Monday, May 31, 2010

Stay-at-Home Mom Licenses Sears Tower Postcards: Lawsuit?

Dear Rich: I am a photographer that mainly specializes in art and portraiture, (okay, I'm MAINLY a stay at home mom). I recently came across a postcard company that wants to make cards and memorabilia of a few of my Chicago vacation images. One of the images is of the Sear's Tower. Is there some kind of property release required for that, or am I okay selling these images to a postcard company? I know you have said that some buildings have trademark protection. Also, I noticed that the Sear's Tower is now the Willis Tower and there is a trademark for and it is listed under Real Estate. The picture in question was taken before that trademark registration, does that matter? I really would appreciate your input on this. I would really love to sell this image but not at the expense of breaking the law. We're back at your statement  -- "Okay I'm MAINLY a stay at home mom." The way you capitalized "mainly" makes us a little sad, like the photography thing is not worthy in some way. The thing is that if somebody buys your postcard, they will know you MAINLY as the photographer who took that picture. Or maybe another way to look at it is like the Jeremy irons/Alfred Stieglitz character told the Joan Allen/Georgia O'Keeffe character in the O'Keeffe biopic, "It's all work until somebody buys it, then it's art."
Right, you had a question. You're fine to sell your image of the Willis (nee Sears) Tower as a postcard. The registration that you mentioned is not for the image of the building -- it is only for the words "Willis Tower" and it is only for use with real estate services. The Dear Rich Staff could find no trademark registration for the image or design of the tower (although a registration is not necessary to claim trademark rights). Ennyway, as we mentioned in a previous post, in order for someone claiming trademark rights in the building design to stop you, the following would have to be true: (1) the building would have to have an identifiable, distinctive appearance; (2) the building would have to be publicly associated with certain goods or services; (3) your use would have to be commercial (not editorial); and (4) your use would have to be linked to an offer or endorsement of similar goods or services.Based on that analysis, you should be good to go.
And speaking of photographs of buildingsCheck this out.

Saturday, May 29, 2010

Wii Want it All

Dear Rich: If college students who play Wii recreationally wanted to create a blog to share news about Nintendo's Wii console and Wii (software) games with other gamers, wanted to host mini competitions to play other gamers and used the name Wii in the domain (URL) for the blog that would be used for news, promote Wii competitions and collected enrollment fees from teams and sold merchandise to the registered gamers who could track their game scores on the Blog, would this be allowed? First of all, congratulations. You have provided the longest single sentence/question ever submitted to the Dear Rich blog - 82 words. We're going to have to parse it in order to provide the best answer. (1) Yes, a blog to share news about the Wii is fine. (2) Hosting Wii competitions is fine as long as you don't imply that Nintendo endorses the events. (3) Using the word "Wii" in your domain for your blog is a little iffy although you're probably okay, again as long as it's clear that the blog is not Nintendo-endorsed. Others have incorporated Wii into their domains with apparently no problems. But beware. If Nintendo believes you are acting in bad faith, they can go after the domain under domain name rules. (4) Selling merchandise if it has Wii or Nintendo trademarks or logos or Wii-generated artwork is where things start to get decidedly uncool. Nintendo, if it learns about that kind of thing, will have an obligation to protect its trademarks and copyrights. (5) Collecting enrollment fees creates a whole bunch of additional issues from shopping cart security to the age of your customers (we're talking about chronological age not Wii Fit Age). The Dear Rich Staff feels that a better business model is to make participation free and to rely on Wii related advertising (whether Google or otherwise). (Y'now just sayin').

Friday, May 28, 2010

When iconic legos come alive ...

Dear Rich: For the past year or so I have been working on photographs that I am now planning to put into a book. However in some of the photos I quite clearly display products and trademarks and am just wondering about the legal aspect of doing so. An article online referenced a case that Mattel brought against an artist who had used Barbie dolls in what they described as 'unflattering positions.' I should probably add as well that I am in Ireland, so I'm not sure if you would know about the law here although I believe that our trademark law comes from the European Union. I think the attached picture may be a good representation as for me it contains several trademarks: Rizla papers, Golden Virginia tobacco (although you can't see the name), and I wasn't sure if the Lego men themselves would be considered a trademark as they are quite recognisable. Another concern I have about this particular picture is that it has a child's toy engaged in an adult activity. However I realise that this is a separate matter entirely. Thanks for reading our blog in Ireland. We would put a pin in our map except that all our maps are online and we don't want to poke a hole in our monitor. By the way, before we start blabbering on about legal rights, have you seen this short film? We have the feeling that if these talented French artists can get away with this type of logo-exploitation (and win an Academy Award), your work should have no problems. As for your use of Legos, some artists have made a whole career out of those little bricks  without any legal issues arising. So we're feeling good about your use, as well.
European lawThe Dear Rich Staff is not familiar with Irish law although we do have a limited knowledge of the trademark laws that apply to the European Union. For the most part, the same principles apply in the U.S. and Europe, and both sets of laws recognize limited rights for free speech and parody.
Barbie's case. You are correct about the Barbie doll case. Although the artist prevailed, one should also be mindful that the lawsuit lasted for years and cost hundreds of thousands of dollars. Mattel has a litigious and slightly cantankerous reputation so as a general rule, it's probably best to avoid placing Barbie in compromising positions.

Thursday, May 27, 2010

To be continued - what's a continuation patent?

Dear Rich: There is an invention for a sanitation tube system that will expire this year. However, I found another invention that had been issued three years after the first one which was related to an adaptor to fix the original tube from the same inventor mentioning that this invention is continuation of the earlier patent. Is it legal for me to make a tube based on the first invention? Does the word "continuation" in the second patent mean that I can't touch the first patent unless the second one is expired? Can the invention be issued twice? First, we'll answer your last question. No, an invention cannot be issued twice -- that's known as double patenting and is illegal. And of course, once a patent expires you can make, use, or sell the invention covered by its claims and not worry about getting chased. 
What's a continuation? The Dear Rich Staff went to the always-helpful (and now-legendary) David Pressman, author of Patent It Yourself (insert FTC disclaimer), for some help with your other questions. David explained that a continuation is supposed to replace the parent application. A parent and its continuation are supposed to cover the same invention and generally both do not issue (patent lingo for the official grant of the patent). 
The problem is ... However sometimes the USPTO issues the parent and a continuation. They usually have somewhat different claims and the continuation usually expires the same day as its parent application, so you can make, use, sell the invention covered by its claims with impunity once the continuation expires. A "terminal disclaimer" is supposed to be filed in the continuation so it will not last beyond the expiration of the parent. If this situation occurs, you'll need to consider infringement of the continuation separately from its parent case. That is, one does not affect the other. 
Is this confusing enough for you? We're getting a little light headed here. Summing up (if that's the right phrase), the continuation may have a terminal disclaimer and may or may not cover the same invention as the parent. Both may be invalid for double patenting if a terminal disclaimer was not filed. David advises that since this is such a complicated matter, you might want to have a patent attorney review the patents. Why didn't we just say that in the beginning? We'll ponder that and get back to you.

Wednesday, May 26, 2010

Looking for unclaimed royalties for expired patent

Dear Rich: I found the paperwork on my deceased grandfather's invention for stabilizer bars which I believe are standard on many heavy duty construction vehicles, such as backhoes, etc. There is a patent number and lots of drawings and photos of the apparatus in use. The patent was issued in 1977. Do you know if there is a way that I can find out whether there are any unclaimed fees or royalties? Sorry, but you're unlikely to locate any unclaimed royalties for a patent that likely expired in 1994. 
First you need to find the licensees/assignees. You would need to find the companies that licensed the patent from your grandfather. Check your grandfather's estate documents for evidence of those agreements or consult with your grandfather's attorney if that's possible. Alternatively, search patent records at the USPTO or Google patents for evidence of any assignment of the patent. 
Now the hard part ... Even assuming you could track down companies that had licensed or were assigned the patent, you would still face the biggest hurdle: making a legal claim for compensation. What's in your way is the statute of limitations. Under most state laws, you have between 3-10 years (here's a fifty state chart) to file a claim based on a breach of contract. That date starts ticking the day when you should have become aware that the contract was breached. We don't know the details of your grandfather's death or his condition preceding death so it may be possible to make the creative legal argument that it was not possible for you to discover the breach of the agreement until now but the Dear Rich Staff sort of doubts that will fly. In any case, don't listen to us if you have any doubts; promptly take your paperwork to a patent attorney. All in all, we hate to see inventors go uncompensated (if that's the case with your grandfather) but we're not sure there's much you can do.
From our mailbag. Kim from Beverly Hills sent us news today that a case of patent litigation between two magicians has come to an end and the patent holder was victorious. Thanks Kim, we're glad the world is safe for the makers of levitating pens. (And yes, readers, the magic secrets are published for the world to see in the patent applications). Mostly, we're grateful to Kim for getting us to research the subject because it turned us on to this wonderful blog.

Tuesday, May 25, 2010

True Crime Author Needs Truth Meter

Dear RIch: I am a retired college professor and have written a "true crime" book that is about to go to the publisher. 99% of my materials came from actual court and law enforcement documents, live interviews, etc. However, I did get a small amount of information from an inmate's website. This website is copyrighted by the inmate (in his name) and I have his written permission i.e. actual document, notarized, etc. My problem, in my mind, is that I don't know where he got the information that appears on his site. I will, of course, show my documentation as coming from the site with permission. Where, my friend, do I stand? You've done everything you're supposed to do, followed all the rules, and yet somehow, there's this nagging feeling that something could go wrong. We know how you feel. You're in the twilight zone occupied by lawyers and journalists who have first hand information but are unsure whether the first-hander is telling the truth. After all, what good is a copyright assignment or a permission agreement if the person providing it has lied or is using infringing material? So, there are two concerns here: your credibility as an author and your liability as a writer.
Credibility. If the book's credibility hinges on the unverifiable content you got from the inmate, you may need to either seek independent verification (the journalist's approach) or disclaim the veracity of the content (the lawyer's approach). For example, you can state within your book that you have been unable to verify the claims by the inmate and cannot authenticate the content provided. This won't avoid legal liability (and it won't help sell any books) but it does something to preserve your credibility --  that is, you're not trying to pull something over on the public.
Liability. Most publishing agreements require that the author indemnify the publishing company for any third party claims. For example, if the inmate makes an untruthful statement about someone who later sues for defamation; or if the inmate has copied a third party's letters and that third party sues, you would have to pay the publisher's legal costs and damages. At the same time, the disgruntled third party may come after you directly. There are some liability shifting techniques you could try. For example, you could transfer ownership of your book to an LLC or corporation and have that entity enter into the publishing arrangement. That may limit your liability -- that is, prevent someone from going after your home -- but it's not always a guaranteed shield and the publisher may possibly bypass that and demand a personal guarantee. 
Limiting Indemnity. You can also try to tweak the indemnity provision of your contract if you have the bargaining power. 
  • Try to limit indemnity to situations where a lawsuit is filed. That prevents you from having to pay simply because somebody is threatening to file, or merely complaining about something. A more stringent and protective standard would require you to pay only if you lost the legal battle with the third-party. 
  • Attempt to cap the indemnity. This is perhaps the most difficult and controversial modification to make to your indemnification obligation because it limits your liability to a specific amount--for example, you never must pay more than you earned under the agreement.
Some final thoughts ... (1) There's always insurance, and (2) We haven't mentioned this earlier since it seemed inapplicable to your decision. But whenever someone pays for permission they can request promises of authenticity and demand indemnity as well. Of course, that's only as solid as the other party's financial condition -- which is why it probably doesn't apply in your case.
BTW, The Dear Rich Staff votes this as their favorite true crime documentary about an author.

Thursday, May 20, 2010

Gone Crafting: CDs as clock faces

Dear Rich: I have been trying to come up with some craft ideas to make and sell. I thought about using CDs or DVDs as clocks by adding the mechanisms and putting numbers on the faces of them. Is this illegal? Can I get in trouble for copyright infringement? No, you won't get in trouble if you're using existing CDs. As we discussed in another post, lawyers may argue as to whether the first sale doctrine covers this repurposing -- is it a derivative work? -- but we feel your CD clocks will go unhassled. You might run into problems if you were to print a celebrity's image on the CD yourself and then sell the CD. (Of course, like everything else in life, there are videos and how-to websites explaining the CD-to-clock process.) 
Speaking of craft artists, it's time to drag out the FTC disclaimers because another one of our books just dropped. That's right, more words, more paper, and even an unrecyclable plastic disk. If we weren't so obsessed with getting higher Bookscan numbers, we'd be drowning in environmental self-hate. Well, maybe, we'll figure out XML, learn ePub basics and solve that issue someday. And for you crafters with an iPod, check out our podcast on the subject.
Hey and speaking of tireless self-promotion. The Dear Rich Staff recently played on a new album by one of our favorite performers

Wednesday, May 19, 2010

Can we use a Disney dress in indy flick?

Dear Rich: I made a low low budget indie feature film (not completed yet). In the film, a girl wears a Disney princess dress a lot. My costume person erased the princess's face from the buttons, but didn't change anything else. Even if this dress isn't as well known as the Snow White dress, Disney people (and kids who love princesses) could perhaps tell that this is a dress purchased at a Disney store. Will I have to get a permission to use the dress, or, can I still use it without contacting Disney because the princess face is erased?  The short answer is that if the only connection to Disney is the dress, you're probably okay. Despite valiant attempts by the fashion industry to achieve protection, clothing (a useful object) isn't protected under copyright law. However, a costume -- for example, the Batman rig -- may be protected under copyright and trademark law because it has a sufficiently unique combination of decorative elements, or it directly conjures up the copyrighted character.  
Not likely to be an issue for you. But if the only use in the movie is as wardrobe for a character with no connection to Disney, it shouldn't be an issue. Removing the buttons was a good idea and should demonstrate your good faith in avoiding any connection with Disney (unless someone takes the cock-eyed view that you're removing copyright and trademark notices!). The only other potential for problem would be if you had entered into some license agreement, for example, if you bought directly from Disney and they made you use a click-through agreement that prohibits displaying the dress in commercial motion pictures ... a legal theory which sounds remarkably far-fetched as we write it.
Also, we're confused. We've been googling Princess dress ads (please Google, don't track that in our search history) and we can't tell for sure whether "Princess" refers to a line/brand of Disney dresses or to a specific princess/character? For example, the dress shown above is billed as "Disney Princess Role-Play Dress" but it has a picture of Sleeping Beauty on the tag, (so what is the role being "played"?). If the reference is to a line of dresses, the Dear Rich Staff believes that wearing one is probably even less of an issue for your movie. 

Tuesday, May 18, 2010

Attack of the Disney pinatas III: The final episode

When we last left off, the Dear Rich Staff was fending off an attack from intellectual property fundamentalists angry over our remark to an unauthorized maker of Disney piñatas: "on the other hand, if you keep a low profile, your use should not trigger any angry letters from Mickey." We were advised that our advice was not that far off from helping a bank robber (especially if the bank vault is packed with Goofy piñatas!) We're not saying we're concerned for our safety but we did change our phone number, hair color, and Mii avatar. 

But readers, it turns out want to hear the types of qualifying wishy washy IP risk assessment that we've pioneered on the web. As one reader wrote: 

"Whenever I have read one of your variations on the theme of 'but you probably don't have to worry about getting caught," I understood you to be saying that copyright owners usually don't waste time suing people who don't have the ability to pay damages. The key word "usually" seems to be ignored by lawyers and journalists who point to the major record labels' recent scourge of terror. But your point was never lost on me." 

A few members of the bar wrote in. One noted:

"I always say [to clients] there are two sides to these questions: the legality, and the reality. The legality is that yes, the proposed activity would be infringement, and there are arguably both legal and moral reasons not to go down that path. But the reality is that in many of these situations, no-one will know and no-one will care."

Another attorney wrote that our DIsney risk assessment was not like encouraging bank robbery (whew!)

It's more like saying de minimis non curat lex, so if your activity is sufficiently trivial, the legal issue is unlikely to be a problem--even for Disney. No harm, no foul.

Right on! It's all so bloggy!  We love our readers, even the angry ones ... and blogging sure is great when you don't have to talk about anything substantive.
RIght, we had a point. So, ennyway, we withdraw our withdrawal and we're now back to our risk assessment model. Speaking of which... we wonder about the risks associated with our Disney piñata artwork. We seem to remember a case involving the Air Pirates ... and then there was that one about the animated John Deere logo ....

Monday, May 17, 2010

More on Disney Pinatas?

Our recent blog post on DIsney piñatas has stirred up some anti-Dear Rich Staff feedback.  One commenter was especially unhappy with our comment "on the other hand, if you keep a low profile, your use should not trigger any angry letters from Mickey." They wrote: "Is that like saying: If you only illegally download about 200 songs a year you should be fine? if you plan your bank robbery well, you shouldn't be caught? On the other hand offering bad advice on the other hand is not a good policy." Hhmmm. You might have turned our head around on this one. There's really no reason for us to tell people that they can get away with illegal activity. After all, the majority of murderers and bank robbers already know it. And it's not like we care whether there are more or less Disney piñatas in the world  -- that's pretty much pre-determined by the forces of greed, consumerism and personal taste. So there's really no reason for the Dear Rich Staff to tell you whether police radar is operating nearby. 
Another reader wrote: "This is the theft of the Walt Disney Corporations intellectual property and you want to profit from it?! It's you x's thousands like you that create a huge problem which drives up cost to protect Disney trademarks, trade names, copyrights, patents & trade secrets. This strikes at the very heart of American commerce." We support American commerce (although we're not sure what portion of Disney's  revenue is derived from outsourcing and foreign manufacturing). And we certainly don't want to chip away at Disney $30 billion in merchandise revenue by encouraging anyone to sell DIsney pinatas at local crafts fair. But we think you may have picked the wrong company as an example of an IP victim. Disney was a key lobbyist in the land grab resulting in what is known as the Mickey Mouse Extension Act (and earning twenty years of extra revenue for little Mick). And let's not be naive about IP. Intellectual property, as David Pressman so aptly put it, is a hunting license and some companies have turned infringement into a profit center with their selective enforcement. Anyway, we've got no gripes against Walt -- after all his people combined social justice and licensed characters when they opened up the Magic Kingdom to gay marriage. So, like we said, we'll be careful in the future not to give the nod to piñata poachers.  

Friday, May 14, 2010

Is new TM application needed for new goods?

Dear Rich: I obtained a trademark on my company logo. Does this mean that every product that bears my company logo I now have to register with the trademark office to put it in commerce? Thanks for keeping your question short. Brevity is much appreciated even if it means a lack of clarity. We think what you're asking is whether you need to file a new trademark application for every product that is not listed in your trademark registration. The short answer is, "that depends." Obviously you don't need to do it if you're not concerned about someone using a similar mark on those types of goods. Otherwise, the Dear Rich Staff wonders if you need to spend the money, especially if the products are the kind that might be anticipated by your registration. For example, if your registration is for silverware, it's likely you might expand into another products, for example kitchen knives, knife block sets, or possibly, even dinner plates or bowls. Your mark secures you protection -- at least to the extent that the USPTO will be unlikely to grant a registration to another company -- for a gray area of products that are related to your goods, generally considered similar to consumers, and to which your business might potentially expand. 
How do you tell? A lot of factors are used to determine which related goods should be protected by your mark including its distinctiveness, your marketing channels, consumer sophistication, and the international classes in which the goods fall. Sometimes, the USPTO's decision on these issues doesn't always make sense. For example, one would think that automobiles and automobile tires are always considered to be closely-related goods. Not so. Probably a prudent course would be to file a new trademark registration if you expand into a completely new international class of goods or services, or if one of your products becomes an especially strong seller for your company. 

Thursday, May 13, 2010

Disney piñatas?

Dear Rich: I am starting a home based business selling piñatas and party supplies. Although the piñatas that I had made are more from generic items, animals, etc. I was wondering if I can use images like the Disney's Princess on them without getting in trademark troubles. The Cricut company sells a cartridge called "Happily Ever After" with Disney images. May I use some of the images that I cut from it on my piñatas? Your use likely violates the law and the Cricut license agreement. And by the way, Disney licenses its own line of piñatas (if you can really call those things piñatas -- they look more like plastic bags, don't they?)
The Cricut license. As you already know (and the Dear Rich Staff did not), Cricut (pronounced "Cricket" in case you're reading this blog post aloud to a fellow insomniac) provides a system for making die cuts of popular and iconographic imagery. Cricut imposes a license agreement on users of its cartridges, and that policy, known as the Provo Craft Angel Policy, apparently seeks to limit what you do with your die cuts--for example you're limited to using the die cuts on 200 crafts products a year. The policy as to third-party trademarks may differ and is usually set forth somewhere in the package documentation, but the policy regarding Disney seems to be clear: "Disney characters and images MAY NOT be reproduced and sold."
Is the policy binding? At least one disgruntled user has investigated the legal ramifications. Although, we can't say we agree with all of the legal reasoning, the uproar among users has apparently caused Cricut to revise its non-Disney Angel policy, at least as to use of the die cuts on cakes, scrapbooks, and some other items. Whether the user license is binding depends on a bunch of legal factors that we don't want to bore you with. The important thing is that Cricut apparently thinks it's binding, and more importantly, even if it's not binding, Disney can still go after anyone who uses their marks without permission and confuses the public into thinking it's a Disney product.
If a tree falls... There's one other thing to consider which is what we call the tree-falls-in-the-forest factor -- is whether the folks at Disney's LegalWorld will ever learn of your use. If they do and Walt's people send a letter, there's a chance that the matter will end with you simply halting the sale. On the other hand, things could also get very Goofy and Daffy!
This is going on too long. Good thing we don't have to pay for each word we use. Anyway, it's a tough call but we'd say yes, the use violates trademark law. On the other hand, if you keep a low profile, your use should not trigger any angry letters from Mickey.

Wednesday, May 12, 2010

Lyrics as body painting

Dear Rich: Some students of mine are working on an anti music piracy advertising campaign intended to encourage students to download legally -- that illegal downloading is more than just stealing, it's a poor reflection on your character. The visuals in the ad show a person looking at themselves in a mirror. Written all over their body are recognizable phrases from songs, " Hey Jude" "I can't get no satisfaction" etc. The pay-off line is, "Illegal downloading, it's written all over your face." My question, is it actually illegal to use the snippets of songs written on the face of the person? Is that copyright infringement? First of all, we just want you to know that the Dear Rich Staff got in a whole lot of trouble during this photo shoot as the makeup we used was a little 'wetter' than we thought and left a reverse impression on our couch. We tried hiding it with a pillow and then spent a ridiculous amount of time Googling "eye makeup stain removal" but most of our results required dry cleaning fluids and ammonia. That's definitely not going to fly here at Dear Rich Staff headquarters. And anyway, where are we supposed to get dry cleaning fluids and ammonia at 6:30 in the evening? So our first bit of advice is to be careful if you're shooting this video at your Mom's house. 
Right, you had a question. Without thinking about the law (whew, that's a relief), we have to ask ourselves, considering that about 95% of music downloads are illegal, would any music publisher hassle someone who was making a video to prevent music from being stolen? Can you imagine the PR fiasco if that got out? Or as our niece would say, 'What an embarrassment!' So, strictly from that POV, you shouldn't have a problem with your video.
Copyright is on your side. Copyright doesn't protect short phrases so that's working for you as well. Arguably, a music publisher could argue that you've taken more than a short phrase; you've taken the "heart" of the composition and on that basis, it's a literal infringement. We doubt that will fly since you're not taking the music, and because you're compiling a bunch of short phrases, not merely highlighting one. Finally, you have a pretty strong fair use argument since your use is sort of transformative (you're using the phrases to say something about piracy). So all in all, we think the copyright gods would bless your use. We'd love to blabber on but we have to go check the Drain/Spin cycle.

Monday, May 10, 2010

No copyright on fancy horse shirts

Dear Rich: My wife and I want to start a home business.My wife makes very fancy shirts for the people who ride and show horses.Every shirt is custom and there are no 2 shirts the same.My wife's shirts look similar to a company that sells these shirts already.Will we be breaking any copyright laws. If you're wondering why you see so many fashion knockoffs in retail stores it's because clothing designs do not qualify for copyright protection. The position of the Copyright Office is  that the art cannot be separated from the function in clothing designs (although the Copyright Office has tried to help craft a solution). 
They've tried. Several times, clothing designers unsuccessfully petitioned Congress for a new type of legal protection (they last tried in 2009 with a proposed three-year type of protection). One costume designer attempted to get her work through the Copyright Office by claiming it was a 'soft sculpture -- but the Copyright Office later rejected it. Although you can't protect clothing design under copyright, you can protect unique artwork featured on clothing, and you can protect arrangements of fabric -- for example, quilt designs used on clothing. So if the clothing you are copying has unique imagery, copying that would be a no-no.
What about trademark law. Some clothing designers have tried to protect clothing as a form of trade dress. That hasn't always worked so well.  In a 2000 Supreme Court case, Samara Brothers, a clothing company that manufactures a line of children's one-piece outfits appliquéd with hearts, flowers and fruit, claimed that Wal-Mart copied Samara's designs and sold the knock-offs at a lower price than offered by Samara. The Supreme Court ruled that Samara's designs could not be protected under trade dress law unless Samara could prove that the designs were used to identify the source of the product (Samara) rather than the product itself. In other words, in order for trade dress to apply, a customer seeing the arrangement of appliques of hearts, flowers and fruit on children's clothing would have to think of Samara as the source in the same way that a customer who sees the Nike logo on products associates those products with Nike. In the Wal-Mart case there was no evidence that customers associated the designs strictly with Samara. We're not sure how well-known the other company's designs are but if they are well known by brand name and the aspects that you copy are non functional, you may get hassled. Similarly, the Dear Rich Staff believes you may get hassled if you copy any element over which the other company claims trademark--for example a brand name or logo.P.S. Here's a helpful article on the subject.

Thursday, May 6, 2010

How Robert Crumb Almost Lost Keep on Truckin'

Hard as it may be for some people to believe (everyone under 30, raise your hands), there was a time in American commerce when we did not buy licensed merchandise. In the 1950s, Walt Disney created the first market for kid's merchandise, initially with Mickey Mouse, but even more so with the surprisingly successful Davy Crockett craze. But aside from kids buying lunchboxes and coonskin caps, Americans did not adorn their apartments and homes with image-laden posters, bathmats, towels, and sheets and did not wear trademark-adorned t-shirts, hats, and sweatshirts. Then along came the 1960s counter-culture, and the kids who grew up with Mickey and Davy wanted merchandise to reflect their current lifestyle.
The panel. The image that initially drove this new merchandise market was a cartoon panel entitled "Keep on Truckin'" created by cartoonist Robert Crumb. In 1968, "Keep on Truckin'" debuted in Zap No. 1, an underground comic and Crumb was surprised by the wild popularity that followed. (He believed "Keep on Truckin'" to be "the dumbest page in the whole comic.") Within months the imagery and phrase was being hawked on T-shirts, posters, patches, stickers and bathmats, none of which were authorized by Crumb. A fellow artist persuaded Crumb to get a lawyer. "I just never thought that I could ever get myself in a position where I could actually have a lawyer to protect me," he later said, "So it sounded good to me, you know. You have to have somebody in the legal business on your side." 
A.A. Sales pulls a reverse Pac-Man. One of the companies he pursued was A.A. Sales. Initially the parties reached a settlement and $750 was paid to Crumb but there was confusion as to the payment and A.A. Sales continued to sell unauthorized posters, puzzles and patches. In 1973, Crumb's lawyers filed suit in federal court. The judge, Albert Charles Wollenberg, a 73-year old Eisenhower appointee, was no stranger to underground comics--he had previously ruled in the infamous Air Pirates case in which he halted Mickey Mouse's use in a risqué comic. A.A. Sales decided to dig in its heels and refused to settle. At first it argued that the cartoon did not contain sufficient originality, and alternatively that Crumb abused copyright. When those defenses didn't fly--Crumb had borrowed the phrase, but his drawing of the zoot-suited big-footed walking characters was his own--A.A. Sales trudged out a defense that was only available in the U.S. Known as "notice omission," the defense was essentially that Crumb lost his copyright ownership because he had published his work without the little "C" in the circle with the date and Crumb's name. 
The problem .. ... the solution. The only problem with A.A.'s defense was that it didn't know of any omission, and had no proof that there ever was an omission. So it did what many copyright defendants did at the time--it went on a fishing expedition. Fortunately, Crumb had included the copyright notice when he published Zap No.1. He did so more out of attention to detail than for any legal reason since he thought it was "traditional." The notice had also been published in Head Comix (when the cartoon was included in a book published by Viking Press). Lacking proof, A.A. Sales continued to pursue discovery and Crumb lamented the whole process and expense:
 "Morally, I feel that--I mean in 1967 when I was drawing this stuff, to me it was all a mater of morality because I just didn't develop an awareness of where this is the hard, cold facts of business life in America, the way it works, you know, like the whole principle that you can be starving in the gutter and somebody could be getting rich off your work, and not paying you a cent because you didn't put a little C with a circle next to your work is a reality of life in American which I was not that keenly aware of when I did the work. But now I am, obviously, because here we are arguing about it." 
A.A. Sales discovered many copies of "Keep on Truckin'" without notice--but none were admissible because they were all unauthorized infringements. It looked like the defense would fail ... until the deposition of Robert Rita, owner of the Print Mint, a company that printed underground comics. Rita had used the "Keep on Truckin'" image on a 3 x 6 inch business card with Crumb's permission. 15,000 to 20,000 cards had been printed (although that number was later recalculated as less than 6,000 copies). Rita stated that Crumb had never required notice on the card. 
I can't recall. Crumb, on the other hand stated that he didn't recall anything about the cards and didn't remember seeing them. Under the 1909 Copyright Act, which was in effect at the time of the case, any authorized publication of a work without notice resulted in a loss of copyright--a fate that had previously befallen a wide variety of works ranging from primitive computer games to the Danish Troll dolls. (The principle of notice omission favors big business over artists since artists are more likely to forget about notice and big businesses are more likely to discover those failures.) 
The public domain trapdoor. Although every other nation had abandoned the defense, the U.S. refused to change its approach, a fact that kept it from becoming a member of important international treaties such as the Berne Convention. In 1975, using the Print Mint business cards as evidence, Judge Wollenberg granted A.A. Sales' motion for summary judgment. "Keep on Truckin'" then fell into the public domain. In other words, Crumb's image that had spawned the first adult merchandising boon was now free for anyone to commercialize. Fortunately, in 1977 the Ninth Circuit determined there was an issue of fact as to whether Crumb had authorized publication of the cards. The summary judgment was reversed and "Keep on Truckin'" was pulled back from the public domain. 
All's well that ends ... The case with A.A. Sales was settled prior to trial and Crumb now retains copyright ownership of the work. The case was a bitter experience for Crumb who later documented his feelings about Judge Wollenberg in one of his comics. And in his comic book, Home Grown Funnies, Crumb also reflected his bitterness (as well as creating the precursor to today's Creative Commons copyright license) when he inserted the following notice: "All material herein may be reprinted for free by any underground publication or other small enterprise. All fat capitalists who reprint without permission will be sued for breech [sic] of copyright! Nyahh."
The end of an era. The Copyright Act of 1976 (enacted in 1978) attempted to correct the problems experienced by Crumb with a more forgiving notice-omission law, but Congress finally threw in the towel with a law effective March 1, 1989 that ended penalties for notice omission. Works published after that date no longer require notice and the failure to include notice will never result in loss of copyright ownership.

Wednesday, May 5, 2010

The seafood diet: We see food and ....

Dear Rich: I'm wondering if I could trademark or patent a seafood sauce  that I am in the process of creating. Basically I will have all the rights to the name, but not sure what the law is for the ingredients. The type of sauce is unique and most people make their own, but I want to bottle it. What's the best way to protect myself. I think some companies would want to steal my idea. What to do???? Thanks for your question and since you're a frequent blog reader, we wanted to remind you that the Dear Rich Staff is confused by repeating punctuation. Does ???? make the question more or less urgent ?????
Right, you had a question. You have four potential tools for protecting recipes: copyrights, trademarks, patents, and trade secrets. 

  • Copyright. You can forget about protecting a single recipe under copyright law (it's hard enough to protect a book of them) as we discussed in this blog entry
  • Patents. As for patent law, you may be able to patent a method for preparing a seafood sauce but (a) you'll probably have a hard time proving novelty), (b) it takes more than a year to get a patent, and (c) the recipe will be published for the world to see.
  • Trademarks. You can reserve your trademark at the USPTO provided that you have a bona fide intent to sell the sauce. Trademark protection, combined with savvy marketing is the typical scenario for protecting sauces and condiments. Alternatively, you may wish to try and find some celebrity (or pseudo-celebrity) who can raise the awareness of your marketing and in that case, the mark may relate to the celebrity endorsement. We're not saying we wouldn't have bought our George Foreman big grill and little grill if it weren't for George. But we might not have heard about them without the name association. 
  • Trade secrets. Many famous recipes are maintained as trade secrets --  Coca Cola being the most well known. You would use nondisclosure agreements with your manufacturers and distributors. Anyone can reverse-engineer and use your secret method but that doesn't seem to have had any effect on Coke sales.
Speaking of seafood. We're featuring our favorite seafood sandwich, the Reuben sandwich made with halibut and prepared by the world's greatest seafood restaurant.

Monday, May 3, 2010

Selling Louis Vuitton: Used or New?

Dear Rich: Louis Vuitton only lets me buy 3 bags at once as a customer. I want to know what happens if I sell bags like this unauthorized. If I put it on my website with my picture can I sell it new? Or do I have to say it is slightly used to not get in trouble? We think the key issue is not whether the handbag is advertised as new or used, but whether the bags you are selling are authentic or counterfeit. Anyone can resell authorized merchandise -- although the rules are not so black-and-white when it comes to imported goods as we described previously. (For those dealing in gray market goods, stay tuned for the Supreme Court's ruling in the Costco/Omega watch case.)
New or used. The rules regarding labeling of "new" or "used" are created by each state. As this article explains, there are no uniform state standards. The consistent underlying rule, and the one which the FTC applies, is whether consumers are being misled to believe something is "new" when it would really be perceived by the public as being "used." For example, we believe it would not be deceptive to state "New" if the package from Louis Vuitton were unopened and you had a method for verifying its authenticity. At the same time, if the packages had been opened  but never actually "used" as a handbag, we believe you can say, "Purchased New from Louis Vuitton. Never Used." Whatever you say, it's possible that LV's ever busy attorneys will be watching and may object if you are implying you are an authorized dealer. But like we said, their primary vigilance is aimed at the sales of illegal LV merch (of which there is plenty).
Of course, the Dear Rich Staff has a difficult time understanding handbag obsessions. Nevertheless, we support consumer spending in these troubled times, even if the dollars are ending up in the hands of a French company whose original owners mixed fascism with fashion. Hey, right wing or left wing, everybody's got a right to luxury goods.

When will my PTO postcard arrive?

Dear Rich: Last week I mailed an application for a Provisional Patent to the USPTO. I sent it via Express Mail on and enclosed a stamped, self-addressed postcard. It's ten days later and I am wondering how long it should take, on average, to receive confirmation of their receipt of the application via that postcard. BTW, should the postcard never arrive, are there other ways I can confirm that the application was in fact received by the USPTO. According to Patent it Yourself author David Pressman, you should get the postcard from the USPTO after about two weeks. You should also receive an official filing receipt from the USPTO after about a month. Of course, you can always verify whether the USPTO received your item by checking the Express Mail records online or checking with your credit card company or bank to see if the payment went through. If you never receive the filing receipt, or there is some other discrepancy, call the OIPE (Office of Initial Patent Exam) at 800-786-9199 or 571-272-4000. If the OIPE doesn't have a record and if you mailed it by Express Mail, the Dear Rich Staff notes that you can avail yourself of the remedies under Rule 1.10 of the Manual of Patent Examining Procedure.
In the future. Pressman, like many patent practitioners, has embraced the electronic filing system (EFS-Web) He recommends that in the future you consider filing electronically, because that way you get an instant filing receipt and serial number. (And if you're a registered efiler you can also instantly view the application details on the USPTO's Private PAIR site.)  
Speaking of patents and mailing ... Isn't this 1969 patent (above) for mailing vinyl singles the cutest thing?