Friday, July 31, 2009

Permission Form to Publish Pix @ Website

Dear Rich: I am looking for a very simple permission slip that will, when signed, allow us to publish pictures taken during church events to an events page and special pages of our website. Is there such a thing? The Dear Rich staff has dug deep into its volumes of legal blather and pulled out the following basic permission form, modified from an agreement in our helpful tome, Getting Permission. This is a very simple photo permission agreement and should be used only for republishing someone's photograph at a website. If a fee is charged, you can add a statement regarding that information and if a photo credit is to be provided, list that somewhere in the agreement -- for example, "Photographer shall be credited as follows: 'Photo Copyright 2009 Jim Smith.'" If you need more than this or are concerned about legal rights, etc. review the book.Simple Photo Permission Agreement for Use at Website


Thursday, July 30, 2009

"Borrowing" Plot and Characters

Dear Rich: I was going to write a book that borrows the plot of another book partially. The book will give credit to the original author and will refer to characters in the original book by name. Is this OK or forbidden? Let's start with a question: Forgetting about copyright for a moment, if you were the author of a book and someone "borrowed" your plot and characters in another book, how would you feel? And not only that, what if the person who copied your stuff credits you -- as if you endorsed the whole thing. If you're like most authors, you'd probably be mad. You'd probably talk to a lawyer (or write to the Dear Rich Staff). The lawyer would tell you that it's probably an infringement but no one can predict with certainty whether it is or isn't (or whether it's a fair use). Our guess is that you would be so mad that you would file a lawsuit. 
Who Will Publish Your Book?
Okay, so let's assume that the author files a lawsuit. Your publisher -- assuming you were lucky enough to find one in these troublesome days of publishing -- (or your publisher's insurer) would likely ask you to pay the costs of the lawsuit based on the indemnity provision in your contract. So even if you win the lawsuit -- or you settle as they did in this case -- you probably will have given up most of your royalties to pay the attorneys. And if you lose the lawsuit, -- as in this case -- then you pay the attorneys, and your book goes unpublished. 
Can You Win The Lawsuit?
Okay, now for the fine print. Is it legally permissible to borrow? Maybe. Some plots -- boy meets girl, boy loses girl, boy gets girl -- and some characters -- good cop, bad cop -- are so stock, that they are considered merely "ideas," not original expressions -- a theory best expressed in this case. In other cases, the author may create something transformative that qualifies as a fair use. (Keep in mind these are issues raised at trial, so the attorney is billing as you prove your point.) There are many cases on the subject of borrowing plot and characters and you may want to peruse a copyright treatise before penning your opus. And of course, as always, disregard all of the legal blather, above, if the book or character you are copying -- for example, Sherlock Holmes --  is in the public domain.

Wednesday, July 29, 2009

Clown Law: No Laughing Matter :-}

Dear Rich (and Staff): Karla is a wannabe comedienne who's developed "Karla Klown," a unique and highly recognizable costume/mime act. To try it out, she goes to Times Square where she's videotaped by both tourists and a TV reporter wandering by. People laugh hysterically when they see Karla's persona on TV and in YouTube videos but they have no idea who they're looking at. So someone decides to manufacture thousands of T-shirts bearing her likeness. What should Karla do? How long would it take to trademark the "Karla Klown" persona and would it be worth it? Once "Karla Klown" appears on stage or television, is Karla granted automatic control of the commercial use of her likeness by virtue of established public exposure?  The short answers to Karla's question are: (1) if Karla has been on television and achieved some notoriety for her appearances she may be able to prevent others from copying her claiming unfair competition and violation of her right of publicity; (2) Karla can't register her persona as a trademark but she can register her name and logo (for example, her image in makeup) for sale on goods such as t-shirts. The process costs approximately $300 per class of goods or services and takes about nine months to a year. (You can learn more about trademark registration here); and (3) the point at which Karla obtains a right of publicity for the exploitation of her persona depends on several factors, described below. 
The Other Carla
Before we leave Klown-land for Legal-land, is Karla aware of Carla the Clown (aka Carla the Clown of Love). Unless Carla and Karla are the same -- and the Dear Rich staff assumes they're not -- then the two clowns may be headed for a celebrity clown smackdown. The rights to the name trademark (soundalikes matter) will go to the first person to offer clown services in the geographic region (the name does not yet appear to be federally registered). . Some clowns have not been afraid to assert trademark rights but Karla may want to consult a lawyer before proceeding.
A Clown's Publicity Rights
Whether it's Krusty, Bozo, or Weary Willie, one of the key factors in asserting a right of publicity is to popularize that clown so that it is "identifiable" by the public.  When a performer's persona is embodied in a specific role, make-up, or costume, the question is not whether the performer is identifiable under the make-up, but whether the performer and the role are inseparable. For example, in a 1994 case, a court ruled that Spanky McFarland's character from the Our Gang comedies was so closely identifiable with him that it was inseparable from the actor's own public image and on that basis his estate could proceed with a right of publicity claim. So if Karla is "inextricably identified" with a specific performer, then Karla has secured a right of publicity. If not, then ..... 

Tuesday, July 28, 2009

'Breaker Copies' and the First Sale Doctrine

Dear Rich: On many of the largest online book sites one can select a category called "breaker copy," a book that has been damaged such that it has little value to a collector, but it contains plates and or vintage prints which may then be removed and sold hence the name "breaker copy." There is a huge market for these prints on eBay and other auction sites. My question is, does this fall under the first sale rule or is it a copyright violation? The short answer is that the practice of breaking apart books and selling the components requires a long answer. The Dear Rich staff is sorry to have to drag you through the following sleep-inducing explanation but this area of the law is not fully settled.
What's the First Sale Doctrine?
The first sale doctrine guarantees you the right "to sell or otherwise dispose" of your books, movies and music, etc. But in two California cases, (Mirage and Greenwich Workshop) federal courts ruled that ripping out images from a book and reselling them in frames is not permitted under the first sale doctrine because the seller has created derivative works. A New York court seemed to agree with the California rulings, although that case involved a company that bought posters and then resold them after making them appear like oil paintings on canvas.
The Trouble with the California Cases
The trouble with the California cases is their theory about derivative works. Copyright scholar Melville Nimmer disagreed with it and some courts do not seem to follow it. One court  said that sticking something in a frame is a "mundane" act (don't tell that to these people) and doesn't demonstrate the minimum level of creativity required to create a derivative work.  An Illinois case (Deck the Wallsheld that the practice of cracking open a box of notecards and mounting them on tiles was permissible under the first sale doctrine (a ruling supported by a Texas case, C.M. Paula Co. v. Logancited by the Supreme Court).
What Should You Do?
In summary, you are likely to be headed for a problem if sued in California (or the 9th Circuit).  In other parts of the country, it's murkier. Copyright owners may threaten a lawsuit but not file, concerned they could set a bad precedent. One thing seems certain, you will always be more of a target if you are selling a lot of works by a particular artist -- for example, the collected works of Patrick Nagel vs. a collection of cubist art. And of course many works are in the public domain and you are free to reproduce those without any concerns about the pesky first sale doctrine.

Monday, July 27, 2009

'That Guy' and Copyright: Short Phrase Protection

Dear Rich: I have a blog where I post original satirical and observational pieces using a common phrase ("that guy" as in "you might be 'that guy' if..."). I was recently contacted by a radio personality halfway across the country who stated my material infringed upon his copyrighted recordings (two minute radio bits on "that guy"). After reviewing a sample recording he provided, the only discernible similarity I could find was the use of the common phrase ('that guy'). His format, delivery, tone, etc. are very different from the content and writing style of my blog. It was my impression common phrases are not capable of being copyrighted. Additionally, I believe even if he was able to copyright some version of the common phrase, my blog would fall under fair use. The short answer is that whether you use "that guy," "this guy," "that girl," or even "that's cat," copyright protection is not available for short phrases or single words. (Check out our article on the subject.) If that's all that your blog and the radio guy's shows have in common, there's no copyright infringement. (Fair use is not likely to be an issue because it doesn't appear as if you are borrowing any of the radio guy's material.) 
Trademarks and Other Claims
That isn't to say you can't run into a problem under trademark law or the right of publicity. There are many registered trademarks for "that guy" for jewelry, bumper stickers, coasters, decals, headbands, men's clothing and for a service identifying character actors (y'know, that guy). The Department of Defense even owns one for educational videos about alcohol consumption (oh, that guy!). However the unofficial search by the Dear Rich Staff couldn't find any registrations that would interfere with your rights to publish a blog. That isn't to say that someone with enough money and too much time on their hands might bring a lawsuit based on unfair competition or some other theory but the chances for success seem slim based on the facts in your letter. What's the video got to do with your question? This guy is one of our favorite "that guys."

Friday, July 24, 2009

Selling Michael Jackson Jewelry

Dear Rich: I have questions: is it legal to sell jewelry with Michael Jackson's pictures? The images are all over and I wonder if it is legal. What if the seller is just charging for the craft and not for the image? Is that OK and legal? Final question, is it OK to buy these jewelry items or is the buyer breaking the law as well?  (1) Selling MJ jewelry probably violates Jackson's trademark rights (hey, if you're in D.C., check out the USPTO tribute), his right of publicity (which passed to Jackson's estate under California law) and may also violate copyright law, unless permitted as a fair use.  (2) We don't understand your second question and we don't think a judge would either. If a crafts artist includes an infringing work on its product, it's an infringement no matter how the price is explained. Otherwise, bootleg DVD sellers could claim the buyer was only paying for the DVD not the pirated movie. (3) In some instances the buyer of an infringing work may violate copyright law depending on the intent and use of the purchase -- for example, if the buyer resells it, displays it or in any way contributes to or encourages the infringement. The pursuit and prosecution of buyers is not common. Copyright owners are more interested in sellers of infringing merchandise. So, if it's illegal, you may be wondering why the estate doesn't do something to stop the tsunami of infringements. Probably it's so overwhelming that if enforcement is taking place, it's for the most egregious and damaging offenses.

Beat It: Finding MJ Imagery
By the way, the photo above by Dutch photographer Sjors Provoost is one of a few MJ-related images available for commercial reuse under the terms of a Creative Commons license. To find these re-usable images, begin your search using Google Image Search, then click Advanced Image Search and under "Usage Rights" choose the drop down that applies for your search -- for example, "labeled for commercial reuse with modification." Each photo should provide instructions on your rights to reproduce. 

Thursday, July 23, 2009

Dreams of Perpetual Copyright

Dear Rich: What do you dream about? We received this question many months ago and disregarded it since the Dear Rich staff does not address topics that are unrelated to intellectual property. But then, last night we had a dream and felt that it was time to respond. In our dream, we were at a hearing of some sort, it seemed like it could have been in court or maybe a less formal setting (or maybe it switched back and forth). A man with a mustache who looked a lot like Mr. Brewer -- our Dutch neighbor on Long Island who flew for KLM and eventually returned to the Netherlands because he didn't like the direction the U.S. was heading --  was asking about copyright. Apparently, at the hearing we had proposed a staggered system of copyright protection, some types of works getting a shorter term than others depending on the class of works and other factors. (We're not clear on the details but looking back on it, the idea seems subjective and ultimately unworkable.) We must have also proposed that some works achieve perpetual copyright because the Mr. Brewer person asked, "What's an example of a work that would get perpetual protection?" and we responded, "Don't Fear the Reaper." 
Then We Woke Up
The proposal in our dream was unconstitutional. U.S. Copyright (and patents) are premised on protection that is for "limited times," so perpetual copyright would offend our Founding Fathers (not to mention certain copyright gadflies). Other countries have tinkered with the concept though none have embraced it. What we're more interested in is why -- of all the prize winning artwork and music and literature -- our dream counterparts chose Blue Oyster Cult's (sorry, we can't find the umlaut key) 1976 single, Don't Fear the Reaper? (We're talking about the Sandy Pearlman production -- not the live versions). In any case, whether it was the lyrics, the song's tone, the uber-perfect mix, or the ability of the song to age with its audience, it's nice to know that some copyrighted art has a place in the real world and in dreams. 

PS. Thanks to Robert C. re: locating the ümlaüt key. 

Wednesday, July 22, 2009

Can You Waive a Jury Trial in an NDA?

Dear Rich: I have a nondisclosure agreement (NDA) with a provision that includes the following language (which I haven't normally seen before) "[E]ach Party expressly waives any right to a trial by jury in any dispute arising in connection with this Agreement." Is this a common thing to ask? And if it's not by jury trial, then is the dispute simply kept in a courtroom with just a judge for the final decision? The short answers to your question are that (1) it is becoming more common to ask for jury waivers, and (2) yes, if you sign the agreement and a trade secret dispute arises you will have a bench trial in which a judge presides (unless you are in a state court dispute in California or Georgia where pre-dispute contractual waivers are not enforced). It's true that the Seventh Amendment guarantees your right to a jury trial but that right has been chipped away by various rulings. For example, you don't have the right to a jury in a battle over an injunction -- an order by the court to do or not do something. Since injunctions are a key remedy sought in trade secret lawsuits, you won't be giving up that aspect of your potential battle. 
Why Waive the Jury?
Jury waivers are usually sought by corporate entities who perceive that jurors tend to be biased against them, or because of the potential savings in money (less spent on attorney fees), and time (bench trials are much faster), and because of concerns that a jury would not grasp the technical nature of the dispute. These provisions are usually enforceable in NDA agreements (though not in all agreements) and they must be entered into "knowingly and voluntarily."  All that said, another reason to waive the jury trial is so that the Dear Rich Staff will not have to  make so many appearances in the Jury Assembly Room at 850 Bryant Street in San Francisco which is where we are right now. (Yes, the Dear Rich Staff is blogging live from S.F. Jury Duty -- is this the only city where citizens review jury duty like it was a movie? --   and we sure wish the guy next to us would stop trying to brush the potato chip crumbs in our lap -- oh good, he's done!). And oh yeah, our three favorite jury movies: 

Tuesday, July 21, 2009

Can You Plagiarize a Patent Specification?

Dear Rich: I have been working through my patent application and noticed in the prior art that there is good descriptive material that describes my base invention less my unique changes. I purchased the Nolo "Patent it Yourself" book a couple of years ago. The author states, "if you see any prior art patent whose specification contains words, descriptions, and/or drawing figures that you can use in your application, feel free to plagiarize!" Is that legal? The short answer, according to Patent It Yourself author David Pressman is that it is legal to copy elements of patent specifications and drawings. However if the specification or drawings include a copyright notice, then the inventor is claiming copyright and the copyrighted material should not be copied. Pressman states a claim of copyright for a patent application is extremely rare. As we have explained previously according to the U.S. Patent Office, subject to some exceptions, "the text and drawings of a patent are typically not subject to copyright restrictions."  What makes the issue confusing for the Dear Rich staff is that patent examiner regulations (MPEP 1.84 (s)) permit copyright notices and copyright claims regarding authorship in patent text or drawings. There's also the 2003 case, Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003). In that case, the Seventh Circuit acknowledged the copyrightability of an inventor's patent drawings (although it ruled against the inventor as to the issue of infringement). 

Monday, July 20, 2009

Stormtrooper Pin Up Infringement

Dear Rich: I did a photo shoot for a pin up site where I dressed as a stormtrooper and took the costume off in pieces throughout the shoot. I am a girl, so clearly not one of George Lucas's original stormtroopers, just a girl dressed as one. However, I know that George Lucas has the copyright on stormtroopers, so I was wondering how the law stands. The short answer to your question is that you probably won't run into a problem. Your use is an infringement -- Lucas controls the exclusive right to reproduce the stormtrooper imagery. But if we were a betting blog, we'd bet that Lucas' lawyers probably won't notice (or care about your use). The Lucas legal team is tolerant of many personal uses of stormtrooper costumes and is more likely to take action if the infringement has a damaging impact on their properties. For example, Lucasfilm has gone after those who made unauthorized stormtrooper costumes, and sellers of knock-off light sabers. Even if the lawyers decide to go after your use, it will likely be done in stages -- that is, you'll be given the opportunity to remove the infringing material first and if you don't, then the legal team may bring out the proton torpedoes. Of course, you can always try the novel fair use argument that removing a character's clothing is ultimately a transformative use. (Just as many have argued that nude dancing is a form of free speech.) As for whether anyone's contemplated female stormtroopers, the Dear Rich staff is informed and believes that there is a  battalion of Femtroopers ready to battle for (or is it against?) the Empire.

Friday, July 17, 2009

T-Shirt License of Artwork

Dear Rich: I am an artist and was recently approached by a woman who wants to use one of my images on t-shirts. She has proposed a simple arrangement doing 24 shirts at a time. As she sells out of one batch, she will make another 24. This is not a million dollar transaction but I have no idea how to respond to it. How do I know what the going rate is? The short answer is that artists get anywhere between 5 to 20% (or more) of the revenue generated by the shirt. It depends on the demand, the size of the print run and your bargaining power. Sometimes the royalty is paid only after costs are deducted; sometimes it is straight off the top. Some online T-shirt merchants even let the artist set the royalty.  
Beyond the Royalty
You should also ask yourself a few questions. Is the amount of money coming in worth your time and energy? What if you're not satisfied with the quality of the reproduction? Will the arrangement preclude you from other more lucrative deals? Do you have any reason to believe the t-shirt maker is not a trustworthy business person? If you have any doubts, it's probably a good idea to make the initial term of the agreement short, perhaps six months to a year (you can always renew). And it's best to keep it nonexclusive as well (you can always amend it later). And as they say in the music business, don't do a handshake deal, get some paper. Below is a sample short form t-shirt license taken from Getting Permission (written by the Dear Rich staff). Explanations for the agreement and a much more detailed long- form merchandise agreement can be found in the book, as well. And of course, make sure your artwork doesn't cross over into personality rights,trademarks, or otherwise illegal content.  

Thursday, July 16, 2009

Near-Dead, Abandoned and Zombie Trademarks

Dear Rich: I'm interested in using a trademark that was registered in 1999 by a low-end department store that has since gone bankrupt. Post-bankruptcy, the mark has been assigned six times.  The current owner appears to be in the business of acquiring trademarks from defunct entities and currently holds approximately 50 marks. I have searched the web for current product use for the brand in the specific class and have found only one very old garment on eBay. If the current owner has not been producing garments using the mark for the past several years, what is my best strategy for using the mark? And for dealing with the registered owner and the USPTO?  How detailed is the USPTO when it comes to proving actual use if the use is disputed? The short answer is that you should probably stay away from trademarks owned by  trademark speculators. These companies usually acquire trademarks at bargain basement prices from bankrupt or defunct companies. Sometimes, the marks are still functioning; sometimes they are zombie trademarks -- abandoned marks that still have brand name recognition (no, we're not talking about Rob Zombie's trademark.) Legally, you may have a strong argument that a particular mark has been abandoned. But if it is still 'Live' on the Principal Register, you will have an expensive and uphill battle prying the mark away from a speculator. 
Burden of Proving Abandonment
Your challenge is proving the registered mark is abandoned. Federal law states that abandonment occurs when:   
use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.

Essentially, in order to succeed, you must come up with documented evidence that the owner has no intent to resume use. Have you ever tried to prove someone isn't doing something? One court stated that you need evidence that "leaves no room for doubt or speculation." Other courts have described it as a "heavy burden." Essentially, making a claim of abandonment is a risky strategy. (For example, you might think that Chevrolet abandoned the Malibu trademark brand in 1983. But 14 years later they returned with a new model.)

Typically, a company that brokers and collects trademarks has a legal team that is prepared to defend and protect its stash of marks. If you begin using the mark without first challenging the mark, the registered owner may pursue you for infringement. You may attempt a Reverse Pac-Man by proving the owner abandoned the mark, but your merchandise will be in limbo during the proceedings. Alternatively, you could try taking the speculator on directly, either in a proceeding at the USPTO or in a court battle.  The Dear Rich staff wants you to have a litigation-free future and for that reason, we advise you to pick your fights carefully.

Wednesday, July 15, 2009

Patenting Hot Dog Forks

Dear Rich: I am new to this patent stuff. There is a patent on a campfire hot dog fork from the 1980s. I have an enhancement to this type of fork. Do I get someone to market and sell my product or do I need a patent before I do so?  Or should I go with a Provisional Patent? The short answer is that pitching your idea without some form of legal protection -- a signed nondisclosure agreement or some form of patent protection -- may result in the loss of your idea. As for the fork, if the original patent was issued in the 1980s, it is now in the public domain and free for everyone to use. If you patent an enhancement then you will have the exclusive right to that enhancement but not the underlying invention. Before spending any money you should review the "hot dog fork" patent literature as there are many post-1980s hot dog fork patents and inventions (our favorite is the Rolla Roaster). We recommend patent searching at Google. As for whether to market your fork before you patent it, whole books have been written on this subject, including one by the Dear Rich staff. The main thing to keep in mind is that if you disclose your unpatented idea without restrictions, others are free to copy it without breaking the law (sample nondisclosure agreements are here).

No Such Thing as a Provisional Patent
Not to be too nit-picky but there is no such thing as a provisional patent; there is only a provisional patent application (PPA). When you file a PPA, it holds your place in line at the USPTO and allows you to claim patent pending status for a year. If you don't file a regular patent application within a year, the PPA has no value. Nolo offers PPA articlesbooks, and an online PPA filing program.

Tuesday, July 14, 2009

Book Covers in Timeline

Dear Rich: My company is creating a timeline type exhibit in the hallways of a school to commemorate the school's 150th year anniversary. This will be a permanent, museum quality exhibit that will span two walls and will remain in place for at least ten years. We are combining general history with highlights of the past 150 years. As a part of our background collage, may we include images of book covers for such well-known (and world changing) books as "The Origin of Species" and others. Will we need permission? Where do we begin to seek permission if necessary?  The short answer to your question is that you can probably get by without permission. It's true that your reproduction and display amounts to an infringement but odds are that the copyright owners won't learn (or care) about the reproduction and in any case, you have a decent fair use argument as a backup. There is one timeline case in which a court permitted reduced reproductions of concert posters under a fair use defense. Regardless of whether there is a reduction in size, the use seems transformative since you are using the book covers to make a point about your school's history. If you're especially prudent and want to seek permission, book covers published prior to 1923 are in the public domain (and the same is probably true for covers published before 1964). However, popular public domain books are often the subject of multiple covers as you can see from the presentation to the left (top left is the first edition). To obtain permission you would seek out the publisher and ask (most have permissions departments.) If the publisher has disappeared you can document your attempt to locate the owner and then be prepared to pay for any use at a reasonable rate should the copyright owner later appear -- called an orphaned works approach (name check!). By the way the Dear Rich Staff loves timelines (especially when they're about a cool movie director or  TV personality).

Monday, July 13, 2009

Nicknames and Trademarks

Dear Rich: I'm trying to get a trademark for a nickname. The nickname has been seen in newspaper articles and media referring to different individuals who accomplished similar feats throughout the years -- imagine it is a nickname like "Home Run King" (although this is not the nickname). I have done an unprofessional trademark search and it seems that nobody has claimed it as a trademark. My friend is the original record holder of the feats referred to by the nickname. Although others have been called by this nickname over the years, and they have come close, nobody has broken the records earned by my friend to achieve the nickname. Now my friend wants to start selling pictures and memorabilia and he wants the nickname to be only related to his name. (My friend has already got the domain name. What class should my friend file in when seeking a trademark. He may be selling lots of things with his autograph: sports equipment, clothing, and my friend also wants to protect his nickname for writing books and making movies. My friend can only afford to start with one class at the moment. Which one would give the most protection? By the way, is LegalZoom a decent company to use? The short answer to your first question is that you should pick the goods or services that you believe will be most lucrative (and for which you wish to preclude competitive use). It all comes down to how you are currently making money, and the ways in which you have a bona fide intent to make it in the futureFor example, if your friend is currently entertaining at sports memorabilia shows then perhaps you should seek a registration for entertainment services. If you're selling a lot of t-shirts, then that's the way to go. As for books and movies, you cannot obtain a trademark for the single title of a work, so you would not be able to obtain a registration for those goods unless your friend is writing a series of books. 
What Will Happen When You File
We admire your friend for achieving and maintaining a sports record. Alas, that doesn't assure trademark registration for the accompanying nickname. When you apply for federal registration, the examiner will (among other things) check to see if the term is descriptivegeneric or confusingly similar to another competing mark. Usually if the application overcomes these three hurdles, registration is granted. Keep in mind that even if you get a trademark for the nickname, the media can still use the term for editorial purposes -- for example, Sports Illustrated can still refer to other athletes by the nickname. Your registration will only guarantee exclusivity for the goods and services in the class in which you registered.
Trademarks Always Increase Value (NOT!) 
If the record-setting done by your friend is in the past and your friend is no longer well-known, will adding the nickname to merchandise make it more desirable? What's your experience been so far selling merch with the nickname? It's an unfortunate fact that Americans have a short memory (Does anyone remember the most popular actress of the early 40s, nicknamed the "Peek-a-boo Girl"?) 
Filing Your Application
As for using LegalZoom, we must disclaim that the Dear Rich Staff is employed by Nolo, a competitor of LegalZoom that offers a similar program for filing a federal trademark registration. Neither program is necessary for filing -- you can do it yourself at the USPTO and only pay the filing fee. Before using either service, see if you can file by yourself at the USPTO. If that proves too difficult, compare LegalZoom and Nolo to see which offers the most comprehensive help (and post-filing resources). We hope you'll choose Nolo because the Dear Rich Staff devoted considerable effort to providing useful online assistance. Note: No online filing service can guarantee you that the trademark registration will be approved. 

Friday, July 10, 2009

Infringement Myths: 99 Copies

Dear Rich: I'm a sculptor and would like to make reproductions of a bust that I have sculpted, based on a trademarked comic book/movie character, for sale online. I have heard that as long as you produce no more than 99 items that you are allowed to sell these pieces as a "limited artist run" and can thereby avoid any trademark infringement issues.  Is this true?  What recourse do I have if not?  I have seen items that match this description for sale on eBay (for example; a custom sculpture of Spiderman - a licensed Marvel character) and want to make sure that before I do something similar I don't cross any legal firing lines. The short answer to your question is that there is no "99 copies" exception* in trademark or copyright law. (You may be thinking of the 200 copies limitation required to qualify as a "work of visual art." That grants you extra rights as a fine artist but it won't shield you from claims that your work infringes). Making and selling something that's based on someone else's copyright or trademark is most likely an infringement. The Dear Rich Staff believes that seeking permission is probably a waste of time since the movie production company will probably not return your calls. The fact that others are doing something similar on eBay indicates that the people who own the rights for the character are either unaware of these uses or are selectively enforcing rights -- that is they only care about the big fish, not the small ones (You can view eBay's policies, here).  So, although you may cross some "legal firing lines" with your sculpture, it's possible that nobody will shoot at you. 
* This is not to be confused with the bottle/wall limitations expressed here.  

Thursday, July 9, 2009

Trademark in Book Title: Irreparable Harm?

Dear Rich: I have to file a pro se case against an author using my mark in the title of her new book (yet to be published, but much publicized). Can I file for injunctive relief against her publisher, agent, publicist and her all at the same time or would I just file against the publisher? The short answer is that you should only seek an injunction against somebody who is about to cause you immediate harm that cannot be repaired and for which money won't compensate you. So, you'll have to figure out who, amongst your candidates, fits that bill. (We assume you're referring to a preliminary injunction -- an order granted before the trial occurs.) Even if you can prove under trademark law that the use of the mark in the book title is likely to confuse consumers -- and that could be a tough claim to prove -- it doesn't mean that anyone caused you harm that is "irreparable." You're going to have to show up in court and make a strong showing that you're likely to prevail at trial and that if the book is published you're going to really take a serious financial hit. That's a tough argument to win if you haven't made much money with the mark in the past, for example. Since you're already headed uphill as a pro se litigant, the Dear Rich Staff thinks you might want to simplify your litigation by striking the request for a preliminary injunction. Keep in mind that if you lose the battle over the injunction, you're in a very poor strategic place heading for trial. And if you win the battle, the court may require you to post a bond to compensate the publisher for any harm caused by the injunction (in the event that you later lose the case). Ouch!  

Wednesday, July 8, 2009

Service Mark Dispute: Tween vs Radio Syndicator

Dear Rich: I am 12 and I have a radio program that uses the service mark "For Kids ... By Kids." I have been using it since 2005. I have an application in process for the service mark for use in Internet radio. I am affiliated with a radio consultant who is talking to radio stations about licensing my format. In March 2009 a radio network released a new program format that uses my service mark. I sent them a C&D letter and they would not comply as I am not a station in their market. But they do stream on the Internet and use the same service mark and I am a direct competitor, I would say, as I have streamed at since 2005! My lawyer and their lawyers have already talked and they said no, they will continue to use my SM. What should I do now? Wow! First of all, the Dear Rich Staff is impressed. You're 12 and you have your own radio show, you've been to CES (like 4 times), you've interviewed Mitchel Musso (more than once), you can send cease and desist letters, and you know the difference between a service mark and a trademark. (BTW, we're going to refer to trademarks and service marks interchangeably).  
Okay, the short answer to your question is that the only way you're likely to stop the other company's use is to file a lawsuit and win. Since we're not sure about the outcome of that suit and since a lawsuit could cost more than buying a house, the smart thing to do would be to wait to see what happens with your trademark application. If your registration is granted, you'll have a better foundation for your lawsuit. The big question you will need to ask yourself before walking into any court is whether the competitor is hurting your business. Are your fans really likely to be confused? 
What Trademark Rights Do You Have? 
It's possible that your competitor may be waiting to see what happens with your application or may even file papers to oppose the registration. Not all applications are approved. For example, an examiner may object that your trademark describes some aspect of the services (it's considered a non-distinctive or "descriptive" mark). If the examiner objects, you'll need to demonstrate that consumers associate that mark with your services. The examiner will also research other uses of the mark and confusingly similar variations (like BY KIDS ... FOR KIDS) to make sure you have exclusive rights in your field. You're probably aware for example, that PBS uses a similar tag for Zoom. And WBGH owns a federal registration for BY KIDS FOR KIDS for entertainment services (Reg. No. 2691810). There's also a website that uses the acronym BKFK ("By Kids for Kids") and they have a federal registration as well (Reg. No. 3472214). (And there's also a pretty funny parody using the phrase.) We're not sure what all that means for your application, but it's a reminder that getting a registration is not always a sure thing. (You can read more about the trademark application process in this guide prepared by the Dear Rich Staff)  If the application is rejected, your competitor may feel more confident about its use. Without the registration you may still have rights and the geographic location of your uses -- locally, or perhaps over the Internet -- may affect the outcome of any court battles. 
What Trademark Rights Can You Afford? 
Let's say your registration is granted. Great! You will have exclusive rights for broadcasting and streaming over the Internet. But you will also have to take time and money to go after others. And if you win, you may not get back a huge judgment or your attorney fees. That's why we urge you to go slowly. If the competitor doesn't really affect your current or future income and your fans aren't confused, you should probably hold off on doing anything. Whatever you do, don't file the lawsuit just because the competitor makes you mad. As Frank Sinatra once said, "The best revenge is massive success." 
PS If you need help understanding any of the legal words used in this answer, check out Nolo's free Law Dictionary iPhone app. 

Tuesday, July 7, 2009

Q: Why Wasn't Warhol Sued? A: He Was

Dear Rich: Copyright is one of my favorite subjects as I work with students who will soon be school teachers. Here is a question my students have been exploring. Considering all the problems that Shepard Fairey has because of his derivative poster based on a photo of Barack Obama made me wonder, did Andy Warhol's paintings and prints of Campbell's soup cans, Mickey Mouse, Marilyn Monroe get him into trouble with the owners of those original works? The short answer to your question is that Warhol's art has triggered some lawsuits. 
Patricia Caulfield, the photographer whose work was used as the basis of Warhol's flower prints (above) sued in November 1966 and settled for cash and artwork. Warhol's 1964 work, 16 Jackies, was the subject of a lawsuit brought against the Warhol Foundation in 1996 by the photographer of the original Jackie photos. That led the Foundation to sue Warhol's insurer. Warhol was never sued over his Marilyns, which were based on a publicity still of Monroe. We're not sure how Warhol managed the rights for his Mickey Mouse but apparently he didn't run into the same kind of litigation in which 60's cartoonist Dan O'Neill became embroiled. Perhaps because Dan was naughty (parental advisory), and Andy was nice? Campbell's Soup Company didn't litigate; they exploited the efforts of their most famous chicken-noodle fan. The company even offers an Art of Soup contest in collaboration with the Warhol Museum. PS Speaking of cool Warhol collaborations, the Dear Rich Staff recommends this.

Monday, July 6, 2009

Trademarks in iPhone Apps

Dear Rich: I'm working on an iPhone app that uses trademarks from other companies, including Apple. Apple has rejected my app and won't approve it unless I remove these  trademarks. Is that legal? The short answer is that Apple can make you change your app. Developers are bound by Apple's trademark guidelines which are incorporated into your Apple Developer Connection agreement.("You agree to follow Apple's Guidelines For Using Apple Trademarks and Copyrights..."). In addition, Apple will remove or reject apps if it feels that the use of a trademark violates the law (or somebody files a lawsuit). More importantly, as recent rejections indicated, few developers want to get into a public dispute with the App Store team since they control the most lucrative mobile apps gateway. The Dear Rich staff believes that patience, persistence, and unconditional love is the best approach when dealing with an illogical app store rejection.  

Friday, July 3, 2009

All Federal Works in the Public Domain (NOT!)

Dear Rich: Are all works created by the federal government or agents of the federal government automatically in the public domain? Specifically, when the Inauguration Committee commissioned John Williams to arrange "Air and Simple Gifts" is this new work automatically in the public domain and is the recorded inaugural performance also in the public domain?  The short answer to your question is that no, not all federal government works are in the public domain. Those created by federal employees and federal officers in the course of their duties are in the public domain; but contractors who create federal government works sometimes reserve copyright in their work. According to public domain expert Stephen Fishman, it all depends on what the government decides at the time the independent contractor is hired. If the government wants the work to be in the public domain, it can require it; otherwise, the contractor would own the work that's created. That seems to be the case with John Williams' Air and Simple Gifts which is owned by Williams' publisher  Warner-Tamerlane/Marjer Music Corp and can be licensed for reproduction from the Harry Fox Agency. You may also be interested to know that the underlying theme of the piece is borrowed from a shaker hymm, "Simple Gifts" (The Dear Rich Staff assumes that Williams contributed the "Air") "Simple Gifts" was also used by Aaron Copland in his Appalachian Spring. Okay everybody, have a safe Fourth of July. You don't want to have to call on the PI lawyers! (And has it really been a year since we posted this?)

Wednesday, July 1, 2009

Car Used in Graphic Novel

Dear Rich: I'm working on a graphic novel/comic book. One of the characters will be driving a vehicle of a highly recognizable make and model. Are there legal issues in doing this? If needed, I could alter the car to the point that it's more generic. The short answer is that you're okay using a popular make of automobile in your graphic novel or comic (that's why they call them car-toons) or in most any type of fictional or "editorial" work (remember Stephen King's use of a red Plymouth Fury as the villain in his novel, Christine?). A car manufacturer may battle other manufacturers over the appearance, but those design patent or trade dress rights -- for example, the C-scoop on a Ford Mustang -- are rarely asserted against editorial uses. You may run into a problem if you use the image of the car on the cover of your work, or in the advertising and it creates the impression that the manufacturer is associated with or endorses your work. And you probably shouldn't offer merchandise -- for example, a miniature replica of the car. Of course, the use can also be lucrative if you partner with a car company or get involved in movie and TV product placements. The Dear Rich Staff recommends that if you want to avoid any potential C&D correspondence, use a car that's no longer in production and for which no manufacturer is claiming rights -- like our favorite anthropomorphic characters, Sam & Max (above), and their speedy customized DeSoto

Using Amazon Reviewer Quotes on Product

Dear Rich: Can I use the text and names of people who review my product on Amazon? I'd like to put it on our product packaging. The short is answer is 'No.' Even though the reviewer has given Amazon the right to reproduce the content and reviewer's name under Amazon's Conditions of Use*, they haven't given you the same rights. Using the review without permission could open your company up to a claim of violation of the right of publicity or copyright infringement. We normally might not be this paranoid, but companies that sell products are easy targets and the last thing you would want is to recall your packaging in order to accommodate a court order.
Possible workarounds?
Some possible workarounds are to contact the reviewer (usually, there's a way to communicate if you click on the reviewer's name) for permission (an email permission should be fine). If that's not possible, using one or two lines from the review is probably permissible under fair use principles -- although, again, the Dear Rich Staff would counsel against using the reviewer's name without permission. 
*Speaking of Amazon's Conditions of Use ... You might want to think twice before posting a bad review of that new Lindsay Lohan movie. As an Amazon reviewer, you agree to pay for Amazon's court costs and damages if a lawsuit is filed as a result of your comments! Ouch!