Monday, November 30, 2009
Bands do it all the time. There is a tradition of bands borrowing names of movie characters -- for example, Duran Duran (Barbarella), Thompson Twins (Adventures of Tin Tin), Mogwai (the mean little creatures in Gremlins), Wu-Tang Clan (Shaolin and Wu-Tang), Pussy Galore (Goldfinger), Travis (Paris, Texas), Klaatu (The Day the Earth Stood Still), Holly Golightly (Breakfast at Tiffany's) and our favorite, Cosmo Vitelli (Killing of a Chinese Bookie). And of course, bands often borrow the names of movies as their monikers (Bad Company, Killdozer, Babes in Toyland, 10,000 Maniacs, My Bloody Valentine, They Might Be Giants, and White Zombie).
When to watch out. Of course, just because bands use movie-related names doesn't mean it's always legal or that you won't get hassled. In some cases -- for example, if you're borrowing the lead character's name in a movie series or franchise such as Harry Potter or Spiderman -- you may get a cease and desist letter. (Mattel unsuccessfully tried to stop the use of the Barbie's name in a risque pop song.) For bands picking names, the Dear Rich Staff recommends choosing lesser known characters or characters from non-current films and avoiding any additional references to the movie or images from the film in your album artwork or advertisements.
Wednesday, November 25, 2009
Tuesday, November 24, 2009
Proving access. Even if you can prove that you wrote the words -- for example, you kept a notebook for 39 years documenting your poetry -- you still must prove that the musician received your words (in copyright parlance, that's referred to as "access") and copied them. That seems like an awfully difficult thing to prove. The affidavit from your friend is good but unless she can verify that the pop musician actually received your letter, it won't help your case very much. In summary, it's not out of the question, but proving infringement will require hiring a lawyer and taking a financial risk.
The passage of time. You say that you discovered the infringement in 2007. The Dear Rich Staff researched online music stores and found copies of the recording dating back to 2002. If you do go to battle against Mr. PopStar, you will be grilled as to why it took you so long to discover the claim, and then why you've waited two years since discovering it to do anything about it. Perhaps you have good reasons for this -- you were ill, you had personal problems -- but courts disfavor people who sit on their claims.
Statute of limitations. Finally there's the statute of limitations -- a copyright owner has three years to take action from the date when they learn of an infringement (or should have reasonably learned of it). In the case of an active infringement such as this, your claim will likely be limited to the three years preceding your filing -- for example, only the revenue earned by the song between 2006 and the present. If you feel strongly about this ripoff, we recommend that you contact a copyright attorney for more advice. If you have sufficient proof, you may be able to find one who will act on a contingency basis. If you live near a major city that has an arts-lawyer service such as California Lawyers for the Arts, you may be able to obtain low cost legal assistance.
Monday, November 23, 2009
Stopping Others From Using the Name. You might be able to register the trademark PROJECT IRON QUILT as a service mark since there are no substantially similar marks. Possibly the owners of the IRON CHEF mark may object (although we doubt it). The owners of the PROJECT RUNWAY mark may care more about it since quilts are closer to fashion than cooking. But even if you obtain the mark, that doesn't guarantee your use of the concept.
Staying below the radar is better. Under various copyright (you're creating a derivative version) and unfair competition principles, the owners of the game shows may object to the borrowing of their formats for your purposes. (Reality shows are protective of their respective turfs.) Neither show may want to intrude on you if you're just running a charity benefit and raising money for cancer patients. But once you begin to claim IP real estate by registering the name or seeking other proprietary rights the shows may feel they have to react to preserve their property. That's why the Dear Rich Staff recommends you stay below the radar and enjoy your success without the paperwork.
Sunday, November 22, 2009
Friday, November 20, 2009
Copyright law and fair use. As for using advertising slogans under copyright law, there isn't a problem. Copyright does not protect short phrases and even if it did, the use you described appears to be a fair use.
Trademark law and fair use. You can use a trademark (including slogans) for editorial or informational purposes without permission. That's because readers who stumble on a trademark within the text of a novel aren't likely to be confused into thinking that Hebrew National or Apple are sponsors of the book. There is a concept known as 'trademark fair use' that is distinguishable from the fair use defense applied in copyright law -- it's used as a defense to a claim of trademark infringement. In other words, it's sometimes asserted when a competitor uses another company's trademark to describe the goods (for example, the maker of an electric dishwasher may describe the "joy" of clean dishes without infringing the trademark JOY for dishwashing liquid). Some noncommercial uses of trademarked terms (such as described in your letter) -- though not technically trademark fair use -- are often lumped in the same category.
Thursday, November 19, 2009
What would Wayne do? Even if you infringe, we'd like to believe that Wayne Dyer has enough love in his heart to forgive you for any copyright transgressions. Like Wayne says, "Anything you really want, you can attain, if you really go after it." So if you really want to borrow from his books and sell study guides, you should really go after it. Actually, we're not sure about that last part, we just got caught up reading lots of Wayne Dyer quotes.
Why you can probably get away with it ... The Dear Rich Staff, victims of lifelong self-defeating thinking, think that you can probably get away with selling your guides without any problem. To keep things on the safe side, don't sign a publishing deal, avoid extensive use of quotes, avoid any indicators that might imply that Wayne endorses your book -- don't put his picture on the cover (or pictures of his book covers), and it wouldn't hurt to include a prominent disclaimer on the cover to the effect that "Wayne Dyer does not endorse and is not associated with this publication." Don't let copyright get in the way of sharing your ideas -- Go for it now, because like Wayne says, the future is promised to no one.
Should she apply for copyright registration? According to the Dear Rich Staff there are benefits for registration but it is not required for copyright protection and is usually only needed if you're going after someone who ripped you off. We're guessing that since the program is on a CD, it contains various media -- text, music, photos, or some combination. In that case, there's a Nolo book that explains the process for multimedia registrations. If it's only text, this book will explain what to do. The easiest approach is to go straight to the Copyright Office for assistance. Here's a circular for registering multimedia works; here's one for registering text works.
Posted by The Dear Rich Staff at 2:26 PM
Tuesday, November 17, 2009
What's an inventor's notebook do? An inventor's notebook (sometimes called a "lab notebook") documents the development of an invention and can be used to assess commercial potential, make improvements, and keep track of contacts and notes. Inventor's notebooks are sometimes used to resolve disputes about inventorship, and to establish dates of conception and reduction to practice. Nolo sells a souped up inventor's notebook (with patent basics and worksheets) but a basic bound notebook will be fine.
Monday, November 16, 2009
What's the problem? The problem is you're not merely reselling the decal, you're selling a new product -- and you're using the logo/decal to distinguish it from similar products (by associating it with a sports team). Why else include the logo? Custom-making the logos so they looked slightly different wouldn't help -- you're still relying on team associations -- and probably would make it worse since your alterations would now be diluting the mark. (By the way, we answered a related inquiry from a crafts artist, here.)
Toe-stepping Dept. When companies pay big money to become cornhole board licensees, they expect some degree of exclusivity and they expect the leagues to police unauthorized uses. That's why you got that letter. Stating that you're not affiliated with the sports franchises (known as a disclaimer), is not likely to have much impact on your case. Sometimes prominent disclaimers -- for example, large lettering affixed right near a logo -- may mitigate a problem, but it's unlikely to succeed here. (we talk about disclaimers more, here.) The leagues have too much at stake and will vigorously pursue all potential infringers. So, unless you're ready to take them on, the Dear Rich Staff suggests that you either give it up or move your enterprise off the grid.
Friday, November 13, 2009
Work for Hire? As we mentioned in a previous blog entry, if the blog is not something you would create in the course of your employment and you created it on your own time, using your own equipment, then you own it under work made for hire rules. But if you got paid for doing it (wrote it during work time), or used work equipment and it was related to work (sounds like it was since you're talking about your 'industry') then your employer owns the blog. For example, even though I'm writing this miles from Berkeley and on my own computer, my employer owns these words. Some other factors that may matter are whether you signed an employment agreement discussing ownership of employee works, or whether your employee handbook at work has rules regarding employee-created works.
Trademark and Domain Name Issues. Regardless of the copyright rules expressed above, you're free to start another blog at your new job, provided you're not taking and using any trade secrets from your last job. The Dear Rich Staff believes that the bigger question is whether you can take the blog name (your trademark) and the domain name (The URL or address of your blog). If readers associate the blog with your employer -- for example, they access it at your employer's website -- then it's likely your employer will claim ownership of the name unless there is some alternative agreement between you and your boss. For example, you could work out a deal where you owned the name of the blog but licensed it to your employer during the course of your employment. If the domain is part of a free blogging service such as Blogger, then things become more confusing and there may be battle over who has rights to use the Blogger URL.
Posted by The Dear Rich Staff at 2:31 PM
Thursday, November 12, 2009
Dear Rich: My dear friend who is deceased is a published author and he has left the responsibility of his writings to me. The statement in the Will reads: "I give and bequeath all my correspondence as well as my handwritten manuscripts and other writings created by me, to [me], to keep in her possession for the purpose of typing and editing all such material and selling such works and dividing the proceeds among her [myself] and my children." He does not mention copyright. Does the estate keep the copyright and I keep in my possession the original works? Does the intention of the Will mean 'indefinitely?' Would my ability to publish the works then be limited to approval of the executors in perpetuity? Or does the copyright follow ownership? Does the reading of "give and bequeath" and possession of property imply that I would have ownership? I ask these specific questions because the executors and their estate lawyer have explained that the original works are on loan to me for the purpose of transcription and it is in their discretion to solicit editors, publishers and archivists of the original work. Is this correct? They have recently asked for the writing to be returned to them after mistakenly giving them to me. The short answer is that the grant in the will is unclear. We think you will need a legal representative in probate (or possibly in civil court) with the goal being a letter of instruction or some other ruling about the disposition of the materials. In other words, you'll need a lawyer.
Are you a literary executor? It seems as if the writer wanted you to perform some of the functions of a literary executor. A literary executor -- unlike a general executor who administers the will -- manages an author's literary properties and does so for a payment -- usually a percentage of the income that is generated. As others have pointed out, the job often creates a conflict of interest, for example, when Kafka's will demanded that his unpublished writings be destroyed.
The Copyrights.The magic words "give and bequeath" do not mean a transfer of copyright and it's unlikely that the author's copyright would transfer to you. But the control of the material, that is the decision-making about what happens to it, as well as the ability to license, publish and perform the materials are often designated to the literary executor.
You're Entitled to Something. It seems to us that the intent of the author was that you were to manage, edit and profit from the exploitation of the letters and manuscripts. So, the Dear Rich Staff is not clear why the executors are demanding the return of the documents ... but again, this points to the fact that you should seek representation.
Posted by The Dear Rich Staff at 2:32 PM
Wednesday, November 11, 2009
What's unique about letters? By their nature letters must be given to someone else -- in this case, the newspaper publisher. That doesn't automatically transfer copyright ownership; it just transfers ownership of the physical letter. According to the Dear Rich Staff, it's possible that a publisher would acquire copyright under a written agreement or, in the case of an online publication, a click-to-agree agreement transferring rights. Check the fine print in the publication. Otherwise (and unless excused by fair use), the letter writer can prevent duplication or further publication.
Posted by The Dear Rich Staff at 2:33 PM
Tuesday, November 10, 2009
Use the TTABlog for the Tricky Part. As you can see, accessing the documents isn't difficult. The challenge is finding those trademark applications that match your situations so that you crib from the right docs. In other words you want to piggyback on the work of another applicant who succeeded with similar facts. One way to find cases similar to yours is at the TTABlog which covers the proceedings of Trademark Trial and Appeals Board (TTAB). We recommend searching the blog for terms similar to the ones in your objection -- for example if your mark is alleged to be "geographically descriptive," search for that term and copy the relevant serial numbers for the trademarks in dispute.Check the responses in those TDR files.
Objections and Objections. BTW, you indicated you wanted to file a response to an objection against a trademark application. We're not sure which type of "objection" you're referring to but we're going to assume you want to respond to an examiner's Office Action refusing or rejecting your application. (Here's a helpful system for responding.) The public (including competitors) can also file objections to your trademark application during a thirty day period following publication of your mark in the Official Gazette. That requires different formalities, though it may involve similar language and legal arguments.
Thinking Like an Examiner. Finally, the Dear Rich Staff recommends that if you're curious as to the starting point for examiner objections, you should review section 1200 of the Trademark Manual of Examining Procedure. It's available online and is searchable by topic.
This just in ... MR, one of our readers, followed up with this helpful tidbit: TTAB opinions and docs never show up in the TDR, but can be obtained at TTABVUE, if you type in the application or registration number, proceeding number, or other identifying material. The most the Trademark Office databases will do is post a notice in the TARR status database, noting that an opposition has been filed. There is a very handy database maintained at TTAB Across the Board, which allows you to type in phrases like "geographical descriptiveness" in the Search Documents box, and get a list of TTAB cases where that shows up, and clickable access to the specific documents.
Monday, November 9, 2009
Indemnity. The Dear Rich Staff believes that the clause you're referring to is either a warranty - in which the artist promises the film does not infringe -- or an indemnity clause - in which the artist agrees to pay for any damages resulting from any claim of infringement. Either way the distributor can likely go after the artist for reimbursement if someone sues. Some distributors don't just rely on these contractual promises; they ask to see the documentation verifying the licenses and permissions.
Fair Use and Other Defenses. The concept of "fair use" is primarily for copyrighted works - the Hannah Montana song -- and not for trademarks (the golden arches). Trademark fair use applies to a different type of defense. As noted above, even if the distributor prevailed, the distributor would most likely have to pay its own attorney fees. So being right doesn't mean that the artist and distributor are free of financial liabilities. Also, you didn't mention if the anti-establishment film is a documentary or feature film. A documentary is likely to provide stronger defenses. (BTW, in today's completely co-opted world does the term "anti-establishment" have any meaning anymore?)
Insurance and Other Odds and Ends. Does the distributor have insurance? If so, you can be sure that the insurer will proceed after the artist and obtain a judgment (and the distributor may do the same on its own). The artist may not have anything of value right now but a judgment will last for many years should the artist earn or inherit anything in the future.
Struggling Artist? We're not sure why the term "struggling artist" bugs us. But really, everyone's struggling to some extent -- even Lindsay Lohan -- and the artist in your question just got a distribution deal which means he or she is way ahead of the game, at least in the struggle-reduction department. Ennyway, just a thought ... and we'll try and get over ourselves.
Friday, November 6, 2009
Forest or the Trees Dept. Hmm ... We could go into discussions about substantial similarity, the abstractions test, and trademark infringement (and we could review a previous post on this subject). But it really comes down to whether the folks that own the Indiana Jones trademarks and copyrights feel that your insurance company is channeling its brand.
If You Build it, They Will Sue. Possibly, Lucasfilm's legal team may not care -- for example, if it's a one-shot promo film, the similarities are primarily generic (typical pulp adventure hero stuff) and your film has limited exposure (just shown at a company getaway). But if it smells like you're emulating the franchise for a deep-pocketed client, then you and the insurance company will be dragged into a dispute. Our suggestion would be that if the Indiana Jones motif was the insurance company's idea, seek an indemnity provision in your contract. If it was your idea, either ditch it, or check your contract to make sure that you are not indemnifying the insurance company.
Posted by The Dear Rich Staff at 2:36 PM
Thursday, November 5, 2009
Dear Rich: I am creating a computer program that requires a lot of line art. I found a series of books ('Scan This Book', 'Scan This Book Two', and, of course, 'Scan This Book Three') that display excellent public domain line art. The legalese at the beginning of the book states that all of the art is copyright free, but that the selection and layout is copyrighted. My program has nothing to do with distributing clip art, and I do not need to use the layouts used in the books. If I were to use most of the art from these books, would I be infringing on the author's/publisher's copyright? Would it matter if I slightly altered the images by coloring them? Would it matter if I combined their selection of images with other public domain images? The short answer is that you're fine copying the material in the book. Like all-you-can-eat restaurants, owners of public domain collections don't mind how much you digest, they just don't want you taking all their stuff and selling it somewhere else. Assuming your software product is not created to sell public domain art, there's no reason to bother with any of your other questions.
Copyright Rules. As you know, you can do whatever you want with public domain artwork. However, under copyright law, the owners of the book may have a compilation copyright. We say "may" because compiling public domain works doesn't automatically amount to a compilation copyright. There must be sufficient creativity in the judgment, selection and arrangement of the public domain material -- for example, "The Best American Stories from the 19th Century" or "Sketches of Victorian Kitchens" are probably protectable because they require decision-making and selections. Even if the book constitutes a copyrightable collection, that copyright is still regarded as being "thin" -- meaning that you would need to lift nearly all of the thing "as is" to infringe it. Public domain compilers such as Dover are primarily concerned with someone taking their material and competing with them. In summary, if you are using the public domain material for aesthetic or decorative purposes and not redistributing the artwork for re-use or re-sale, you're free to do whatever you want.
BTW. The Dear Rich Staff believes that the Scan This Book series is out of print (we couldn't find new copies available online and we couldn't locate the publisher Art Direction Book Company). That doesn't mean nobody will assert copyright; but it does indicate that it's not at the forefront of a publisher's radar.
Posted by The Dear Rich Staff at 2:38 PM
Wednesday, November 4, 2009
Dear Rich: Can one copyright one's blog? I'm guessing yes. How does one go about it? Does each daily blog entry need to be registered? Or does one simply forego formal registration and note Copyright (c) at the bottom of each blog? Sorry, we're a little preoccupied filming raccoons outside our office window. (And one reason we posted our raccoon movie is because of this article.) As for your question, hard as it is for some people to believe, you have a copyright once you create the entry. That's right; it's automatic. If someone steals your entry, you can pursue it with a DMCA Notice (Here are Google's rules for filing the notice). If you wish to sue in court, you will need a copyright registration. You can file your application after you discover the infringement and register all of your entries at that time (filing as a text work). This article explains some strategies. There may be a delay of a few months to get the registration or you can expedite your application for about $800.
Get Proactive. You can also register the blog entries now instead of waiting for an infringement. That's a little bit of work and requires periodic new filings. Registering now may provide some benefits in litigation but generally is not worth the effort for most blogs. Also, as a proactive measure, include a copyright notice (You can add notice manually or using Wordpress plug-ins).
Posted by The Dear Rich Staff at 2:39 PM
Tuesday, November 3, 2009
The Terms of Your License. Your license sounds like it had only one condition: anonymity. Since the poster has now breached that condition, you have a right to revoke your license -- that is, have the email removed. If the poster is disregarding your request, you have to try a more forceful strategy. One approach may be to contact the other party's service provider and send a DMCA notice. (This book -- A Legal Guide to Web & Software Development -- explains how to do it.) Another possibility is to hire an attorney to threaten the poster with a lawsuit claiming copyright infringement and invasion of privacy.
Is It Worth the Effort? Keep in mind that hiring a lawyer or sending a DMCA notice should really only be used if the posted email is causing you some harm. These are not sure-fire strategies -- for example, the poster may assert valid copyright defenses -- and they prove expensive. The Dear Rich Staff realizes this may not be what you wanted to hear ... but sometimes the easiest approach may be to let go and move on.
Posted by The Dear Rich Staff at 2:40 PM
Monday, November 2, 2009
WIPO Rules. Under domain name arbitration rules, if McDonald's has a trademark for "espresso pronto" and they can demonstrate that you registered or acquired the domain name in "bad faith," then they'll have a legal basis to acquire that domain from you. What's bad faith? It's if you own the domain primarily for the purpose of selling, renting, or otherwise transferring it back to the trademark owner (or to a competitor) for more than you paid -- in other words, if you're trying to capitalize on McDonald's trademark rights.
Who Has Trademark Rights? We're not clear what trademark rights McDonald's has to the mark. Although some websites use the "R" in a circle to describe the Espresso Pronto product, we're not seeing any U.S. federal registration (or applications) for the terms and the product is not listed on McDonald's U.S. menu. We did find references to it in New Zealand and we found two trademark applications in New Zealand's TM database for the term. Both were filed by McD Asia Pacific, apparently the Singapore subsidiary of the U.S. company. One application was abandoned and the other is currently under examination. So, perhaps we should assume you're writing to us from New Zealand? (That would be exciting. The Dear Rich Staff once traveled to Kiwi country and had a great time.)
Playing by NZ Rules. We couldn't determine whether New Zealand has a cybersquatting law, but the international rules cited above would apply for ICANN arbitrations. You say you failed to acquire trademark rights to the term when you used it. We're not sure what you mean -- as any first use in commerce generally establishes common law trademark rights --but in any case, the fact that you no longer use the term does not help your case and may hurt it. Your case could also run into problems if McDonald's has evidence that you are offering to sell the domain at a profit to others - particularly a coffee-making competitor. If you're not offering to sell it for a profit and there's no evidence of bad faith, then McDonald's legal basis for seeking the domain appears misguided.
Posted by The Dear Rich Staff at 2:41 PM