Friday, October 30, 2009

Film Company TM: State, Federal or International Registration?

Dear Rich: I have a film production company, the name of which I have been using for nearly 10 years, and for which I purchased a website for in 2005. I have also registered it as a business within my state. However, my goal, of course is to one day be internationally recognized. Someone from another country has begun using the same name for their own film projects. Is there something I should be doing now to gain international proprietary rights to the name? Or is that even possible? The short answer is that you should federally register the name of your film company. Registering your name as a business in your state -- for example, as a dba or as a corporate name does not give you any trademark rights. Even registering your name with your state's trademark office will not provide the protection you seek (and is usually not worth the effort). A U.S. registration will preserve your U.S. rights and enable you to stop others from using a similar name for film production services in the U.S. (Read more about enforcing TM rights, here.)  As for pursuing international rights, that may be premature since you haven't indicated that you are currently engaged in international commerce. In any case, securing rights in other nations -- there is no such thing as an "international trademark" -- has become easier in recent years with the adoption of the Madrid System. Nolo -- my employer -- can assist with federal registration, and the Dear Rich Staff prepared a helpful guide to the process.

Thursday, October 29, 2009

Church Steeples and Copyright

Dear Rich: I took a photograph of a twin steeple church several years ago. The church has since been destroyed by fire and the location is now a retail strip mall. I would like to sell the photo of the church as art to local residents in the form of framed prints, greeting cards, etc. Do I need a property release for a property that doesn't exist anymore? No (and you didn't need a property release in the first place). As the Dear Rich Staff has indicated in previous entries, copyright law permits the copying and reproduction of publicly viewable buildings. Trademark law rarely gets in the way except if the building (or some feature of it) is used as a trademark -- not the case with a church steeple. By the way, there's always hope that your strip mall will return to church steeples.

Wednesday, October 28, 2009

How Much of a Plot Can I Take?

Dear Rich: Even after intensive legal research (i.e., an afternoon with Google), I'm still confused about the applicability of copyright protection to plots. If I stay away from specific language, from specific characters and locations, how closely can I hew to the plot of a copyrighted work? For example, say I wrote a novel about a little orphan girl who discovered she was actually a sorcerer? That much is okay, I'm sure. Then what if she attended a special sorcerer school? What if she traveled to the school via a magic airplane at a hidden gate at the airport? What if she learned that her parents were killed by an Evil Wizard who was threatening to return? What if she played a magical sport for school, and was assigned into a dorm via the Picking Stocking, and befriended a gruff janitor? At what point, despite the fact that none of the words were identical, would immoral plagiarism of plot become illegal copyright infringement? The Dear Rich Staff must preface this answer by disclaiming any knowledge of books about sorcerers and wizards so if you just provided the plot of a famous book as an example, we wouldn't have any idea. (And what's a "Picking Stocking?" Is that similar to Pippi Longstocking? Please don't rip off Pippi!)
The Standard of Review. As for your question, the standard of review is best described by Judge Learned Hand in Nichols v. Universal Pictures in which the author of the popular play, Abie's Irish Rose, sued the producers of a movie, The Cohens and the Kellys. Both plots involved children of Irish and Jewish families who marry secretly because their parents are prejudiced. At the end of each work there is a reconciliation of the families, based upon the presence of a grandchild. Beyond that, the works had little in common except for ethnic clich├ęs. 
The Abstractions Test. Judge Hand established a standard to separate the idea from the expression. He used the term "abstraction," which is a process of removing or separating something. He stated: "Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out." In other words, every narrative work is built around an underlying idea, in this case the basic plot summary. The idea may be similar to other plots (BTW, many people believe there are only between seven and 30 basic plots), but the author's embellishments -- the series of details and incidents that separate the idea from similar plots -- trigger copyright protection. Copyright only extends to each author's unique expression, not the underlying idea. 
Still in Use. Judge Hand's abstractions test is still applied for plots (and was even modified for application in software infringements). In Litchfield v. Spielberg a writer sued the makers of the movie E.T. -- The Extra Terrestrial. The writer claimed that the film infringed her musical play, Lokey From Maldemar, a social satire designed to "illustrate the disunity of man, divided by egotism." The district court applied the abstractions test and determined that the only similarity in both works was the basic plot line -- aliens with powers of levitation are stranded on earth, pursued by authoritarian characters and finally bid their earthly friends farewell. Again, these similarities (sometimes known as nonliteral similarities) are ideas and are generally not protectable. 
Our Takeaway Points ... Nobody but a judge or arbitrator can safely tell you whether you've taken the "expression" of a plot  or the "idea" of a plot, but you will likely run into problem if you have a high profile work and you're slavishly copying the plot (and/or  characters) of a well known work. For example, that's what happened in the copyright battle between Star Wars and Battlestar Galactica (Chaim Green R.I.P.).

Tuesday, October 27, 2009

My Great Idea: Somebody Had It First!

Dear Rich: I had this great idea for "something." I researched it online and found something that accomplishes the same thing but in a different way. It is has a trademark but doesn't seem to be patented. I am so upset because I thought this was a terrific idea and now I'm not sure if I can patent it. Can you help me? The short answer is that you can patent a device that accomplishes the same result as an existing invention provided that the manner in which it accomplishes that result is novel and not obvious to others in the field. For example, there are many ways to hold hair in place and no shortage of patents. An attorney would need to advise you about your particular situation since there's not enough information in your letter for us to provide much guidance.
Search on Your Own. You can certainly search the patent database to see if someone has registered a similar idea - we prefer Google's patent searching system over the USPTO database. And you can review the trademark database - lately we like more than the USPTO (although they each have searching idiosyncrasies). 
Great Ideas R Us. The Dear Rich Staff respects you for coming up with one great idea and hope you come up with more. But keep in mind, there's a reason for Thomas Edison's inspiration/perspiration equation. As Edison himself acknowledged, his success was primarily attributable to being a "hustler" rather than to any of the great ideas he instigated, cajoled or "borrowed." In other words, coming up with great ideas is not the hard part; the challenge is in selling your brainstorm.  

Monday, October 26, 2009

Barbie Gets Fangs: Movie Tie-In Toy Deals

Dear Rich: I am searching for samples of licensing agreements between a movie producer and toy manufacturer governing copyrights and trademarks used in movie "tie-in" products. Do you have any leads? The Dear Rich Staff assumes you're talking about a traditional movie tie-in toy product. For example, Mattel wants to sell more Barbie dolls so it creates a tie-in with a certain vampire movie, ("Mommy, why is Barbie wearing a garlic?"). 
Looking for Merchandise Agreements. Without reflecting on the pros and cons of these pre-landfill toy products -- the agreements that facilitate such deals are merchandising agreements built around a license to use the movie's copyrights and trademarks. You can see examples of a trademark license and a merchandise license (with explanations) in our book, Getting Permission
The Real Deal. If you'd like to see more detailed toy merchandise licenses, you might want to consider springing for License Agreements: Forms and Checklists, by Battersby & Grimes, the acknowledged leaders in toy licensing law. If that's too pricey, consider Contracts for the Film & Television Industry by Mark Litwak which provides sample agreements (and we'd also like to plug Clearance & Copyright by Michael C. Donaldson because it provides a good overview on the use of copyrights and trademarks in film). Check the TOCs for all these books online to make sure they include the right stuff. Also both of these books discuss product placements - sometimes part of the arrangement - in which the toy appears in the film

Friday, October 23, 2009

Animal Mascots, Therapy, and Fair Use

Dear Rich: I am an artist studying the use of corporate mascots such as the Trix rabbit. One of the main points in my thesis is the lack of freedom in discussing the mascots  used to sell products to children (and the danger that poses). As part of my exploration of the topic I am creating artworks made out of these mascots, cutting up toys and making sculpture from the pieces. I am doing this for my Masters degree and may continue onto a Ph.D. I have some questions. Am I infringing copyright if I: (1) show the work at my degree show? (2) show the work in a commercial gallery? (3) publish images of the work in a commercial book (4) make drawings or paintings of the works and publish these commercially? or (5) were to claim they were produced in art therapy sessions would they count as informational? I understand that I would be allowed to reproduce these animal mascots for informational purposes, for example in a textbook or news article. (6) Does the exception only apply to reproductions of the mascots as they are? I noticed, for example, that someone had been prosecuted for putting Barbie and Ken dolls in lewd positions and photographing them. (7) Is there any way around this problem such as publishing in a country with no laws on copyright or publishing anonymously? I feel very passionately about this topic and would be willing to consider creating the artworks as anonymous graffiti if necessary. 
NIMBY Please. The Dear Rich Staff feels your passion but prefaces this response with one request - if you are going to take the graffiti route, could you please avoid tagging our street. (We live in the outer Richmond District in San Francisco, a few blocks from the Walgreens). We've got this law in the city that requires the residents to remove graffiti within 30 days and frankly we're tired of using toxic cleaning products and paint. 
You Have Questions. Your letter included seven questions and to avoid exceeding the short attention span of our loyal readership, we're going to try and keep our answers brief. As for questions 1 and 2, yes you are infringing, but you have a powerful fair use argument and are not likely to be discovered by anyone who might care. Re: question 3 and 4, yes, you are infringing and commercial uses make the fair use arguments a tougher sell. Still, the trend is to permit this type of use and we think you will likely qualify under a fair use defense (which by the way means you may have to defend yourself in court). 
You're in Art Therapy. As for question 5, you got us with this one. We understand art therapy and its implications and we're fascinated by the argument that copying someone's work is a transformative use (as required for a fair use defense). Alas, we believe that while you are being transformed by the therapy, the underlying work is not. On that basis (and with no caselaw to support our position), we don't think the art-therapy-as-fair-use argument will fly. 
Informational Uses and Trademarks. In question 6, you ask about informational uses. Here you're confusing copyrights and trademarks, a common error since mascots function as both. The "informational" issue relates to use as a trademark. All of your potential uses appear to be informational since you are using these images to make editorial statements. As for making Barbi and Ken do lewd things, that's a whole other issue we'll address in another blog. In any case, we understand that everyone can go through an I-hate-my-Barbie phase.  
The Land of No Copyright. As for question 7, we think you're imagining an off-shore world where you can infringe to your heart's content. The reality is that if your work is sold or distributed in the U.S., you can be sued for infringement here, as can any retailer offering your work. If you're a U.S. citizen that makes it even easier to go after you. So unless you're planning to move somewhere where the residents have set up servers with infringing or illegal content (often a country that ends with the suffix, "stan"), then you will be a target for lawsuits. 
Some Random Thoughts. In a surprising cross-species mascot switcheroo, we were surprised to learn that Trix was once promoted by stick figures and Mickey Mouse.

Thursday, October 22, 2009

DVD Duping? Edited Movies? Ixnay!

Dear Rich: I purchased a number of edited DVD movies a year or so ago, when several professional editing companies went out of business. Can I make copies of these DVDs and sell them on eBay? Does someone still own the copyright to the edited versions? The short answer is yes, someone owns the copyright (unless it's one of those movies that fell in the public domain) and your duplication and sale infringes that copyright. 
Edited DVDs? We're not sure what you mean by "edited DVDs" but we think they are the kind that used to be sold by places like CleanFlicks until the courts shut them down in 2007-2008. For example, if your version of The Proposal is missing the scene where Sandra Bullock collides nude with Ryan Reynolds, then you've got a CleanFlicks DVD. (Wait...that movie came out this year!). CleanFlicks thought they had a way around copyright law by selling a legit copy of the DVD with their sanitized version. Alas, that didn't fly since the copyright owner controls the right to make modified versions. Based on that court ruling it would be illegal for you to sell dupes as well as any unauthorized edited versions. 
Of course, that's just the opinion of the Dear Rich Staff and who are we but a bunch of geezers who sit around eating vegan donuts and drinking green tea. It's possible that somewhere in an alternate blog universe, there's another crew who thinks you should proceed with this potentially infringing activity. We'd like to meet them but until then we want you to stay healthy and out of trouble. 

Wednesday, October 21, 2009

Deceased Dad's patents

Dear Rich: My father passed in 1999. He holds an original patent that was copied by his employees and they eventually kicked him out of his own company. I have not received any information about the company or his patent since his demise. Do children inherit patent rights? What is the usual scenario? The short answer is that if your father owned patent rights they should have become part of his estate and passed on to his beneficiaries according to the instructions in his will or trust. If he died without a will, your state's intestate rules would have caused the rights to likely go to his spouse and/or children depending on state law. If the patent was not listed as part of the estate, you may need to do some research (discussed below). If the patent is still valid and you can prove your father was an owner at the time of his death, an estate attorney should be able to determine how it will pass to the heirs. The Dear Rich Staff believes there are a couple of unknowns here. 
Patents expire. Patents issued after June 8, 1995 expire 20 years from the date of filing; patents issued before that date expire 17 years from date of issue. So, for example, if your father's patent issued in 1991, it would now be in the public domain. That's not to say you couldn't bring a claim against someone for actions that took place while the patent was active but that's a very tricky type of claim to bring (and the clock is ticking).
Patents are assigned. We're not sure of the situation but it sounds like some funny business occurred regarding your father's patent, his company, and his employees. If your father transferred his rights in the patent to his company, that information can usually be located by searching at Google Patents or the USPTO. Use the Advanced Search features, put in your father's name as inventor and find the patent. Check the dates to see if it has expired and look to see if an "assignee" is listed. If so, the assignee owns the patent rights. That doesn't mean that your Dad gave up all revenue. The assignment may have been an agreement promising him payments. So you would need to find the assignment document to see what the terms were. You can also search assignment documents at the USPTO here (in case the assignment was filed at a later date than the patent). Whatever you do, you should act quickly, as the passage of the ten year period since your father's death may have caused you to lose rights.

Tuesday, October 20, 2009

Onions, Camels, and Perl Trademarks

Dear Rich: I want to create a trademark called AlchemicPerl. Perl is a programming language and the Perl Foundation, who owns the registered trademark has told me that I cannot use the word Perl. Does AlchemicPerl violate their trademark? AlchemicPerl will be used to market software and consulting services related to the Perl programming language. I know there is also a trademark called ActiveStatePerl which seems not to have a problem but I just wanted to be more certain. The short answer is that we're not sure what will happen if you proceed but we have a feeling it's not going to be good. The Perl Foundation does have a federal registration for the word PERL combined with the image of an onion. The registration is for computer software among other things and the Perl Foundation warns others against using the word, Perl, as part of a software product (and even counsels about using an onion, the Perl mascot, too). The foundation's desire to protect this mark has something to do with its intention to maintain the Perl language as an authenticated open source language without worrying about commercial interlopers preventing others from using the name --  a tactic that can have unexpected publicity consequences for those seeking open source freedom. 
What's a bit confusing for us ... and for you as well is that the ActiveState Software company, as you point out, also owns registrations -- we counted at least four -- for other Perl-related trademarks. Possibly the foundation and ActiveState -- which makes and sells commercial proprietary Perl software --  have reached an agreement as to their mutual use, possibly based on ActiveStates' prior registrations. That's just a guess and hopefully a reader will provide more details for a follow-up response. By the way, ActiveState also applied for VISUAL PERL as a trademark but that application was rejected for the Principal Register (as being descriptive) and was relegated to the less-than-cool Supplemental Register. In any case, there are two entities claiming federal trademark rights for PERL and that does not bode well for your intended use.
Let's not forget about the camel ... There's also a third Perl trademark in action and that's the camel associated with O'Reilly Perl books. (O'Reilly also owns the "" domain.). Perhaps that has something to do with the fact that Larry Walls, the creator of Perl, works for O'Reilly, and is the author of their guide to Perl, nicknamed the Camel Book. 
Hurdles and More Hurdles. The Dear Rich Staff believes that you have a series of challenges ahead of you -- for example, a trademark examiner may object to your use based upon the existing registrations; or ActiveState and the Perl Foundation may oppose the registrations as being likely to confuse. For these reasons, we'd probably back off the choice of AlchemicPerl. In addition, you might be concerned about the use of the prefix, "ALCHEMIC" and "ALCHEMY." We just got a solicitation in the mail from an Alchemy Software company in Texas, and we see a company in Florida is seeking a federal registration for ALCHEMY (which might be a problem considering there already is an existing registration for ALCHEMY for computer software for data and document capture.) And there's also a web production company called Alchemic Productions.

Monday, October 19, 2009

Roller Derby Blues: Do Jammers Need BMI License?

Dear Rich:I'm a member of a small roller derby team that contracts with a local roller derby rink for 3 or 4 games a year. In our contract with the rink, it says that we will split the proceeds 50/50 (each game grosses about $2,000 in total), and that the rink is responsible for providing a DJ and music during pregame and halftime. The rink has an ASCAP & BMI license. Does the roller derby team need one too? The short answer to your question is no, the rink's license is probably sufficient. Generally, a venue's performance license -- which permits public performances of copyrighted music -- will cover all the traditional activities within the venue. (Here's a story about one roller skating fan's quest for similar information.) However, like all things legal, there are a few exceptions. If the rink signed limited licenses with these performing rights societies and those licenses only cover certain events or uses, your league could run into a problem and may need to pay additional license fees. (Here's a roller derby posting on this issue.) That's not likely, but ask the rink if it is limited to certain uses or whether the license covers all music played there. In any case, we hate to see you reach for your checkbook if your agreement states that the rink will provide and pay for the music. (We assume the agreement is silent as to your BMI and ASCAP obligations). Check your paperwork with the rink. Anyway, the Dear Rich Staff is sorry you have to think about these details when you should be concentrating on your backwards whips.

Thursday, October 15, 2009

Permission Ahoy! Cruise Ship Photos Used in Book

Dear Rich: I have spent hours trying to find an answer to a simple 10 second question. I have written a book about cruising and have included a few general photos of cruise ships within the book. I took the photos from public places and you can see the name of the ship in the photo. Do you know if I'm allowed to use these photos or do they constitute a breach of intellectual property laws? Okay, it took us ten seconds just to copy your question into our antiquated blogging program so The Dear Rich Staff suggests that you avoid prefacing requests with an anticipated time limit (whoa ... there goes another 30 seconds). The short and long answer to your question is that you're okay to use the pictures of the ships and their names. Anything that's publicly viewable generally doesn't violate rights of privacy or copyright laws. Photography of passengers taken while on the cruise ship may be subject to privacy laws especially if it is a booze cruise.

Public Art = Private Copyright

If I paint a picture of a statue that's located on a public street and then sell the picture, am I in violation of copyright law? Also, I should probably mention that the statue and I are in the U.S. and that the sculptor is alive (although I do not know what the state of the copyright on the work is). The short answer is that an unauthorized reproduction of a copyrighted work -- including a publicly viewable one such as a mural -- is an infringement. Also, the fact that the sculptor is still alive indicates that the work is protected under copyright law. Therefore, if the copyright owner sees your reproduction, there's a reasonable chance you'll open your mailbox to find a cease and desist letter. If you're talking about a single painting, obviously the chances of being noticed are far less than if you are selling postcard reproductions. And it's also unlikely that artists will go after reproductions that are part of a blog reporting public art. Similarly, the less prominent that the sculpture is within your painting -- for example, you painted a city street and the  sculpture is simply one of many elements in the painting -- the less likely you are to trigger a complaint (and the better your chances for arguing fair use). A film production also used an architectural works exemption to justify public sculpture reproductions in a Batman movie. Despite our warnings, the Dear Rich Staff believes that some public art begs for unauthorized reproductions. (By the way here's a nice article on the subject of public art controversies.)

Tuesday, October 13, 2009

Who Gives Permission -- the Publisher or the Author?

Dear Rich: I work for a small non-profit with offices in the UK and California. Our mission concerns the protection of both biological and cultural diversity. In an effort to fulfill this mission, our group created a community study program that includes a reader featuring works written by leading ecological scholars and activists. We're updating the curriculum and most of the authors have agreed enthusiastically to let us use their material for free. However, a few of them do not hold rights to their work and the publishers are asking for fees that are prohibitive. We're trying to find substitutes. Do we need to get both the authors' and the publishers' permission if the books attribute copyright only to the authors?The short answer is that the copyright owner is usually -- but not always -- the person to give permission. The reason we need to provide a longer answer is that often the author retains copyright ownership but grants exclusive rights to a publisher. So even though the book's title page says Copyright 2009 Dear Rich, the publisher still controls all rights and can even file an application for copyright registration as the owner of those exclusive rights.
How can you tell who owns what? Usually, you need to ask the publisher. As a very general rule, authors of articles in scholarly journals and other periodical publications traditionally retain subsequent print publication rights. Also, as a general rule, most authors of books do not control the right to copy portions of their published books since print reproduction rights is one of the exclusive rights universally granted to book publishers. (Note, in the event that the publisher stops selling the book, these rights commonly revert to the author -- or at least they used to in the old days of publishing ...). So even though the author may be enthusiastic about including the work (and may be listed as copyright owner), the publisher may be the one who has to okay the use.
We support your work and wish publishers would support it too (instead of making you beg like Oliver Twist). If the Dear Rich Staff  made more money we would shovel it towards our favorite conservation nonprofit located in the nearby (and beautifully named) town of Petaluma.

Monday, October 12, 2009

Till Copyright Do Us Part

Dear Rich: For my daughter's wedding this past August we hired a photographer that relinquishes all copyrights to the photos. The package deal that we chose gave us a DVD album of the some 300+ photos that he took of the bride and groom with an additional 40+ photos of friends and family as we left the church. As parents of the bride we chose the photographer and package deal for the wedding and paid for it. I feel that we now own the pictures and do not have an obligation, moral or otherwise, to make a copy of the DVDs to hand over to the groom's parents. Nor should I feel bad that we did not hire the photographer to do extended family sittings - we paid only for an extended bride and groom photo shoot. The photographer has posted all the pictures he gave us on his web site and his prices for printing up the photos is very reasonable. My question is an etiquette question. Is it wrong to ask the groom's parents to pay for a copy of the DVDs that the photographer delivered to us? I would like to ask the groom's parents to pay about 20% of the total cost of the photographer. The Dear Rich Staff is thrilled to have been asked an etiquette question. On the other hand, we're a bit distressed to note that somebody's marriage is starting out with the in-laws bickering over photo reproduction rights. 
We're hung up about who owns the copyright in the wedding photos. You say the photographer "relinquished" the copyright. Did he assign the rights to you? If so, why is he posting the photos and selling prints? We have a feeling he didn't assign copyright and that's why he can still post and sell the pictures. If we're right and the photographer still owns the copyright, then you have the perfect (and most pathetic) excuse for not duplicating the DVD -- you could be sued for copyright infringement. 
For the sake of the happy couple. We're not sure how you arrived at the 20% figure but we wish this matter had been discussed before hostage negotiations were commenced over the  wedding DVD. Regardless of who owns the copyright, we hope you follow Dr. Phil's advice (See #4) and we also suggest that you consult with the bride and groom before making any decisions (as they are the ones who will suffer the most from any resulting squabbles).

Can I Stop Web Posting By Getting a Trademark on My Name?

Dear Rich: Is it possible to get a trademark for one's name in order to force others to remove it from website content? I filed a lawsuit three years ago and Michigan's Court of Appeals was gracious enough to effectively "seal" the case and remove it from their online archives. However, there is ONE clown who has posted a summary of the case and is refusing to pull it offline. I have a uniquely "googleable" name and believe I have recently lost a job because someone read this summary of my case online.  Sorry, but your 'trademark' idea won't fly. When a person's name functions as a trademark, it's in relation to a product or service -- for example, Newman's Own salad dressing, Smith & Wesson firearms, or Dell computers. Putting aside the difficulties involved in acquiring trademark protection for a person's name, you can only use that name trademark to stop others from competing against you unfairly, not to prevent the listing of your name on court documents, in newspapers or in any type of editorial use.
Rules About Sealed Documents.  Unfortunately, the rules are murky when it comes to Internet posting of sealed civil court documents. Since the Dear Rich Staff is not clear whether continued publication of those sealed civil records violates your state's law or your right to privacy, you may want to consult an attorney (if you can afford it) to determine whether you have any claims that could force the errant website to take down the case summary.
And Speaking of  Names: We're happy to report that 'Dear Rich' (Serial Number 77733116) has been published for opposition -- the final stage of acquiring registration at the USPTO.
And Speaking of Trademarks.  We just learned about, an interesting new trademark site that accesses USPTO records and more. (And when is Google going to do for trademarks, what it's done for patents?)

Saturday, October 10, 2009

Sarah Palin: Calendar Girl

Dear Rich: I would like to make and sell a calendar at the same time as the forthcoming release of Sarah Palin's memoir. I have tentatively secured permission for a Palin photograph via Getty Images. As for the phrases "Sarah Palin" and "Going Rogue", which are owned presumably by Harper Collins the publisher: 1) How much would it cost to acquire permission from the publisher? 2) According to my research the process for permission is fairly simple. Is this correct? 3) Is a request like this common for a popular book on this scale? The short answer is don't bother asking for permission for your calendar. First, it's possible -- in a major publishing agreement like this --  that the publisher didn't acquire any auxiliary merchandising rights (such as calendars, note cards, etc.) Second, even if the publisher did acquire these rights the company will either publish the calendar directly or choose a favored licensee--that is, someone with whom it has previously licensed calendar rights.Third, by asking for permission, you will put the publisher on notice as to what you're doing, which could prevent you from "going rogue" yourself. Finally, even though it's possible that the publisher will assert trademark rights to "Going Rogue," it's not likely that trademark rights can actually be acquired in a single book title such as this. Bottom line: you're running a moderate risk of being hassled for issuing your calendar (and maybe also tripping over Sarah's right of publicity). Paradoxically the Dear Rich Staff believes you'll run less risk if you don't ask for permission. In any case, you'll likely face some serious marketplace competition, which is why we suggest you abandon the idea of trading off the book title and strike out with something unique (see above).  

Wednesday, October 7, 2009

U Can't Touch This: What Can I Do with MC Hammer's Stuff?

Dear Rich: Over 13 years ago I purchased MC Hammer's storage units which contained all his personal property such as awards, costumes, music, wedding pictures, business records, tons of mementos, etc. I want to do a blog and put pictures of the items daily on the blog so everyone can see what I have. I would like to someday sell it all to someone who will donate it back to him and they can use it somehow as a business promotional write off. In the meantime, I have about 10,000 brand new albums and tapes of his that I would like to sell on the blog site. I have a catchy name for the blog with part of it being MC Hammer. I collect memorabilia but have never hit it big like I did with this. Apparently you purchased the goods during Hammer's 1996 bankruptcy, one of several setbacks suffered by the man many once considered too legit to quit. As for your questions, the short answers are: (1) Reproducing the personal photos, business records, and perhaps some of the related mementos, at your blog would be an infringement of copyright (and may be a violation of privacy of the persons involved); (2) selling the stuff back to someone who will give it to MC Hammer sounds fine (though we're not clear on how this would qualify as a business deduction); (3) Selling the albums and tapes is fine though as far as we can tell, you might have a challenge moving the albums (and little luck with the tapes); (4) Using MC Hammer's name in your blog may be okay provided it doesn't create the impression that the performer endorses or is any way associated with what you are doing.Taking the other recommendations into consideration, the Dear Rich Staff notes that you can probably reproduce photos of items that you are selling for example, costumes and various mementos.

She Wants to Use Bloch Paintings on TV

Dear Rich: I am a television producer who would love to use the work of the Danish painter Carl Bloch within a project of mine. Bloch was born on May 23, 1834 in Copenhagen, Denmark. I'm sure his work is in public domain and out of copyright but would I have to pay any kind of royalties or fees to anyone to broadcast his paintings on television.You are correct. Bloch's work is in the public domain. Danish copyright lasts for the life of the author plus 70 years and Bloch died in 1890. You should not have to pay a fee for the right to broadcast the paintings on a television program, however you may have to pay a fee to acquire access to the paintings -- for example, some museums require photographic access fees or fees for the right to use photographic reproductions prepared especially for  the museum. Note, as we have indicated in previous posts, there is no copyright in a slavish photo reproduction of a public domain painting.
If the work is in the public domain, why is there a copyright notice on Bloch's painting (above)? Establishments such as the Hope Gallery earn revenue by selling reproductions of public domain works and probably include the copyright notice with the intention of discouraging competitors and tracking copying on the Internet (such as performed here by the Dear Rich Staff). We suppose we could remove the notice (since copyright law prohibits the placement of false copyright notices (See 506(c)) but we're too busy packing up personal belongings to mess with Photoshop right now. (By the way copyright law prohibits the fraudulent removal of notices as well (see 506(d).) 

Monday, October 5, 2009

Brown Bagging Banned Books

Dear Rich: My nonprofit foundation wants to create and sell a calendar of bookmarks with photos of books that have been challenged or banned. The photos show the cover in a scene or "still life" that relates to the title. In all cases, the title can be seen, even when much of the book cover is otherwise obscured (at least 10% is obscured). Some book covers also have artwork by artists who illustrated the book. Only one of the books is in the public domain. The Foundation is planning to sell about 2000 editions of this 16-month calendar bookmark. Do we need permission from each publisher if we use the jacket or cover of the book in a composed "scene" where the jackets are obscured by at least 10%? What if we photographed the books wrapped in brown paper with the title handwritten? Sorry, we wanted to answer your question during "Banned Books Week," but time just got away from us. Hey, we like your brown-bag idea (it works for some) and no permission would be required. 
Still Lifes. As for your "still life" concept, the safest course is to get permission for the book cover art. At the same time, if someone says no, or you can't locate the owner, you can probably get by without permission. You have a strong argument that your work is transformative and constitutes fair use. BTW, the Dear Rich Staff isn't sure what you mean when you write of using "artwork by artists who illustrated the book(s)." If you have their permission for the  additional art, great. Otherwise, you might be pushing the fair use boundaries by reproducing non-cover illustrations.
Trademark and titles. Single book titles are rarely protected -- that's why your brown bag approach is okay. However, Harry Potter, because it's a series, is federally registered and Warner Brothers owns the rights for calendars (Reg. No.3419797). For that reason, you might not want to use Harry Potter and the Order of the Phoenix on your cover, packaging or advertising. That also puts you in a better position to argue that your internal use of Harry Potter is editorial and non-infringing ... should the issue arise.

Can I Use the Terminator's Arm?

Dear Rich: I was asked to use the "terminator arm" in a trade magazine advertisement. I said no due to copyright issues. Afterwards I did a search and found a number of for-sale stock images of it or very close and listing it as "terminator arm" in web search. What's up? How come nobody is suing over these uses? Ah yes, Terminator 2: Judgement Day! -- the 'Hasta Lavista, Baby' sequel! Wow, was it really 18 years ago that the T-man, with his arm stuck in some gears, bravely severed it at the elbow in order to keep battling the formidable T-1000? (Yes, and we're tired of all the references to time passing!) 
As for the use in an advertisement. Since you were assembling this ad for a client, you were wise to take a prudent course -- particularly if the client included the term "terminator" -- in the ad copy. 
So Many Terminators, So Little Time. The movie company that owns the rights to the TERMINATOR trademark (StudioCanal SA) has rights for the term in relation to motion pictures, computer games, amusement parks, paper products and games, toys and model kits. But they're not the only ones with dibs. Over thirty entities have registered TERMINATOR as a trademark for goods that include wheelchairs, metal grates, firearms, pre-moistened wipes, garbage disposals, silicon-based foam suppressants, fireworks, rock crushing equipment and those spikey-things you used to see in parking lots that deflate your tires if you go the wrong way. So you can see why, with all those uses out there it's best to keep Terminator references off of products or advertisements unless you're sure the use won't step on any toes.
Why so many "terminator arm" photos for sale?  You asked why so many stock photos are available of the terminator arm? The Dear Rich Staff believes that photos of the "terminator arm" (such as the one above) have limited copyright protection. For example, you could create a similar model artificial arm, photo it and tag it "terminator arm."  In other words, the bigger issue is not the image of the artificial arm (or similar artificial arm technology), but the use of the trademark 'TERMINATOR' in regard to a product or service, or the implication that the movie company (or one of the other trademark owners) is endorsing your product or service. 

Friday, October 2, 2009

More on Hip Hop Songwriting Copyright

Hi! Here's a letter from a music publisher reader!
Dear Rich: Regarding yesterday's entry I think it's a mistake to say that "if the beatmaker's contribution is mostly percussive, you can probably register the song" and that "traditionally the people who create the lyrics, melody, and chord changes, are the ones who claim the song copyright" not only because these lines are so gray in the hip hop world, but because-- depending on the "best copy" of the work registered with the copyright office -- many more nuances can in fact be copyrighted. There is a convention among my hip hop clients that affords the beatmaker 50% of a song (and whether that is a copyright equity interest or simply a revenue-sharing interest is a matter of potential debate). But the bottom line is that, as a music publisher, I skip ahead right to: "Everything is negotiable, so get it in writing asap," because otherwise I find I simply reinforce confusion. The short answer is that you're right and thanks for the comments. The Dear Rich Staff welcomes practical real-world commentary since -- due to our fear of germs, loud noises, and contrary opinions -- we rarely get out much anymore. 
The New Paradigm. In a sense the relationship of an MC and Beatmaker harks back to the early days of pop songwriting -- for example, the days of Rodgers and Hart --  when one person contributed lyrics and the other supplied the rest (we can even see a female rapper putting Larry Hart's lyrics to beats). Recognizing that collaboration and the acceptance of the hip hop tracks as songs, our advice does seem old-school. Instead, we agree that both the MC and Beatmaker be considered as equal collaborators (and treat that as a starting point in the negotiations). Most importantly, we concur about getting it in writing or as they say in the music biz, 'get paper.' 
Copyright vs. Revenue Share. One other clarification -- as you note there is a difference between a revenue share and registering a copyright. As for copyright registration, the Copyright Office requires that the song be registered listing the actual authors -- those who contributed to the writing. So it would be an error to list someone who did not make a songwriting contribution as an author. (For example, Elvis Presley's "contribution" to Heartbreak Hotel was apparently that he was able to pressure the songwriters into giving him a cut.)  A revenue share, unlike the copyright registration, can be any arrangement that the copyright owners agree upon for compensation. So instead of listing Elvis as a co-author of Heartbreak Hotel, he should have been listed as an assignee of one-third of the revenue (or some other arrangement that guaranteed him the money). In summary, even if the beatmaking does not amount to an old-school songwriting contribution, it can amount to a new-school revenue share.

Thursday, October 1, 2009

Beats, Backing Tracks and Rap Copyrights

Dear Rich: If a rapper wants to register his copyrights but the backing tracks or "beats" were "written" or created by somebody who the rapper gave like $200 for the beats, can the rapper register the copyright? Is this a work for hire? Can the rapper say he wrote the whole song and the beat maker is like a drummer in a rock band who doesn't get songwriting credit? The short answer is that If the beatmaker's contribution is mostly percussive, you can probably register the song copyright in your own name.
Beats and Backing Tracks.Traditionally, the people who create the lyrics, melody, and chord changes, are the ones who claim the song copyright. In the hip-hop world, where the song is occasionally stripped to percussion and voice (with little melody), songwriting credits can be more difficult to identify. Generally, if "the beats" refer primarily to arranged drum parts (with maybe a bass riff or vocal sample), and you did the rest, then you are the songwriter. (We talk about the unfairness of this approach for drummers in this blog entry.)
If the beats consist of more --  perhaps a bed of chord changes, with, drums, bass samples,  guitar parts or other melodic instruments -- then it gets more complicated and the person you hired may be able to argue they are a co-owner. 
Paying the $200. According to the Dear Rich Staff the $200 payment for the beats is not going to make them a work made for hire for a few reasons we don't need to bore you with. The easiest way to assure ownership would be to get something signed and in writing that says that the beatmaker "assigns all copyright" in his work to you.
What copyright? Just so we're clear, there are two copyrights involved in a recording: the copyright for the song (generally considered the most valuable) and the copyright in the sound recording (which protects the recorded sounds on the recording). So far, our discussion has been about the song copyright. The beatmaker would have a claim of co-ownership to the sound recording copyright since he contributed his tracks. Typically, the record company or artist gets an assignment from the beatmaker and any session musicians or producers involved in the product so that the whole copyright in the sound recording is owned by one person.