Monday, August 31, 2009

More Blogs About Corn and Cord Wood

Dear Rich: You said: "if something is for sale in the U.S., it has a trademark." Nonsense. As to your ear of corn, I have never in my life seen a trademark sticker on an ear of corn. And I grew up in Central Illinois. I don't know what kind of fancy-shmantzy gourmet stores you shop in, but my local supermarket has no trademark stickers on the corn, the green beans, the peppers, the cord wood, etc. How about the farm stand along the road, where the ragged sign simply says "farm stand"? No question that most products sold (surely packaged products) bear a trademark. But to say that all products do is simply unnecessary hyperbole. Oh, and try shopping at the local supermarket along with the plebians. Thanks for all the comments on this issue -- who knew? -- and to avoid any more on this thread, let's throw in the towel and say, "Yes, there are things sold in the U.S. without trademarks." To our regular readers, we're sorry. The Dear Rich staff is here to provide practical answers to reader questions, and not to become involved in what might be perceived as academic discussions, policy issues, or food fights. In any case, allow us to respond to a few of the issues raised by this letter.
"Try Shopping at the Local Supermarket ... "
As our research video (see below) demonstrates, there's no question that the plebian-friendly Safeway, serves up its produce with a heady dose of trademarks (some of which they market to third parties.)  There are store brands, grower brands, and the ubiquitous PLU stickersThese stickers are intended to assist in tracking the produce, and often include a source trademark. (For those tired of peeling off stickers, get ready for tattooed pears.) 
"The Ragged Sign Simply Says 'Farm Stand' ... "
We like your description of the farm stand sign. We can almost see it on the sun-dappled two-lane, right there with the Burma shave signs, and junior's handmade lemonade sign. But is it real or nostalgia? And anyway, if agra-business and local ordinances have not decimated the U.S. farm stand, there's probably a "stealth" trademark traveling with that ear of yellow stuff anyway (considering that 70% of the corn grown in the U.S. is GMO -- please Monsanto, don't sue; we promise to eat our vegetables!). 

Friday, August 28, 2009

Google Settlement: Opt In or Opt Out?

Dear Rich: I received a notice regarding a proposed settlement to a class action lawsuit initiated by the Authors Guild against Google. The notice says that I need to opt *out* if I want to preserve my right to sue Google. I'm confused. I thought that copyright owners have the exclusive right to license their own works. I am not a member of the Authors Guild, so I have not given them the right to initiate infringement lawsuits on my behalf. Shouldn't the notice be asking me to opt *in*? The short answer, unfortunately, is that if you received the notice, you must opt out, not in, to the Google Settlement. Welcome to the world of class actions -- in which strangers who share a common injury or claim can sue on behalf of people like you (considered to be "similarly situated individuals.")
While You Were Sleeping
Sometime -- perhaps while you were sleeping -- you unknowingly joined the class. The original Authors Guild lawsuit against Google was brought on behalf of all persons who owned copyright in a book that was in the University of Michigan library. That class certification may not have affected you --  you would have to check the UM card catalogue. But when Google negotiated the proposed settlement in October 2008, the parties managed to "grow" the class to include anybody with "a U.S. copyright interest in one or more books." That's one of the reasons the Google settlement has become so controversial -- it is, as one writer put it, "a compulsory license to all books in copyright throughout the world forever." 
If You Opt Out ...
Members of a class are given the choice to "opt out" of the proceedings and pursue claims on their own. In other words, you are free to notify the court that you would like to take on Google all by yourself in a separate lawsuit. You may be thinking, what if I don't want to be in the class, and I don't want to take on Google? In other words, 'Why can't everybody just leave me alone?' Unfortunately that option is not available. However, many others are challenging the settlement, and the validity of the class
Why We Liked the 'Class Action' Movie
We love that this movie was actually filmed in San Francisco and shows City Hall before the renovation (and we love the document delivery scene on Bush Street -- or we think it was Bush). But most of all we love that the crew renovated the Beach Chalet (before it was officially renovated) and shot the bar scenes-- including one with a musical performance by Dan Hicks -- in the beautiful muraled lobby across from the Pacfic.  
PS. For those of you who were stirred up by our recent response to the question, 'Does Every Product Have a Trademark?' we'll try to provide further clarification next week.

Thursday, August 27, 2009

Does Every Product Really Have a Trademark?

Dear Rich: In yesterday's blog you said: "all products contain trademarks in some form." Really? What about a stack of cord wood sitting in a grocery store? What about a bin of corn in the grocery store? The short answer to your question is that if something is for sale in the U.S., it has a trademark.
The Corn
After receiving your question, the Dear Rich Staff immediately went to the refrigerator and looked at the two ears of corn recently purchased from the Other Avenues food coop and yes, actually they did contain trademarks -- two to be exact. The small sticker  contained the name of the farm from which the corn originated and a certification mark that authenticated the corn's organic-ness. Ditto for the tomatoes, the kiwis, and the apples. The green beans and mushrooms did not have trademarks on them, although I am informed and believe that the bin from which they were selected at the coop did have the name of the farm from which they originated. 
The Wood
We do not have any cord wood to examine because being from northern California, we avoid using our fireplace for obvious reasons. However, we used to have a wood stove when we lived in Indiana. We never bought cord wood at at the local Ralph's-T-Mart or Wright's IGA  because it was cheaper to buy it from a local who drove it over in a pick up truck emblazoned with "Frank's Firewood," a trademark that permitted us to distinguish Frank from other suppliers. (You are correct, however, that each piece of wood was not marked with a logo -- unlike the engineered wood we buy from Home Depot.) 
Should We Qualify Our Statement?
We suppose we could qualify our statement to say, "Almost all products contain trademarks in some form." But why bother? To qualify the statement implies that we are in denial as to the tsunami of marketing that has pulled us deeper and deeper into the sea of consumption -- all of it inherently dependent on the illusionary power of trademarks. Trademarks allow us to justify our purchases, and that allows us to justify the work we had to do to make that purchase. As our trademark mentor once wrote, "No busy working person in a developed society has hours to spend agonizing anew over every single purchase at the supermarket or elsewhere. Everyone is too busy trying to earn the money to be able to make purchases in the first place."

Wednesday, August 26, 2009

Publish or Perishable: When is a commercial product published?

Dear Rich: I work in a museum and have a question regarding the definition of "publication." Would the date of production for commercially-available products, such as a candy tin, jewelry, or silverware, constitute a publication date as it would for printed materials, such as greeting cards? For example, the item was created in 1955 for mass-distribution and does not have a copyright symbol. I would like to use an image of the work on our non-commercial website as a part of our online collection. PS. The product does not have any visible trademarks. The short answer is that (1) distribution of packaging materials does constitute publication, and (2) you are not likely to run into problems posting 1955 packaging at your museum website. 
Publication of Packaging
Product packaging, like any other copyrighted material, is considered to be published when copies are distributed to the public or offered for sale. You are correct that material published before March 1, 1989 must contain a notice and the failure to do so places the material in the public domain. (The so-called "savings clause" of the 1909 Copyright Act -- which would apply for works without notice published in 1955 -- would not save the packaging from falling into the public domain.) Even if notice were included, it's unlikely the copyright in this work was renewed and even if it was, you have a strong fair use argument. 
Lack of Visible Trademarks
We are confused about your statement that the products contain no visible trademarks. Except for the spate of "generic" products in the late 1970s, all products contain trademarks in some form -- that's what distinguishes them. In some cases, the product's appearance, itself (referred to as trade dress) may be its trademark. Nevertheless, informational (non-competing uses) such as your museum website would not infringe.
Are We Going to Get in Trouble for Publishing Your Question? 
Speaking of 'publication,' are you aware that your email contained a notice at the bottom, that says:
This communication (including any attachments) is intended for the use of the intended recipient(s) only and may contain information that is confidential, privileged or legally protected.
Just so you know, the Dear Rich staff has disregarded this warning and ignored the tautological errors contained therein. (We already have plenty to worry about here at Dear Rich headquarters.)

Tuesday, August 25, 2009

Strike Out: Crafts Artist v. MLB

Dear Rich: My husband has made, but not sold, plaques for our nieces and nephews of their favorite sports team (i.e. Yankees, Giants, Red Sox) as gifts. He carves the logo into wood and then paints them. He has been told by our family and friends, he should make them and sell them at craft fairs. Is this legal? The short answer is that no, it's not legal. The MLB controls all rights to commercially exploit its team names and logos and will hassle those who infringe those rights ... even if it's someone selling MLB fabric tissue box covers on eBay. Of course, in order to get into trouble, somebody would have to find out about your husband's work and complain.  For one-of-a-kind (not mass-produced) work like this, we expect your husband's efforts will be below the MLB's radar (just stay off eBay). 
We could just leave the answer like that -- and you're free to get up and move around the blog if you like -- but your question touches on two sensitive issues for the Dear Rich Staff: (1) How come nobody bought the wonderful book we wrote about crafts law? (2) Why don't we like baseball?
Why Nobody Bought Our Crafts Law Book
The Dear Rich staff has written a lot of books and one of our favorites is the now out-of-print Crafts Law. It was friendly, comprehensive and so helpful. But it didn't sell very well. We tried all kinds of things: promotions at crafts fairs, talking to crafts artists mano-a-mano, and writing columns for a crafts magazine. If you had bought this book and looked for the answer you would have found this helpful excerpt:

"Using trademarks in crafts products. Proceed with caution if you're using trademarks as part of your crafts art -- for example, producing a fabric with a repeating image of the American Express card or producing earrings that feature the Apple computer logo. You may be able to argue that your use is informational and is protected by the First Amendment. However, this argument may be a loser if it looks like you're trading off the success of a trademark rather than commenting upon it. For example, a company that sold trading cards of collectible cars was prohibited from reproducing Chrysler trademarks because Chrysler had already licensed similar collectible products. (Chrysler Corp. v. Newfield Publications Inc., 880 F. Supp. 504 (E.D. MI 1995).) Be aware that making a First Amendment argument means that you've already triggered a company's ire, and you will have to deal with the consequences. This isn't to discourage you from speaking out against corporate branding, just to alert you to the potential morass that awaits if you do."

Anyway... we're not giving up on the crafts world. We're going to improve our crafts book and come out with an all-new version next spring ... so stay tuned!
Why We Don't Like Baseball
We've tried. We enjoyed playing it back in the day. We still try to fit in, often repeating newspaper headlines at lunch meetings -- "I hear Beltram's aiming to rejoin the Mets" or "The Giants better look inward for an opener against the Dodgers." But we lack the honest enthusiasm required. Why? Perhaps it's our upbringing. Perhaps it's our fear of stadiums. Perhaps we're concerned about the environmental impact of all those wooden bats. In any case, we'll look into to it and get back to you.

Sunday, August 23, 2009

Mary Tyler Moore and the Kinko's Konondrum

Dear Rich: I want to take a digital photo of the famous opening shot for the Mary Tyler Moore Show where she tosses her hat up in the air and have that image spread onto a canvas. It would only be reproduced once and hung up at home for display. My problem is that I need to have one of the online companies reproduce this for me as I don't have the equipment to reproduce it onto canvas myself. They are asking if I have legal copyright permission to do this. Do I need it?! The short answer is that you probably don't need permission. Your use is likely excused under fair use principles (we won't go into the boring details). The trouble is that you can't explain that to the reproduction company because they want something in their files that says you have permission so that they can get you to pay for their lawsuit in case Mary (or ABC Family Television) finds out about your painting, decides it's improper and sues the reproduction company -- a situation that is about as unlikely as Mary turning the whole world on with her smile. 
The Kinko's Kondondrum
The Dear Rich Staff refers to your situation as the Kinko's Konondrum -- so named because we once faced this exact situation at a Kinko's (before they were FedExKinko's ... er, FedExOffice) and we tried to explain to the clerk behind the counter that we were the author of a book on copyright and that yes, our use was permissible even though we did not have permission. The clerk wasn't interested in our claims and we couldn't blame him.  (This was a few years after Kinko's had lost a fair use case over coursepack copying). In the end, we lied to get the job done. We do not advise you to lie and wish you the best in dealing with your moral dilemma. BTW, we hope you like our artistic take on Mary's hat throw --  we call it 'Love is All Around.'

Friday, August 21, 2009

Where Do I Find a Prototype Maker?

Dear Rich: I recently developed a product out of need for someone that is severely handicapped. My prototype is working well for his needs, however, not attractive enough to market. Do I have to have the prototype professionally made to try to market it? If so, where do I begin? We're not sure what you mean by 'market.' If you are referring to direct sales to consumers, yes, you will need a professional prototype to serve as your manufacturing model since we live in a society where consumers take new product ideas seriously only if they are packaged and presented professionally. If you mean to market your idea to a company that will manufacture and sell it on your behalf (a licensing arrangement) then it all depends ... in some cases, the device's functionality may be more important than the form, and potential licensees may be willing to overlook the appearance (since they will deal with design themselves). 
Why Not Hire an Artist?
If you are seeking a license the Dear Rich Staff suggests that you consider hiring an artist instead of a prototype maker. Professional CAD drawings will provide a professional appearance for your product without the expense of preparing a prototype. As for finding a prototype maker (sometimes referred to as "model maker") use search terms such as "prototype maker"  and "model maker" at Google. You can learn more about prototype preparation here.
The Legal Notes
If you intend to seek proprietary rights to your product be aware (1) you have one year from the first public display to file a patent application or provisional patent application; and (2) you should enter into an agreement with your prototype maker assuring your ownership of the final prototype. You can find examples of these agreements in our book, Profit From Your Idea.

Thursday, August 20, 2009

Can I Name My Company MellowStarbucks? SuperNike?

Dear Rich: Is it legal to create a new company name by adding a word to an existing company name ? (I was unable to Google an answer anywhere). Some examples of what I'm talking about are Supernike, Mellowstarbucks, and Smoothmonster (monster energy drink). The short answer would be "No." We're not sure what Google search terms you used but we located a lot of material online explaining why it's not a good idea to borrow and modify a famous company's name. You can also peruse this book or this book (both by the Dear Rich Staff) on the subject at Google Books. 
The Conned-Sumer
The main principle at work here is called likelihood of confusion. If consumers confuse Supernike with Nike, then you are infringing. In addition, you cannot dilute famous trademarks. Of your three examples, "smoothmonster" seems the least likely to confuse since "monster" has a common meaning not necessarily associated with commerce. But based on the litigation history of Monster Cable (not Monster Energy Drink or, you can expect a hassle over that choice. (If you plan to use these names solely as your corporate name but not as a trademark for your company or your company products or services -- for example, simply as the name of your LLC -- your uses may go unnoticed.)  Otherwise, your plan to "prefix" your way to brand identity is not going to fly and will only lead to a mailbox full of cease and desist letters.

Wednesday, August 19, 2009

Holy Ghosts: Claiming Copyright on 200 Year-old Painting

Dear Rich: I found an abandoned painting in an old house I used to live in. It was painted in the 1800's.  I would like to make posters of it.  Is there a way I can become the copyright owner? The short answer is "no" (and we're a little bit saddened by your question.) You are free to make posters and you are also free to modify the work with your own additional artwork and make derivative versions and -- provided you've added some original authorship -- you can control the copyright on the derivatives. But you cannot claim copyright ownership over the original. 
Why We Get Depressed
Nothing personal, but the idea of someone hijacking public domain material and limiting its use depresses the Dear Rich staff -- whether it is a book publisher claiming copyright over Moby Dick or a museum trying to claim copyright over its photos of the Mona Lisa (a practice known as 'copyfraud'). And of course, whoever created that painting would really be depressed to learn -- should they return from the dead -- that someone  is claiming all rights to the work. You don't want to be haunted by that possibility.

Tuesday, August 18, 2009

Are the Nuremberg Trial Transcripts in the Public Domain?

Dear Rich: My organization is interested in reprinting excerpts from speeches of the court justices and witnesses from the Nuremberg Trials held in Germany, 1945-46. Are these trial transcripts in the public domain? The good news is that you can use the transcripts. The bad news is that we're not 100% sure why. 
Is there a copyright?
The transcriptions and translations of the testimony were likely accomplished by U.S. government personnel and are preserved by the National Archives (NARA). Even though U.S. government works are in the public domain, we cannot assume that rule applies in this case. Copyright does not protect spoken testimony, only fixed versions of that testimony. The 'author,' for copyright purposes is typically 'the fixer,' -- in this case the U.S. government employees who transcribed the testimony. However, at least one case has held that court reporters are not authors of courtroom testimony; there's insufficient originality. Another argument might be made that translators of the testimony also acquired copyright (in which case the U.S. government translations would be public domain). Our conclusion: most likely the transcriptions of spoken testimony at the trials are not subject to copyright protection. 
Can anyone object to reproduction of the testimony?
The people who prosecuted or testified at the trials are unlikely to have any proprietary claims as to their statements. Although laws currently exist providing common law rights to spoken statements, it's unlikely that anything said in such a public forum over 50 years ago is proprietary. It's possible that subsequent versions of the original transcriptions may be protected under copyright. The Nuremberg trials lasted from 1945 through 1949 and the transcripts and some of the proceedings have been separately re-transcribed -- for example, the transcription for the 1946-47 trials of doctors and administrators (the "doctor's trial" transcript) has been posted at the Harvard Law School Nuremberg Trials Project. To the extent that such re-transcriptions contain additional material such as commentary, notes, etc., you would not be able to copy that material.
What about the evidence at trial?
It's not clear whether evidence from the trials is in the public domain. Simply introducing the material into the trial does not make it so, at least under U.S. case law. Photos and films of the war-crimes proceedings taken by U.S. personnel are definitely in the public domain material. In summary, we believe that your organization is free to use the transcripts based on its public domain status and -- if we're wrong about the public domain --  a powerful fair use argument that can be made for these historic documents.

Monday, August 17, 2009

AP to Public: Don't rewrite!

Dear Rich: I am working on a book presentation and was researching an article on MSNBC. At the bottom of the article, it read: "This material may not be published, broadcast, rewritten or redistributed." What do they mean when they say it can't be rewritten? Actually, that's not the position of MSNBC that you're quoting, the tagline is specifically for Associated Press articles posted at MSNBC (MSNBC's policy is here.) 
What's the AP's POV?
The AP's claim is based on: (1) copyright law -- you cannot rewrite the article in a manner that creates an infringing derivative work, (2) state misappropriation law -- there's 90-year old case involving the AP that says you can't compete unfairly by stealing "hot news," and (3) wishful thinking -- copyright permits free use of facts
Beyond Copyright
There is a legal theory that goes beyond copyright which prohibits the theft of "hot news." It's based on the 1918 case of International News Service v. Associated Press in which a rival news agency 'stole' and 'rewrote' AP news articles. Some states still uphold this approach; others consider it invalid. (The AP settled its most recent hot news case) It's unlikely that the "hot news" principle will apply in your case because the publication of your book would not trigger the "time-sensitive" aspect of the hot news doctrine.
Just the Facts
Aside from the "hot news" doctrine, the AP cannot stop you from taking the facts of an article and writing a new article using those facts. Consider this recent AP article about the death of Les Paul. You can certainly "rewrite" the first few paragraphs in your book as follows without infringing."Les Paul, 94, credited by many as the inventor of the solid-body electric guitar, died Thursday at White Plains Hospital from complications from pneumonia. Paul is also credited as one of the pioneers of multitrack recording, a process that permits musicians to record different parts at different times and then mix the tracks together." (Copyright aside, we urge every musician with a home studio to observe a few a moments of silence for the man who created modern recording!) Finally, the Dear Rich Staff wants to report that if there are a limited number of ways to say something, you are permitted to express yourself in the same way as others without infringing (known as the "merger doctrine").
The Trouble With Freedom
The trouble with all these "freedoms" --  the merger doctrine, the right to use facts, and even fair use -- is that there are no clear lines. Since the AP is not afraid to file lawsuits you may want to proceed with caution especially if your work may be perceived as competing. If you're particularly paranoid about lawsuits, just take the facts. By the way, speaking of copyright justice, William Patry (the hardest working man in copyright) has a new book and new blog.

Friday, August 14, 2009

Video Fair Use: Two year rule?

Dear Rich. Would it generally be considered "fair use" to make videos using short (less than 30 seconds) clips of different movies along with original audio to talk about historical times, places or themes? These videos would be put online for people to watch (not download). Also, I read somewhere that educational "fair use" of multimedia projects only allows them a life of two years. Does that mean if I create an educational video  --  say, about WWII history) using my own historical "reporting" audio over a few images and 30 second clips from different movies about WWII -- and put it online for people to watch (not download) and learn from, that after two years it has to be retired? According to the Dear Rich staff, the rule to which you refer is part of the Conference on Fair Use (CONFU) Guidelines (Sec. 4.1, Time Limitations). These guidelines for multimedia use -- and we emphasize they are only guidelines, not law -- apply if you are an "educator" and your multimedia use is "for curriculum-based multimedia projects and used as a teaching tool in support of curriculum-based instructional activities." In other words, your use should be part of a course that is taught -- usually in a series of episodes or classes. It is not enough to claim your work is "educational" to seek protection under the guidelines. 
Streaming ... But No Download
In addition, you are infringing by copying and displaying the clips, regardless of whether people can download the material. (By the way, modern software products make it possible to capture any streaming video.) You may be able to successfully claim fair use -- courts have considered clips of  15 seconds and 41 seconds to be fair use (scroll down this page to the audiovisual cases) and in addition, your use seems transformative. By the way, there is also a code of "best practices" for creating online videos and you may want to take a look at that, as well as the Yes, You Can! manifesto.

Thursday, August 13, 2009

Exploding Head Coloring Book Lawsuit?

Dear Rich: I am planning to release an album on iTunes. For the cover I was planning on using a drawing that I traced from a coloring book, I'm assuming its copyrighted but have no clue where it is from. I traced the face but I altered it by having the head explode with rainbow colored popcorn and blood. I also colored the original black and white image. I was wondering if this will become a potential lawsuit or if it will be ok. First, of all, thanks for the warning. Second, you probably don't need to worry about being chased for your exploding coloring-book popcorn head (wow, what a great name for a band). Yes, it's true that the coloring book company owns the copyright for the images, and yes they could sue you for infringement. But it's unlikely that they would litigate against someone for reproducing a single colored-in image. (From a public relations point of view, that seems like a major sales turn off.) You may get some guidance if there are any restrictions listed in the coloring book. And you may be able to determine who owns the image by using this search engine. In addition, you may have a solid fair use claim -- your modification sounds sufficiently transformative. Okay, well it's time for the Dear Rich staff to get back to our coloring book.

Wednesday, August 12, 2009

Drummer as Songwriter

Dear Rich: My husband is a professional drummer who was recently and unceremoniously kicked out of a band. The band is preparing to release their first album this month. Four of the songs on the album were joint authorship collaborations, to which my husband contributed original and distinctive percussion parts as well as overall musical arrangements. The other two members of the band had verbally agreed to share authorship credit (with copyright and ASCAP registration). We have an email from one of the band members agreeing to their 40-40-20 split (with my husband receiving the 20% share). Unfortunately, the album had to be pressed in a hurry and nothing was officially registered (although, there were countless promises to do so upon returning to the U.S.) As a surprise to us, rather than give him credit on the four songs, they instead dismissed him from the band. Now the band has plans to perform and sell the album and has made it clear they intend to dishonor their earlier agreement. What rights does my husband have? Can we proactively register the copyright? And, can we send the band a cease and desist letter as to the four songs in question? What should we demand in the letter? Before filing any applications or sending  any letters you will need to sort out two issues: (1) who are the co-authors of the songs, and (2) what deal, if any, was reached among the parties. 
Who is a Co-Author?
Lets say that the other members registered the songs and did not list your husband as songwriter. If your husband challenges the registrations, a court will be concerned primarily with whether the percussion parts and arrangements actually amounted to a contribution that merits co-author status. According to the Dear Rich staff, courts have not always looked favorably on percussion parts and arrangements as compositional contributions particularly when they are "dictated solely by musical convention or tradition." (Cf. In this case, an arrangement by Billy Strayhorn merited copyright protection). If your husband is convinced that he is a co-author, he can file a copyright application listing the appropriate information. (Here's a video we made that explains the process) But keep in mind that filing a copyright application with false information -- no matter who does it -- may lead to a claim of fraud on the Copyright Office
What's the Deal?
If the band members agreed that your husband deserves a 20% portion of the revenue from those songs, he is entitled to it, regardless of the claim of authorship. But your husband will need to prove that an enforceable agreement was reached among the parties. The verbal agreement may suffice though it is will be difficult to prove and may prove difficult to enforce for other reasons. Written documentation of the agreement (including emails) would be best but its hard to tell what proof is proper unless an attorney reviews the documentation.  (PS we recognize that this is not a laughing matter, but a segment of our staff insists on linking to drummer jokes!)

Tuesday, August 11, 2009

Can an Assignment Create a Work for Hire?

Dear Rich: If I chose to completely assign my copyright in a personally created work of authorship to a sole proprietorship or single-shareholder S-corp -- with either of these businesses being owned exclusively by me -- would the copyrighted product be considered a work made for hire in determining the duration of its legal protection? The short answer to your question is "No." Just because a business acquires a copyright does not make it a work made for hire. The Dear Rich Staff reports that work made for hire status is determined by the original act of authorship -- that is, who is the author and under what conditions the work is created. If it was created by an employee within the course of employment or by an independent contractor (and it fulfills the IC work for hire requirements), it will be a work made for hire forever (or at least for the duration of copyright). In other words, authorship status travels with the copyright no matter who acquires it down the road.

Monday, August 10, 2009

Using Disney Photos in Travel Book

Dear Rich: I am writing a travel book. I would like to include photographs of items that are subject to a Disney trademark, such as the Disneyland castle.  If I own the copyright to the photograph, would I need to get a license to include it in my book?  Are there any issues with discussing these items, but without including photographs? What about other places in the Disney parks that are on Disney property, but probably not subject to any trademarks, such as a building on Main Street or a trash can? First, we're not sure that the Disney World trash cans lack trademarks. (And in any case, even if they don't contain trademarks, trash cans can be arranged to create famous Disney marks -- as our blog photo demonstrates). As for the remainder of your questions, Disney creates some hurdles for travel publishers. 
We Appreciate Your Understanding  
A member of the Walt Disney staff wrote to the Dear Rich staff (if only our staffs could meet!) and explained that 
"All requests to use materials which are copyrighted by The Walt Disney Company (e.g. photos, logos, characters, etc.) must be directed, in writing, to the following address: Walt Disney World Legal Department Attn: Requests Post Office Box 10000 Lake Buena Vista, FL 32830-1000 Due to the volume of third-party requests that we receive and in view of the consideration process that these requests are subject to, please know that it may take up to eight weeks for a response to be provided. As such, any requests that are received indicating the need for an immediate response are automatically declined and returned to the sender. We appreciate your understanding." 
In short, if you are asking for assistance, whatever you do, don't tick off the WDW staff by asking that they expedite your request. (That only works here at Dear Rich headquarters) You can learn more about Disney photo rules at the Disney photography site and its forum, the Disney photo forum (and maybe at the DIS site, too). We've never been to WDW or Disneyland so we're not sure if the purchase of a ticket incorporates photo rules as well, but a visit to Disney property is a visit to private property so you may have signed away your rights on this one, just by purchasing a ticket. You can discuss the parks (in textual form) without worrying about trademark issues. And arguably, under first amendment principles (and possibly trademark fair use principles), you can reproduce those trademarks for editorial purposes. (We recommend you consult other travel books and see how they've handled it since Disney is not considered the friendliest IP owner.  (PS Here's an interesting new fair use case to throw into the mix.)

Friday, August 7, 2009

Johnny Depp Products

Dear Rich: Could I name products after the first or last name of the movie characters played by Johnny Depp? The Dear Rich Staff is going through the Johnny Depp playlist trying to figure out exactly what those products might be: Edward Scissorhands pruning shears? Ed Wood steadicam? Jack Sparrow dreadlock wax?  We assume Blow (parental warning) and Donnie Brasco (you have the right to remain silent) won't work. Whatever it is, if you're relying on consumers to connect Johnny (or Johnny as the movie character) with the product, it's probably a right of publicity violation. It could also lead to potential copyright and trademark  claims by the movie companies though you would probably be okay using public domain characters like John Dillinger, Ichabod Crane and Sir James Barrie.  The short answer is that any connection with Johnny that implies his association or endorsement is an invitation for a cease and desist letter. (And with that, we pull up the covers on Licensed Characters week and head back to normal programming.)

Thursday, August 6, 2009

'Subliminal' Use of Licensed Characters in Movie

Dear Rich, I am writing a movie and wanted to use short bits of super heroes like Spiderman, Superman, Batman and Wonder Woman. Have these super heroes been around long enough for the public domain? If not, could I get away with having them in my scenes in plain clothes, without calling them by their superhero names but having their costumes sort of hanging there as 'subliminal persuasion'? We're not sure about your concept of 'subliminal persuasion.' Our definition of subliminal is something that is below the threshold of conscious perception. (And no, we have not heard of any cases of subliminal infringement.) We believe you're actually referring to a subtle form of objectively conscious perception. As for your questions ... the short answers are (1) most licensed characters are protected by trademark law (as well as copyright law) and the trademark rights can last forever, provided the owner continues to exploit the uses (more on the public domain, below). (2) If you're using the superhero persona or costume, then you're trading off the popularity of the character, and in the process confusing consumers as to the source. In other words, you're ringing the infringement bell. 
Public Domain Superheroes
By the way, the Dear Rich Staff reports that there are many superheros in the public domain (as this website demonstrates) and there are even whole comics devoted to them; but you probably won't want to use any of these unknowns for your movie. In any case, our legal explanation is unnecessary because it's unlikely anyone will finance your script unless you can get clearance from the licensed character owners. (If you're looking for legal counsel to sort it out, why not ring up Matt Murdock?) (Speaking of subliminal messages, the photo above shows the Dear Rich staff with an unnamed licensed character whose head appears to be upside down.)

Wednesday, August 5, 2009

Son's Character Impersonation

Dear Rich: My son and his friends are big fans of a certain movie and have transformed his car to look somewhat like the movie car (including the logo on the side), have duplicated the weapons, play the theme music over his car stereo, and have made costumes to match those in the movie (also with the movie's logo patch). They also have a short acting skit they go through similar to what the movie characters might do. For now they just do this for fun, but several people have asked them to perform in character at parties, video game stores, and Halloween haunted houses. How much of this would be allowable if they were to charge for their appearances?  There's a thin line between licensed characters and reality and we're concerned that your son may have crossed over. As for your question ...  the short answer is that your son's potential public performance will probably infringe copyrights and trademarks. And since your son is old enough to drive a car, he is probably old enough to receive a summons. (Yes, superheroes can be arrested.)  As always, the Dear Rich Staff is not sure how likely it is that your son will get hassled: the owner would have to (1) learn about your son and (2) care enough to get lawyered up. (Photo shows the Dear Rich staff with Tigger -- we think!)

Tuesday, August 4, 2009

Impersonating and Disclaiming Licensed Characters

Dear Rich: I read your entry about impersonating licensed characters at parties and have a question. Is it the use of the costume or the use of the name or the combination of both that is the actual infringement? For instance, if a company publicly disclaimed any connection with the actual character, its owners, etc. and advertised by a name that wasn't copyrighted, is that infringement? If so, what if the company coordinates other services and threw in the look-a-like appearance for free? I ask because there are a lot of celebrity look-a-likes for hire from small and large talent organizations and want to know how they get around actually infringing when they charge for this service. Some basics: a character name cannot be protected under copyright law (unless in conjunction with other character elements); a character name can be protected under trademark law. 
The Thing About Disclaimers
Your plan to disclaim any connection with the actual character seems unworkable. First, disclaimers -- where someone attempts to disavow legal responsibility -- rarely provide a shield unless they are sufficiently prominent, carefully worded, and are in close proximity to the thing you're trying to disclaim. In some cases they create more confusion and in other cases they serve as an acknowledgement that you knew you were confusing consumers. Second, there is the practical application: for example, do you show up at the birthday party and tell all the kids that you're not really affiliated with the Harry Potter franchise? The Dear Rich Staff is not sure how that would go over -- probably something like this. In any case, offering the lookalike services for free would still be an infringement. 
How Do Others Get Away With It?
Some people manage to get away with infringing activity usually by staying so low on the radar that the copyright owner isn't aware of them, or if the copyright owner is aware of them, the owner  (a) doesn't consider them big enough fish to fry, or (b) doesn't have the resources to pursue everyone. (Photo shows the Dear Rich staff with one of our favorite licensed characters, the lovely Strawberry Shortcake).

Monday, August 3, 2009

Getting Costume Character Gigs

Dear Rich: I want to know how one goes about getting permission from the owners of copyrights on character costumes used for children's birthday parties. I would not mind paying royalties if that was feasible.  Unfortunately, the Dear Rich Staff is not aware of a fast, easy, and inexpensive way to license the use of character costumes for parties. Most owners of licensed characters probably don't want to hear from you and/or have their own system for providing licensed characters for promotional events and parties. That's the case with Marvel, for example. On the other hand, if you don't mind working for the Licensed Man, and you are between 5' 10" and 6' 2" and physically fit enough to wear a Spandex suit, you can apply to work as one these licensed Marvel characters. Note: as the want-ad points out, "Spandex is unforgiving." (Photo above shows Dear Rich Staff with the licensed Dummies character!)