer can be found by checking pricing rates at other photographer's websites, or using one of the popular books or  pricing tools. (P.S. Although I am not, as you state, a professional photographer, some of my best friends are, and their work decorates my office.)

Friday, April 24, 2009

Writing About Famous Dead People

Dear Rich: I am a writer (no, really, professionally published and everything) and am working on a novel in which I want to include a historical personage of the 20th century as a character. This gentleman died in the 1990s and was a labor leader who was much in the papers. He is not the protagonist of the book, but is a pivotal character. Would I get into trouble using his name and biographical details, or should I fictionalize the man out of all recognition? I'm so glad you asked. The short answer is, "Yes, you can safely resurrect a dead person in your fiction." The right of privacy (the right to be left alone) does not apply after death, and the right of publicity (the right to control the commercial exploitation of your name or persona) usually does not extend beyond death (and it's very unlikely in this case, especially if it's clear it's a work of fiction).  In addition, you cannot defame a dead person. Since you are a professional, your book contract will likely contain a provision that you must pay legal fees if anybody sues you over the content. Although you should feel fairly certain that you will not run into problems, keep in mind that the Dear Rich staff does not have all the facts and has not reviewed your work blah blah blah. In other words, we cannot guarantee your outcome, although we would feel confident doing it ourselves. (In fact we're thinking about writing a novel about Richard James, co-inventor of the Slinky, who, in the midst of a mid-life crisis, left the wife and kids to join enthusiastic evangelicals in Bolivia. Then, his wife turned the company around and made the Slinky a world-wide phenomenon. But I guess we digress.) Ennyway, don't worry about it. Go write a great novel.

Thursday, April 23, 2009

Who Owns Software Created After Hours

Dear Rich: Who owns the rights to software that is developed voluntarily and during one's own free time (after work hours) but who offers use of the software to his employer? I'm so glad you asked. As a general rule, if the software is not something you would create in the course of your employment and you created it on your own time, using your own equipment, then you own it. If you let your employer use it, then you have granted a non-exclusive implied license. To get a more comprehensive answer, the Dear Rich staff would need to know: 
  • Did you create the software at work (or using work equipment)? 
  • Does the software use code or trade secrets owned by or developed for your employer? 
  • Did you sign an employment agreement that discusses ownership of employee creations? 
  • Does your employee handbook at work have rules regarding employee-created innovations?
If the answers are all, "No," then you own the rights. If you answered "Yes" to some or all of the questions, you may still own the rights but you will need to sort out some murkier issues. You can find an explanation for all these principles in my book, Profit From Your Idea. (Try searching inside the book using Google Book Search). Keep in mind that even if your employer owned the rights, you might still be able to earn revenue from the software.

Wednesday, April 22, 2009

Provisional Patent Application on Someone Else's Idea

Dear Rich: A former co-worker developed a new business idea. I signed an NDA and we both worked on commercializing the idea and planned to form a startup. He lost interest. An attorney reviewed the now-expired NDA and said I was fine to pursue the idea on my own, that I was under no obligation by the NDA. Can I file a provisional patent on the business idea? I would like to protect the idea by fixing a date in case I decide to file a formal patent application within the year. Any thoughts? Our first thought is that since you mentioned that you've already hired an attorney, why not ask your attorney whether to file? The Dear Rich staff provides helpful information, but your attorney knows more details about your case and could provide specific, client-centric advice (and probably has malpractice insurance to boot). Our second thought is that there is no such thing as a "provisional patent" (a common misconception). There is only a provisional patent application (or PPA) -- a document that establishes an official U.S. patent application filing date. (Nolo offers a free guide to PPAs that you can download here.) 
As for filing your PPA with the USPTO, the PPA must be filed in the name of the inventor (or a co-inventor). A co-inventor is someone who contributes at least one novel and non-obvious concept that makes the invention patentable. If you didn't add anything patentable to the concept -- no Eureka! moments -- the PPA must be filed in the name of your co-worker. As for preserving the date of invention, you don't need a PPA to do so. Many inventors preserve their dates via an inventor's notebook. The important thing to keep in mind is that if you publicize or commercialize the idea, a patent application would have to be filed within one year in order to preserve patent rights. One way to avoid potential hassles is to work out a joint-ownership agreement with your former co-worker that will provide you with the right to exploit the idea while compensating him.

Tuesday, April 21, 2009

Song Recording in South Africa

Dear Rich: I am in South Africa (where the copyright act is 21 pages of legal jargon) and my husband and I are looking at recording a Christmas CD of tracks like Have Yourself a Merry Little Christmas, The Christmas Song, Let It Snow, Winter Wonderland, along with public domain carols such as Silent Night, etc. We will probably not even do more that 300 units and we would like to go about it the right way. What would the copyright issues be on non-public domain songs and where does one even begin looking? I'm so glad you asked. Although our blog focuses on U.S. law, the Dear Rich staff is happy to look into international rules (even if it does take three months to answer your query!). In South Africa, as in the U.S., any reproductions of songs on physical media (like CDs) requires that you obtain a compulsory mechanical license. The amount you pay per CD is set by the South African government. The easiest way to get the license appears to be using this form (PDF) which is processed by SAMRO (South African Music Rights Organization). You can find more South African musical resources here

Looking for Your Dear Rich Question?

Dear Rich: I wrote a question to you in January and still haven't seen a response.  How long does it take to get an answer? I'm so glad you asked. The Dear Rich staff  hopes to answer all questions (unless there's something weird going on... like you're trying to get us to do your homework for law school). Unfortunately, we've got a big backlog. There's currently an eight week delay. We're working on correcting that with a new and un-patentable speed answering program. Please don't give up! You may have noticed that sometimes we answer questions out of order. This happens if (1) we know you and feel personally obligated, (2) you are famous and we are trying to please you (3) the matter is of great and immediate relevance to many readers, or (4) your question is really easy to answer. Other than that, all questions are created equal and we will diligently attempt to answer them in order (while keeping it fresh and funky).

Monday, April 20, 2009

Repurposing Music Memorabilia

Dear Rich: I just came across your blog entry on repurposed goods and the first sale doctrine. My friend and I are contemplating repurposing music memorabilia into household items using recycled products -- for instance, re-covering a garbage pail with old photos of hair metal bands and selling it at a craft show. Will we run into problems and where can we find more information? I'm so glad you asked. The short answer is, "No, you will not run into problems selling one-of-a-kind repurposed goods." You will only run into problems if you make it seem as if the hair metal band endorses your products or is the source of your products. You can find more information about the legal issues in my book, Getting Permission. As for the Dear Rich staff's recommended choices for "can coverage" -- that would be CinderellaPoisonRATTMotley Crue,  Dokken,  Tesla, and the oft-forgotten (perhaps for good reason) W.A.S.P. 

Friday, April 17, 2009

Quasi Celebrity in Title of Movie

Dear Rich: I have a question. If one uses the name of a quasi-celebrity in the title of a movie that parodies subject matter (organized crime, for example), is one protected under the fair use doctrine? I'm so glad you asked. The fair use doctrine has nothing to do with the use of a name in a movie title. (Copyright does not protect titles.) The fair use defense can only be used when accused of stealing copyrighted expression -- for example, taking text from a book, or a photo from a magazine.
The use of the name may trigger a claim under the right of publicity under which anyone (celebrity, quasi-celebrity, or non-celebrity) can sue if their name or image is used to imply endorsement of a product or service. If it's clearly a parody (or obvious that the title doesn't imply the quasi-celebrity's endorsement) you -- or should we say, "one" -- would likely prevail in a lawsuit under free speech principles. For example, John Gotti's name  has been used in the title of parodiesbiopics, and documentaries without any apparent repercussions. All of this information may prove academic, however, as the Dear Rich staff wonders whether a member of an organized crime family will bother pursuing intellectual property rights, when they have other tried and true methods of enforcement.  

Thursday, April 16, 2009

Consent and Release for Documentary Interview Subject

Dear Rich: I have a friend who's working on a documentary and he will be interviewing a lot of people. He wants a form (assuming one is necessary) that basically gives him the proper rights to use the footage from the interviews. Can you help? Absolutely. Releases and consents are not always required -- particularly if the interview is for informational purposes such as a documentary film or news article. Sorting out the difference between a commercial or informational use can be confusing and you're usually best off getting releases whenever possible. According to the Dear Rich staff, if you want to keep things very simple, you can start the interview by filming a video consent -- for example, stating, "As you know we're making a documentary film and by participating, you consent to our use of your image and words in that documentary, no matter what form it is in or how it is distributed. Is that okay with you?" If you want a more formal full-blown universal release -- for example, to show an insurer or a company that acquires distribution -- use the form (and explanation) shown below (it's also posted here). 
All-Purpose Interview Release
This is an all-purpose release to be used in the event you are interviewing someone for a book, podcast, video, or any other work in which you must obtain consent. You don't always need more, so to learn more, check out my Nolo book, Getting Permission: How to Clear Copyrighted Works.

Trademarks for Music Business Merchandise

Dear Rich: I have a registered trademark for my music business. The registration is in Classes 9 and 16 (for recordings and sheet music). I would like to begin a line of promotional merchandise (mugs, T-shirts, etc.). Would I need to add a new class to my trademark to do this? Congratulations on acquiring federal trademark registrations. The short answer to your question is, 'yes' (or maybe 'no'). Yes, if you wanted the benefits of federal trademark registration, you would need to apply in multiple classes -- for example Class 25 (t-shirts), Class 21 (coffee mugs), and Class 28 (teddy bears). To accomplish this online, you would begin an application using the TEAS system. When you are asked to "Add Goods/Services" enter the search terms for the various merchandise you want to register and check the appropriate boxes (see below) and when done, click "Insert Checked Entries." All of the checked classes will be entered for your goods or services. (If you are selling t-shirts now and intend to sell teddy bears in the future, then follow the online instructions to indicate the different filing basis for each class of goods.)
At between $275 and $325 per class, the Dear Rich staff feels that your registration can get kind of expensive. On the other hand, you can enforce trademark rights without a federal registration. In other words, you don't need the registration in these classes in order to sell the goods. For example, you can stop others from infringing under common law trademark rights, and you can possibly stop others from registering the same name in these merchandise classes by arguing that it is likely that your business will expand to offer merchandise. So, if money is tight, you might want to wait on the registration (or at least register only the class for the item that you find to be most popular). On the other hand, if you're flush with cash (or babies), and business is going well, then the registration may be worth the investment.

Wednesday, April 15, 2009

Inheriting a Copyright

Dear Rich: My father recently passed away. He was the author of a "how to" book that he self-published and also was published by Scribner's back in the '70s and '80s. The copyright was renewed in 1999 because the initial copyright was in 1971. My sisters and I are his heirs. Do we also inherit that copyright and, if so, is there anything we need to do at this time? We may be interested in further publication at some point. The short answers to your questions are: (1) yes, you and your sisters probably own the copyright, and (2) if you want to document the transfer, you should record your documentation at the U.S. Copyright Office as explained in this helpful circular (PDF). You will need to prepare a document cover sheet (PDF). A copyright -- though it is intangible property -- is generally treated like traditional tangible property for estate planning purposes. So, if you and your sisters are the heirs, the copyright would be part of the estate and pass to you. We're assuming two things: that the copyright was not specifically mentioned in the will as a bequest to a third party; and your father did not make an agreement with a third party to transfer ownership of the copyright outside the will. (According to the Dear Rich staff, if there wasn't a will, you and your sisters would likely still inherit the copyright, but it depends on your state's intestate rules.) By the way, if readers are seeking information how to best leave a copyright as an inheritance, check out this nice article (and accompanying PDF) from ASCAP.

Monday, April 13, 2009

Re-Selling iPods With Pre-Loaded Licensed Content

Dear Rich: I have a question. If I license audio or video content, can I load an iPod with that licensed content and resell it? I'm so glad you asked. The short answer is that it depends what you mean by "licensed content." When you buy the Iron Man movie from the iTunes store, you're really licensing it, and you can't resell that type of "licensed content" on your iPod. But if you enter into a license agreement with the owners of Iron Man that specifically permits reproduction and resale on the iPod, then, yes, you can resell that type of licensed content. Similarly, if your band wanted to sell iPods pre-loaded with its music and videos, that shouldn't be an issue (assuming your band owns all rights to its content). But beware starting one of the many business that engage in selling pre-loaded iPods. According to the Dear Rich staff, this is one of the cloudier issues of copyright law and there is no case law that directly answers your question. Note that companies that rip user-owned DVDs to pre-loaded iPods have faced the wrath of the MPAA. Also, as we noted in a previous post, when reselling iPods, you should avoid any implication that you are a licensed Apple reseller or in any way affiliated with Apple.

Friday, April 10, 2009

'Patent Pending' Infringement?

[Note to readers: Day 5 of anti-celebrity week and our experiment is proving to be a disaster. The Dear Rich staff finds itself even more obsessed with celebrity questions including: Do celebrities smell worse than the rest of us? And does anybody have time to read through five months of MC Hammer tweets?]

Dear Rich: I received a "Patent Pending" on an item in November 2008. I have since been exploring the possibilities of filing a full patent. I have sold my item on eBay, as well as presenting it to large companies. Now I've found someone on eBay who has copied my idea. Of course, it's not as good. They haven't put in all the hours of perfecting it and making it store quality, but they copied it all the same. What do I do next? I've been told to write a "cease and desist" letter before hiring an attorney. I've worked without an attorney so far because I've been putting all the money I have into my product. But I will hire one if I have to. I'm so glad you asked. We're sorry to learn that someone is ripping off your hard work, but the short answer is that there is nothing you can presently do under patent law to stop someone from copying your invention. "Patent pending status" -- which is achieved by filing either a regular patent application (RPA) or (as in your case) a provisional patent application (PPA) -- puts the world on notice that you have applied for a patent. Until a patent is granted, you cannot use patent law to stop anyone. There is one twist: If your RPA is published (which usually occurs 18 months after filing the RPA) and the infringer is made aware of the publication, you can later sue (after the patent is issued) and collect damages for the period starting with the date of notification. Even though you cannot pursue the infringer under patent law, you may, however, have a claim that they copied your trademark or your copyrighted designs, or they used unlawful means to obtain your trade secrets.

Wednesday, April 8, 2009

Theft of Website Code

[Note to our readers: This is day three in our anti-celebrity week and the effects are beginning to be felt by the Dear Rich staff: one staffer has departed for a research job at TMZ, another was found watching DWTS, and a third was caught reading about Lindsay Lohan's possible restraining order on her iPhone. For those of you who've taken up our challenge, remember: one day at a time.]  

Dear Rich: A competitive website stole my website design and code. Their site looks nearly exactly like mine except that they changed the colors. They even have my programmer's comments in their HTML. It took me weeks to come up with a unique and professional-looking design that I was happy with, and I coded my site entirely by hand. I'm so angry about this. They're basically using my hard work to attract customers... and even taking some business that I could be getting as we offer the same service! I wrote to them, but they're ignoring my emails. Would this constitute an infringement? Is there anything, short of a lawsuit, that I could do to make them change their website design? I'm so glad you asked. The short answers are: (1) it is probably an infringement; and (2) if they are blowing off your letters, they will most likely not stop unless you hire an attorney (and even then, there are no guarantees).

We respect your hard work coding your website by hand. But you should be aware that rights are not granted for "sweat of the brow." You will only have a defensible copyright if your code is original (and meets other copyright standards) and you can prove your competitor had access to your work and copied it (which sounds like it's not too difficult). The Dear Rich staff recommends that you preserve all evidence of the infringement by creating snapshots of their site and its underlying code. File a registration for your website code and appearance. You can review the rules in Circular 66: Copyright Registration for Online Works (PDF). That will cost under $50 and may take several months to issue. (If you can afford it and plan to sue, consider expediting the copyright registration). You have copyright regardless of whether you register, but you will need the certificate to file a lawsuit (and the presence of the certificate sometimes sways infringers).
You may also have other claims besides copyright infringement against your competitor, who may be violating state and federal unfair competition laws which prohibit businesses from acting unfairly or deceiving consumers. Your choices of action are:
  1. Write another letter to the website owner and explain that you have applied  for copyright registration. Don't threaten a lawsuit.  Instead, state the basis for your claims, what you want changed (or how else you want the matter resolved), and something to the effect that "you believe this can be resolved without litigation, but if it cannot, you are prepared to pursue your legal options." That language may prevent a declaratory action, an attempt by the other side file against you in its local court house.
  2. Consult with a lawyer and have the lawyer write a cease and desist letter. This is most likely to have an effect.
  3. If the website is hosted by a third-party online service provider, you can take the approach shown here. However, if the other side challenges you with a counter-notice, you will have to file a lawsuit to back up your claims.

Tuesday, April 7, 2009

Panoramafreiheit and (more) about Buildings and Photos

Dear Rich: I wanted to point out an inaccuracy in your response to the posting from April 3rd concerning "permission to reproduce museum works." While in the U.S., photos of the outside of buildings accessible by the public are exempted from copyright, the same is not true in many foreign countries. As of 2001, at least, France was once of those places. Thanks for your comments. The Dear Rich staff sometimes suffers from ethnocentrism. Our response (now corrected) was based on U.S. Copyright law. As you point out, some European nations, notably France and Italy, place limitations on the photographing of public buildings. The general principle, referred to as panoramafreiheit in Germany (panorama freedom), is discussed in detail here.

International Business Name Trademark Inquiry

[Note to readers: This is day #4 of anti-celebrity week and the Dear Rich staff is currently pondering more celebrity issues including: (1) Are celebrities bad for children?,  and (2) Do celebrities make better diet wafflles? More next week ....]
Dear Rich: Can you legally have a business name in Minnesota, USA that is the same as another company's name in Europe? They are both a similar industry (holistic health advocacy products and services, and creative arts services and products including writing, art, inventing, verses, music, poetry, and homeopathy). Does it also matter if both companies are the same type of business entity (limited liability company)? How can I find out if the other company has an international trademark (as I might like to get a U.S./international trademark)? I'm so glad you asked. The answer to your questions (in order of difficulty) are: No, it doesn't matter if both companies are LLCs. Yes, a U.S. company can have the same business name and/or trademark as a foreign company. There will be no conflicts if the services or products are unrelated. If the services or products are related, there will be no problem if each company operates within its geographical region and doesn't compete against the other in the other party's region.
Although you maintain that both companies offer the same products and services, your description of the services is so broad it's impossible to tell whether there really would be a conflict. There is no such thing as an international trademark. There is a centralized trademark application system for citizens of countries that participate in the Madrid Arrangement on International Registration of Trademarks. You can learn about the system, here, and about how U.S. citizens can participate, here. You can find out more about the other side's trademarks either at the U.S. trademark records at the USPTO or at foreign trademark office websites (here's a directory). By the way, have we mentioned that Nolo recently unleashed its online trademark registration application?

Monday, April 6, 2009

Trademark Specimen for Software Development Services

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...
Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration. 

Friday, April 3, 2009

More songs about buildings and copyrights

Hello Rich: I have a few questions. (1) Is a travel brochure created by a chamber of commerce a commercial or editorial publication? (2) I was on some private property doing a real estate tour and took some photos of a backyard of a nearby home that was beautifully landscaped. Can I reproduce that image? As for question one, we'd have to see the brochure. In any case, the categorization (commercial or editorial) only matters for purposes of using another company's trademark, and our guess is that any company whose trademark appears in a chamber of commerce brochure won't object. As for question two, you can find the details about photography of buildings in a previous entry. According to the Dear Rich staff, unless you're invading somebody's privacytrespassing, or the picture contains some copyrightable element (for example, a copyrighted lawn ornament), you probably won't run into a problem.

Permission to Reproduce Museum Works

Dear Rich: I am a U.S. citizen temporarily living in Paris for a couple years. I want to make good use of my time by putting together a guidebook to all the museums in town. I'd like to include photos of both the front facade of the museums as well as of some select pieces on display within. Do I have to secure the permission of each museum to do this? [Note: Corrected 4/7/09] I'm so glad you asked. You may need permission to photograph the facades and appearance -- see our blog entry -- and the museum may control the right to reproduce photos of the items on display. Sometimes the museum controls the copyright under an agreement, and sometimes it has nothing to do with copyright; it's all about access -- that is, if you want to enter the museum, you must agree not to photo inside. That's often because museums earn substantial revenue from the sale of their "official photos"and they may want you to license those. Plus, flash photography can be damaging to many antique works of art (though that doesn't stop some of the less preservation-minded visitors). Even if the museum does not control access or copyright, you will still need permission to reproduce any artwork that is not in the public domain. We wish it wasn't so, but the Dear Rich staff feels a creeping sense of boredom with this answer -- perhaps because we addressed similar issues in this post.

Thursday, April 2, 2009

Trademark for Online Game Guild

Dear Rich: I'm one of the founders of a group of people who play online games together. We formed in 1997 under the name Shadowclan and have grown and progressed since then. We own both and (and have for many years) and have an extensive website and forums. We also have a page about us on Wikipedia and have created t-shirts with our name on two different occasions over the past few years. We've never applied for any sort of official recognition, but I was wondering about any sort of default protections we might have in regards to usage of our name. In particular, what if other groups of players are using our name in an unauthorized fashion in online games? I'm so glad you asked. The short answers to your questions are that you may have trademark rights, and stopping others will require taking a few steps (and perhaps hiring an attorney). Here are some of the issues you must deal with:
(1) Although the gaming world sees you as a clan or guild, Shadowclan (or at least one of its members) must manifest itself in a traditional legal form in order to register and enforce trademark rights. (It's a little bit like the problem Zorro or Superman might have enforcing their trademarks.) In other words, Shadowclan must register with the USPTO as an individual (sole proprietor), partnership, LLC, or some for-profit or nonprofit variation. If the guild is a partnership (one way to handle it) then you're in a situation similar to a band of musicians who must decide who controls the rights to their name, and plan for what happens if original members leave and other members join. 

(2) The Dear Rich staff has determined that there are no federal registrations for the term Shadowclan. However, that may soon change with the release of a new video game. In addition, it appears as someone is using the name on merchandise. Again, registration is the best step to take if you want to enforce rights. You must determine what type of services or goods are associated with your group and register accordingly. (This Nolo book may help.) You can only enforce rights against those who offer similar or related goods and services.

(3) A reader (thanks Kurt) has informed us that a guild, The Syndicate, has acquired a federal registration (No. 3027852) for "entertainment services, namely, an online gaming guild providing in game opportunities for proliferating game expertise and camaraderie among gamers supported by a web site featuring multimedia materials." That's good news as you have a precedent for registration.

(4) By the way, although a service mark is a solid choice, another consideration is to pursue a "collective mark." A common use of collective marks is to show membership in a union, association, or other organization. Collective marks are entitled to registration and the same federal protection as other types of marks. With a collective mark, you can prevent someone from identifying themselves as a member of your organization (if they're not.)