Friday, February 26, 2010

Legal Rights for Clip Art

Dear Rich: Our company offers a website directory service for advertisers. The advertisers can supply a photo but some of them now want to supply artwork. As long as the image came from clip-art, or some other publicly "royalty-free" stock photo site, it can be used without permission, correct? We wish that were true. 
Our own sad story. A few months ago, the Dear Rich Staff modified (perhaps 'transformed' would be a better verb) a clip art image and used it at our blog. A few weeks later, we got a letter from a lawyer representing the clip art owner demanding a bunch of money (at least enough to buy a couple of kayaks) or face a lawsuit. Fortunately, we made enough noise about fair use to keep the lawyers away (although of course, the statute of limitations hasn't run on that one). But the message is clear -- don't assume that clip art is free to use or modify. 
Understanding the Terminology. The terms clip art, public domain art, royalty-free art, and copyright-free art are often used interchangeably (and confusingly). So here's a primer:
Clip art is a general term used to refer to any artwork that is available in a collection, either in a book or on a computer disk. Clip art may be in the public domain or royalty-free. 
Public domain art is not protected by copyright. Many publishers, such as Dover Books, specialize in offering collections of public domain art. You are free to copy and use the individual artwork in a public domain collection without permission. However, you are not free to copy and sell the collection. 
Royalty-free art is protected under copyright law and cannot be used for free. However, once you buy the CD-ROM or pay for access to a website that contains royalty-free artwork, your license to use the images is largely unlimited, so you can usually use the works numerous times for a broad range of uses. Use for merchandising -- putting the image on a t-shirt -- or some commercial endorsements -- using the image in a magazine ad -- may not be allowed -- a major exception to the rule that you can use royalty-free images any way you like. 
Copyright-free art is the most confusing terminology. Some people use it to refer to public domain artwork; others use it to refer to royalty-free artwork. Often, it's used to describe artwork that websites offer for free to the public -- whether the works are public domain works or royalty-free works. We think it's a meaningless term.
Creative Commons artwork.To be on the safe side, clip art users might want to consider filtering their image search by using the Creative Commons image search filter (that's how we found "Sad Cat" by Peter M., above). And check the license to see if it fits your purposes.
Long story short. The other day we were at Cafe Trieste on their very long line and the guy in front of us was telling an acquaintance a very long story and at least three times, he said, 'Long story short,' and had we had less frontal lobe control, we might have said, "Dude, how can it be 'long story short,' you've already gone on for, like, ten minutes?" Ennyway, if an advertiser is providing you with artwork, you might want to get a warranty or indemnity in your agreement and if necessary, have them furnish you with evidence (terms of use, license, etc.) that they have permission to use the art. 

Thursday, February 25, 2010

Show me the Money: Finding an Agent for an Invention

Dear RIch: I am an independent inventor and I am seeking an Intellectual property agent to represent me and my invention to the market. I currently have about 9 months left before I know whether the United States Patent office will grant me my patent but I feel I should not wait till the last minute to research this. My question is this, where do I find an intellectual property agent with the experience and knowledge in the field I need? My patent is for a new type of intake and exhaust valve system for the internal combustion engine.  Obtaining an agent can be as difficult as locating a licensee. Most agents are not looking for clients. They rely on word of mouth from friends or other inventors. The agents we spoke with when researching our licensing book requested that their names not be included. Why? Because they already have sufficient client listings and attract business strictly from referrals. How do you find an agent? There are five common methods: referrals from businesses, referrals from inventors, trade shows, trade magazine advertisements, and the Internet. Certain licensing publications also list licensing agents and service organizations that appraise new inventions. For example, The Licensing Journal often includes lists of technology agents. (That's a pricey journal however, and you may want to check your local law library for copies.)
Don't confuse agents with invention marketing scams. Invention marketing scams can be distinguished from legitimate agents because generally agents: are hard to find because they rarely advertise; do not give a sales pitch to inventors; will tell an inventor if the invention has flaws or risk factors; and  provide a list of satisfied clients. In other words, a real agent is realistic about your invention and is usually willing to take a risk for a percentage of the profits. Some qualified agents may offer to evaluate your product. The evaluations performed by legitimate reps usually cost several hundred dollars and result in a critique that is particular to your invention and the appropriate industry. Although scam marketers may seek a percentage of profits, they actually make their money by exorbitant up-front fees that are unrelated to any service that they perform. As a general rule, a person or company that demands more than $1,000 in up-front fees and will not furnish you with a list of clients is probably a scam marketing venture. If in doubt about the legitimacy of a company, check or the National inventor Fraud Center which includes a list of suspected companies, as well as helpful links--for example, to the Federal Trade Commission.

Wednesday, February 24, 2010

Protecting Equestrian Graphics

Dear Rich: I am equestrian artist that will be adding a t-shirt line to my portfolio. My graphic designer has created my horseshoe graphic, which I own and I have created one line phrases for each shirt. I will also be using these graphics on other items such as bags, mugs etc. I have a few questions as this is all new territory for me. (1) I am currently working with a woman who can embroider, applique and silk screen them for me. How can I prevent her from selling my line herself on her own web site? (2) I will be in contact with a company that will make the shirts and then also bring them to trade shows in our industry. Having not talked to them yet, my guess is they pay you an amount for every shirt sold since they are doing most of the marketing. (3) I don't understand the licensing process much and what are the benefits and how do I even do it? How can I prevent others from duplicating my work...most importantly the phrases I come up with as these are unique. Since the Dear Rich Staff is trying to increase readership and since we have a relative who is a devoted equestrian, it wouldn't be a good idea  to discuss how much we don't like all that horse stuff (especially the weird little English hats with the brim) and how we can't stand "horse movies." (And being lawyers we don't understand why there are no mandatory helmet laws except in Florida and New York and even then, that's only for kids under 16 -- what's up with that? And what about a helmet for the horse while we're at it.). 
Anyway, aside from our problems with over-sized four-legged animals, you had a question (or questions).  Okay, here goes: (1) Generally, if you own the copyright (or trademark) on the merchandise, you control who can reproduce it. So, the woman who works for you wouldn't have any rights to reproduce the horse art. If you're still concerned, you can prevent the worker from competing against you by having her sign a written agreement that states she can't sell your designs.  If your designs are not protectable under either copyright or trademark law (see below), that agreement may be hard to enforce. (2) We're not sure that #2, above, is a question so we can't help you with the company or explain how they do business. You should ask them about their terms and then compare them with competitors. We assume you're aware of online merchandising sources like Zazzle and Cafe Press. (3) A license is a form of permission -- in which you allow somebody to exploit property you own in return for a payment, usually in the form of a royalty. It can be a great way to do business because the company doing the licensing (the "licensee") will often police and protect your work as well. You can read more about it in this handy Nolo form kit on the subject. 
Short phrase thing. You will have a hard time stopping others from using your short phrases (by themselves) since they're not protected under copyright law. We've talked about this a few times in the past and we're paranoid about boring our readers with more on the subject.  You can always protect those phrases when used in association with a graphic -- that is you can stop others from copying the combination. You may be able to register each phrase as a trademark for use with T-shirts and similar merchandise. However, that's a little bit of a financial investment as each phrase will require a separate registration for each class of goods. Tally ho!

Tuesday, February 23, 2010

Videotaping the Parish Priest

Dear Rich: I am a freelance filmmaker in Chicago and I do volunteer freelance film making for churches. Once a year we have a parish mission at our church and our guest speaker is usually a priest from a different church. I'm the person in charge of audio/video taping the mission. The church has nothing to do with it at all except they are the beneficiaries of my work. The visiting priest that comes to our parish has already verbally agreed to allow me to tape and make CD/DVDs of the mission for our parish library. How do I obtain rights on the film footage to do what I want without scaring away other priests that may be involved? As chief videographer you probably acquire the copyright in the video. We say "probably" because we don't know if there is some hiring agreement, or whether there are video taping rules within the church (for example, if you are granted special permission to tape, there may be strings attached with that permission.) 
Assuming you do have copyright ... You should obtain consents from the subjects of your video. Unless you're dealing with producers, investors or distributors, you can probably get by with a videotaped consent. Tell your subject that you need their consent for the following uses (list all your anticipated uses such as distributing DVDs, posting on the web), and explain that you may not use the interview in its entirety-- that is, you may use edited segments. Make sure that there is a real consent  -- even something as simple as "Yes, that's okay with me," will work. Then save that video. As we mentioned, if you're dealing with money people or distributors, a written consent -- with its additional provisions and releases, for example, permission to use the priest's name and image in advertising -- may be preferred. 
Books that can help. You can find the forms you need in Getting Permission: How to License & Clear Copyrighted Materials Online & Off (insert FTC disclaimer) and in Clearance and Copyright: Everything You Need to Know for Film and Television (a great primer on permissions for film makers).
Can't afford a lawyer? You may not need much money to get legal advice. Chicago is one of several cities with "lawyers for the arts" services. This may include pro bono advice or other low cost services. The Dear Rich Staff used to provide free legal advice at the CLA office in San Francisco but then we created this blog, instead! (Speaking of religion, the staff is currently digging this book)

Monday, February 22, 2010

Protecting Cracker Jack and Other Roller Derby Names

Dear Rich: I'm trying to find my roller derby name. Being a sci-fi geek, I'm leaning towards the name of a character in a sci-fi novel that would fit me perfectly. Seeing that Frito-Lay has been suing a skater for use of the name "Crackerjack," I'm a bit concerned about infringement on any copyrights/trademarks. Would using the name of a character from a novel amount to infringement? I can't seem to answer this myself! No, using a name from a novel as a your roller derby name shouldn't cause a problem unless perhaps that name is used as the title of a movie or is so popular that people sell merchandise with the name -- for example, Skywalker or Mr. Spock. As you can guess, the more obscure the choice, the less hassle you will have. (Speaking of sci-fi, didn't you love that new Sam Rockwell DVD?)
That Cracker Jack Thing. Not to put too fine a point on it, Frito Lay didn't actually file a lawsuit over the use of the name; they filed an opposition to Ms. Bell's application for federal registration for CRACKERJACK. (This kind of thing is usually handled by paperwork filed with the Trademark Trial and Appeal Board, whose decisions are thoroughly explained here.) That filing is the kind of action that trademark owners feel they have to take if they want to preserve their rights in the future. (Not that it matters, the company didn't even devise the name, it's believed to have come from a customer who thought the foodstuff was "crackerjack.") 
The Dear Rich Staff would hazard a guess that if it had it not been for her quest for registration, our Frito-munching buddies in Texas would have left Ms. Bell alone. Still, it makes us kind of glad we chucked our Cracker Jack toy collection (even though by the 1980s there were hardly any actual toys, it was all these dopey liability-proof paper things. As always, blame it on the lawyers.)

Friday, February 19, 2010

Is Excel Add-On An Infringement?

Dear Rich: I developed an app/program that can be opened within MS Excel to help business's organize and compile data. Even though it is an add-on to Excel, do I have any copyright or patent issues to worry about if I plan to sell this app? It's unlikely you would get a letter from Microsoft (or any other software developer) unless you either lifted proprietary code without permission, or you stepped on someone's software patent --  always a tough call in the crazy and perhaps soon-to-be-extinct world of software patents. You could run into problems if you are using a developer's kit or other licensed software and your add-on violates your license (also unlikely). Finally, you could run into a few hurdles if you advertised your add-on as being endorsed by or associated with Microsoft (or other software providers). Based on the high volume of Excel add-ons (or add-ins as they are more commonly known) the Dear Rich Staff feels that none of these issues will arise for you and you're probably going to have a problem-free release.

Thursday, February 18, 2010

Mailing Copyrighted Stuff to Yourself

Dear Rich: I'm planning to set up a blog where I'll post multiple sketches, poems and short stories, but I don't want to go broke paying for copyright registrations. What is your view on just sending myself an email with each work in it as timestamped evidence that I created it, and then registering the works in big groups once or twice a year? The Dear Rich Staff is always curious about people who send things to themselves as a form of legal maneuvering. On the one hand, we don't think it's a worthwhile form of protection. On the other hand, we can understand the desire to get mail. In fact we can really understand the desire ever since the USPS completely screwed up our three change of address forms (and we're including the one we did online and paid a dollar for). When the USPS called us to explain the problems -- which they apparently can't fix -- they gave us such a weird explanation that we're wondering if maybe they outsourced customer service to District 9. As a result, we instituted our own mail-forwarding system in which we periodically return to our previous address and plead for our copies of Patternworks and California Prison Focus.
Right, you had a question ... Date-stamped emails and letters won't offer much in the way of copyright protection because at best -- and this would still require expert validation -- they prove only that you sent something to yourself on or around a certain date.(They don't prove that you actually created the work). Copyright disputes are rarely about who created something first (you may be confusing them with patent disputes although the poor-man's patent also won't protect you). Copyright disputes are about whether someone had access to your work and copied it. Since you're posting this material in a blog, you should be able to demonstrate that the work is yours and there should be ample ways to prove when you first published it using cached or archived Internet pages. Finally, in case you missed our posts on the subject, you get copyright automatically once you create the work. You really only need to register copyright as a proactive step if you believe your work will be infringed. We discussed strategies for copyright protection of blogs in an earlier entry.

Wednesday, February 17, 2010

Searching for Misplaced Movie Rights

Dear Rich: I want to adapt an out of print children's novel from 1971 into a screenplay. However, when I tracked down the last known rights holder, a notable book publisher, I was informed that they simply lost/misplaced the film rights. They assured me that they would let me know if they found them, and that was three years ago. I plan on restarting the process again, but what is my next logical step if I reach the same dead end? Is it game over? The publisher who "misplaced" the movie rights ...did they look behind the refrigerator? Sometimes stuff falls behind the file cabinets, too. And once the Dear Rich Staff found an unopened container of Desenex way in the back of a desk drawer.
Losing the movie rights. Of course movie rights are not exactly the same as anti-fungal powder so we're a little confused by the publisher's response. We assume they meant that they lost some document since the rights are intangible. But what document could they have lost? The original publishing agreement may have spelled out who owns the movie rights. But if the book is out of print, chances are very good that the publisher no longer has any rights and that all rights reverted to the author. Publishing contracts form the 1970s often had "use it or lose it" provisions in which rights reverted if they were unexploited. Similarly, if the publisher assigned the movie rights to another entity -- usually as an option agreement -- there's a good chance that's expired and reverted as well. 
Who's got the rights? Our guess -- and it's just a guess-- is that after forty years, all of the rights (including movie rights) reverted to the author. If the author is deceased, it went to the author's estate. You should contact relatives of the author to find out if they have a copy of the original publishing agreement. (That would spell out who initially controlled the movie rights.) If the author had an agent, perhaps that person can locate the contract. There are also pricey services that will provide a copyright search of titles. And of course, there are personal search services that can locate people. (The Dear Rich Staff used to use them to find absentee landlords whose tenants had frontal lobe problems.)

Tuesday, February 16, 2010

Overzealous Zazzler Zeeks TM advice

Dear Rich: I'm a Zazzle entrepreneur and like many others at Zazzle am often subject to overzealous abuse of erroneous trademark and copyright violation reports. From my understanding a registered trademark is a pretty specific thing (I could be wrong). So for example if you get a trademark for the words "First Kiss", the trademark would specify the font in which the words would be written, the colors if any other than black as well as whatever else you specify to make your trademark original and how it will be used. "First Kiss" is now your registered trademark...woohoo! Now for the questions: (1) You come across someone who uses the words "First Kiss" in a graffiti styled design with all sort of frills and embellishments and plasters it on a t-shirt, mug etc. Now although the words used are the same they are written in completely different style (font), it looks nothing like the trademarked words and would never be confused as having anything to do with the company/individual that registered the that a trademark violation? (2) "First Kiss" are pretty common words and are used frequently. You come across someone who has used those words in a sentence and plastered in on a t-shirt, mug, etc. "Remembering our very first kiss" that a trademark violation? You're starting with some incorrect information; we need to back up a few steps.
Square One Dept. A trademark registration for a name or text is usually not limited to a specific font; if that were the case, Nike, Gucci and Coca-Cola would have problems stopping ripoffs. Even if someone registers the word-mark in connection with a design, courts won't limit protection to the design. They will apply common sense to determine whether someone is trading off the mark unfairly and consumers are likely to be confused. So changing colors and fonts doesn't get you off the hook for infringement.
As for your questions ... Assuming someone registered FIRST KISS for t-shirts and cups, they would have priority over subsequent users on similar merchandise and could stop them regardless of the font. You claim that customers "would never be confused." If you can prove that in court, you might be able to get off the hook for infringement, but the The Dear Rich Staff believes that the chances of proving an identical word mark on identical goods does not infringe is little bit like Dr. Richard Kimble finding the one-armed killer.
Trademark fair use. Your second question is a little more complex and relies on interpreting the rules for trademark fair use which we discussed in a previous blog entry. As a general rule, descriptive use of terms is permissible. Again, common sense prevails here since a competitor's repetitive use of a descriptive term may be an  illegal attempt to siphon customers.

Monday, February 15, 2010

Can Monopoly Come After Me?

Dear Rich: A few years ago, I came up with my own version of Monopoly to use in high schools as a fun way to teach a topic. The game became so fun and popular that a local science center wanted to play it and open it up as a free competition between schools. I didn't have a problem with that, but was starting to get a little worried about legal issues. I tried several times to contact Hasbro to ask permission, but they never responded. I told the schools that unless they intended on backing me up if any legal issues arrose, that I would not allow the game to be played. No one wanted to back me up, so I decided that I would change the game sufficiently as to make it very different from a Monopoly-like game. I did that and the game looks great and still fun (I'm pretty sure that I changed it enough.). Now, I'm uncertain. Did I change it enough? Really, the only thing that remains similar is that you can purchase property (but they're not houses or hotels) and pay rent? Because I am not selling it, am I safe? If I do decide to turn it into a classroom-type game, how difficult would that be and is the fact that the game was originally based on MONOPOLY going to cause problems? Should I go see a lawyer? Is it worth going through all of the trouble of patenting my idea and/or selling it? How many board game ideas out there really make it (I'm assuming that it is very little)? Can I protect my idea and distribute the game for free (just get organizations to give me cash to produce and distribute for free in schools)?  I'm hoping that you can help. The Dear Rich Staff would like to help but we're pretty exhausted from reading all your questions. Wait a second while we hook up a caffeinated IV drip. 
1. We don't know if you changed the game enough but if people play it and say things like, 'this seems a lot like Monopoly,' the answer is probably, 'No.' 
2. If the only thing the games have in common is the idea of purchasing property, then you're not likely to be infringing.
3. If the game infringes, you will be liable for selling, distributing or licensing. You don't have to make a profit to be an infringer.
4.  If it's not similar to Monopoly it won't infringe even if you were originally inspired by Monopoly.
5. We don't know if you should go see a lawyer. We happen to like lawyers and think they're an interesting group of people. But that's just us. Also, when we speak to lawyers, the meter is usually not running. We would suggest holding off on the legal visits and learning as much as you can by yourself.
6. You may be able to patent your game--possibly with either a utility or design patent--but we wouldn't recommend it as a strategy for board games (which kind of fits in with the whole twisted legal history of Monopoly). In any case, copyright and trademark law should do just fine for you.
7. The Dear Rich Staff used to do a lot of toy licensing and our experience from that was that board game licenses were exceptionally rare. You will have a hard time getting in to see the two or three companies that still make board games, and without major distribution, it will likely become a money-losing venture. Even if you do license it, the chances of breaking through the existing pack of popular and classic board games is slim. (Sorry to be so negative but we're glass-half-empty folks).
8. If your game isn't substantially similar to an existing game and doesn't use a similar trademark, you're legally entitled to do what you want. 

Friday, February 12, 2010

Pillow Talk

Dear Rich: I want to market a craft that I make. Online I have found numerous other people making the same pillows, in various shapes and forms. I have found one that has a copyright for a shape that goes around the neck. Others may possibly exist but I cannot find the images to determine if the shape and size of mine are the same or different. Mine are a simple square and rectangle, of which there are many versions on-line. What distinguishes mine is my marketing idea -- I want to give it sex appeal, quite different from others. For that reason I am applying for a trademark for my logo and name. But regarding the copyright, would I infringe on anyone's copyright if mine is square or rectangle? No, a useful article cannot receive copyright protection. However, the expressive elements that can be "separated" from the pillow can get protection such as the fabric design or images, or in some cases, the text. Traditional (square, round, etc.) and functional shapes (for example, around-the-neck) shapes of a pillow are not protected by copyright.
Getting a trademark. Seeking trademark protection for your logo and name is probably a good idea if you want to stop someone from using similar content. Of course, the Dear Rich Staff reminds you that to obtain that protection you must have used the marks prior to competitors

Pillow Talk

Dear Rich: I want to market a craft that I make. Online I have found numerous other people making the same pillows, in various shapes and forms. I have found one that has a copyright for a shape that goes around the neck. Others may possibly exist but I cannot find the images to determine if the shape and size of mine are the same or different.Mine are a simple square and rectangle, of which there are many versions on-line. What distinguishes mine is my marketing idea -- I want to give it sex appeal, quite different from others. For that reason I am applying for a trademark for my logo and name. But regarding the copyright, would I infringe on anyone's copyright if mine is square or rectangle? No, a useful article cannot receive copyright protection. However, the expressive elements that can be "separated" from the pillow can get protection such as the fabric design or images, or in some cases, the text. Traditional (square, round, etc.) and functional shapes (for example, around-the-neck) shapes of a pillow are not protected by copyright.
Getting a trademark. Seeking trademark protection for your logo and name is probably a good idea if you want to stop someone from using similar content. Of course, the Dear Rich Staff reminds you that to obtain that protection you must have used the marks prior to competitors.

Thursday, February 11, 2010

What If They Won't Sign an NDA?

Dear Rich: I started a product design company and have a design that a company may be interested in licensing. To date I have not told them specifics about the design, only that it fits into their product line. We're meeting soon and I want to be sure to protect the idea for future patentability (by not making it public as defined by patent law) as well as prevent the company from disclosing the idea to others. I've read that having representatives from the company write a quick entry in my invention notebook to the effect that we're meeting to discuss the idea is legally sufficient to protect patentability and disclosure. I've also been told not to bother with an NDA as most companies will not sign them. You are correct to be concerned about public disclosures as they will set the clock ticking on the one-year bar for filing a patent (and will likely eliminate the chances for any foreign patent rights). 
Disclosing in Confidence. To prevent triggering the one-year bar (and to preserve foreign rights),  the company must agree your disclosure was made in confidence (and treat it accordingly). It's true that many companies will not sign NDAs, particularly with individuals that they do not know. However, that's usually not the case when the company knows the other party, or has solicited the idea. So, we  recommend starting with an NDA (samples are provided here).
Signing your book. Signing an entry in your invention notebook may preserve confidentiality provided it includes a statement to the effect that the disclosure is being made in confidence and the company will take necessary steps to preserve the confidentiality of the disclosure. Still, it's not as ideal as an NDA which may contain provisions for dispute resolution, attorney fees, jurisdiction, or injunctive relief. 
Authority to bind. Finally, make sure the person signing the NDA or book has the authority to bind the company (include their title; be wary of "agents") and if in doubt, verify the authority. 
If they won't sign anything. Be wary of companies that won't sign anything. Sometimes they have a legitimate reason -- they don't want to be limited in case they're developing something similar independently -- and sometimes they're just using their bargaining power to see what you have without any restrictions. Keep in mind that any "publication" that shows how to make and use the invention, or any offer for sale -- licenses are not typically considered an offer for sale -- will trigger the one-year bar. Disclose sparingly in the absence of a confidentiality agreement.

Wednesday, February 10, 2010

Linking and Photos: Permission Needed?

Dear Rich: On my not-for-profit pages and hopeful e-book, if I provide a link to another website's page and show a photo from their page, do I need also to gain permission? The Dear Rich Staff reports that (1) no, permission is not needed for the link to the page and (2) yes, permission is needed for reproducing the photo (unless perhaps you are reproducing thumbnails, in which case it may be excused). We assume you don't need the legal backstory for all this but if you do, you can read about it here.

Tuesday, February 9, 2010

My Wife as a Caricature

Dear Rich: Recently my wife had a caricature done of her at a local university by an company who specialises in creating caricatures. She was so impressed by the picture of her she wants to use the likeness on future promotional materials (i.e. flyers, business cards etc) for her future business venture. Would we have to get permission to be able to use the likeness from said company and if so how pricey can buying the rights to this property get? The Dear Rich Staff loves caricature art -- representations of people in an exaggerated fashion, usually for comic relief. In fact, we just found this one while looking through the attic.
Permission? The caricature copyright is initially owned by the artist (or by the company that employed the artist) and you would need to ask permission. It's possible that the contract with the company granted rights to the university (or the subjects) so before asking for rights, talk to whoever hired the company. Practically you may be able to get away without asking for permission for various reasons -- the artist never learns of your use, the company doesn't want to hassle clients, the artist can't afford to sue. In any case, there is always a risk involved with using the work without permission.
How much would it cost? We can't say but we imagine it would range from $0 (they may want nothing, or just want a small credit) to one or two hundred dollars.
Did we pay for the caricature we're using? No, this caricature of Paratrooper Joe Stim was created 65 years ago and we're going to presume the copyright was never registered or renewed.

Monday, February 8, 2010

Transferring Trademark Ownership to New Corporation

Dear Rich: I have two trademarks registered to a corporation and will be transferring the rights to use these trademarks to a new corporation. Do I have to notify the Patent and Trademark Office and how would I do that? Also I notice that someone asked about renewing a patent. Is that also necessary for trademarks? First of all, the Dear Rich Staff wants to acknowledge that the person who asked this question also happens to be the same person who comes by and fixes our mother's computer so we say thanks for all that great service over the years -- and BTW, we messed with the ethernet cords and wifi last time we were in town. Ooops!
As for your question, you need to do two things, (1) assign the marks to your corporation (see below); and (2) file that assignment along with a Trademark Assignment Recordation Coversheet, at the USPTO website.
What about renewal? You must file a renewal and declaration of continued use between the ninth and tenth anniversary of registration and you should file a declaration of continied use and (optional but recommended) a statement of incontestability between the fifth and sixth years of registration. The failure to file the declaration of continued use will result in the loss of the registration.
Trademark Assignment

Sunday, February 7, 2010

Value of Nuremberg Trial Transcript

Dear Rich: I saw your question about the Nuremberg trial transcripts. My father was Justice Robert Jackson's driver during the Nuremberg trials. He gave my father a signed copy of the transcript along with several pictures. Is there any value to this original document? You'll need the advice of an appraisor who specializes in autographs, manuscripts and rare books. We're afraid that question is just out of our bailiwick. But if any readers know, drop us a line.

Friday, February 5, 2010

Failed to Pay Maintenance Fees: Is the Patent Lost?

Dear Rich: Help! A friend of a friend failed to pay his patent maintenance fees timely and his patents have expired. Is there any way to pay a late fee and "revive" the patents? Yes there is. If it's been less than two years since the patent expired, you can revive it if you pay the fee and a surcharge of between $700 and $1640 depending on whether the reason for the failure was 'unavoidable' or 'unintentional.'  You'll need to file a petition and you can learn more about the requirements, here. If it's been more than two years, you can revive the patent only if you can show the failure was unavoidable. This article explains it better than the Dear Rich Staff (and we recommend the blog to all patent fans).

Thursday, February 4, 2010

Fiction Writer Asks ... May I?

Dear Rich: In a work of fiction may I write about an adventure in a well known museum and describe specific exhibits that get vandalized? May I write critically about a well known writer who has been dead for over 100 years? May I write about stuffing a family into a Chevy truck? May I write about a fictitious company that clearly resembles a large fortune 500 company? Yes, yes, yes, and yes, although the Dear Rich Staff is a little concerned about the idea of "stuffing a family into a Chevy truck." 

Wednesday, February 3, 2010

Band Wants to Share Profits But Maybe Not Losses

Dear Rich: I formed a band with 3 other guys, and while they contribute in the form of some songwriting, pretty much everything else falls on me, from the bulk of songwriting, to paying for merchandise and CD pressings and most other expenses, down to owning pretty much the full backline of the band. This arrangement is fine with me, as I'm in a better financial situation to be able to do this than they are. The question I have is that I am trying to formulate a band agreement, because I wish to compensate them for their songwriting contributions as well as playing live shows, but at the same time I want to make sure I am able to recoup the money I have put into the project. I feel like a partnership is the type of business arrangement I would like to make, but the issue I see is in the equal sharing of profits and losses, because while sharing profits is fine, the rest of the band members are unable to share the losses. No problem, just structure the partnership agreement as you describe in your letter. Having a partnership doesn't mean that everything is shared equally--that's simply the default presumption unless the partners indicate otherwise. There are many ways you can structure it. For example, you probably want to make sure that expenses are deducted and repaid from all revenue before partners are paid income. The long-form partnership agreement in our Music Law book (insert FTC disclaimer here) provides for a deduction like this. You can get as specific as you'd like -- for example, half of show income goes to paying off band debts and the other half goes to members. Also, the Dear Rich Staff advises that before you sign the partnership agreement, you should document what you are contributing -- the equipment, previous debts, etc. If properly prepared, the partnership agreement should guarantee your ability to walk away from the band with the items you've contributed (or their equivalent value).

Tuesday, February 2, 2010

But Her Mark is Hundreds of Miles Away

Dear Rich: I was just contacted via email by a woman in another state. She asked me to cease and desist using my trademark if I wanted to "avoid further legal action." My website's domain name is not the same as her trademark. My company provides very similar services but I only operate in Central Florida, hundreds of miles from her business and I have no plans to go beyond my small world. Any advice. There's an old Russian saying, 'Small potatoes but my potatoes.' Actually we're not sure if it's Russian. We think we first heard it in this movie. In any case, we can relate to your problem. Unfortunately, the short answer is that you're not in a good position and would probably be required to change your name.
The registered user. The registered mark has been in use since June 2002 and has been registered since November, 2009 which would give the registered user a presumption of nationwide priority. If you've been using the name since before 2002, you may have limited rights to continue using it in your geographic area but that argument is muddied quite a bit by the fact that both of you are reaching a nationwide audience with your websites. The marks are identical and as you acknowledge, the services are the same. So, if we were a betting blog, we'd bet pretty heavily that the registered user could stop your use.
What should you do? The Dear Rich Staff thinks that the path of least resistance is to change your service mark and to notify the registered user that you are doing so. You can probably continue using the name for your LLC if you're just using it to sign contracts, write checks or for tax filings.

Monday, February 1, 2010

Does My Girlfriend Own My Trademark?

Dear Rich: I am starting a fashion design company with my girlfriend. She is the designer and I am handling business/legal issues. She designed the company logo and created the business name. We are going to apply for a trademark for the logo and the name and the question has come up as to whether (i) she should own the trademark alone or (ii) we should be joint owners (we are not seeking to register the trademark in the name of the business to avoid the trademark becoming part of the company's bankruptcy estate upon a bankruptcy). My concern is that, if she owns the mark alone, she can walk away from the table on any given day and take the real value of the brand that we hope to create together. On the other hand, she did design the logo and it seems fair that she should be able to keep the rights to her artwork. Is it common for an entrepreneur to insist on owning a trademark alone or would it be typical to share the trademark among equal business partners even though only one person designed it? Of course, we hope that everything works out perfectly between us and the ownership of the trademark never becomes relevant but, things don't always play out so peachy. Any insight that you could give would be appreciated. We're not sure whether you wanted the insight for keeping things peachy with your girlfriend or about your trademark ownership so we'll address both issues (since they are equally important). 
Keeping things peachy with your girlfriend. There are three elements required for a successful long-term relationship with your girlfriend: (1) personal hygiene -- we can't stress how important this is, whether it's individual cleanliness, bathroom orderliness, or sanitary kitchen habits, (2) social deportment -- here we're talking about that sense of respect that comes from good table manners, interpersonal restraint and general cordiality, even in the face of overwhelming despair and doom, and (3) lots of laughs - without lots of yuks (hopefully not derived from the misfortune of others), most relationships are doomed. Okay, so that should establish a long term union for your business. Now about your trademark.
Creating a trademark does not create trademark rights. It's true that you will need permission from the artist to use copyrightable artwork in a trademark but you won't need permission to use the name (as that is not copyrightable). Even so, creating the artwork doesn't create trademark rights. Those rights are earned by your use of the mark in commerce. If you're operating as a business--we assume you're a partnership--it would make the most sense to create a partnership agreement and for the partnership to own the marks. Your partnership agreement should address what happens to these assets if the partnership breaks up or if one partner wants to buy out the other. Nolo, our employer (insert FTC disclaimer here) has books that can help you do that.
Your bankruptcy plan. We're not clear about your plan to retain ownership of the trademark to avoid bankruptcy. Your fashion business (or whoever owned the marks) would have to license the marks to the business. So, wouldn't the license become part of the bankruptcy plan? The Dear Rich Staff are not experts on that stuff but we wouldn't count on your approach. (And anyway if the company went into the bankruptcy, doesn't that mean that the brand has failed? So what would be the value of the mark?) Anyway, let's think positive even though we know that's usually not a good idea.