Monday, November 29, 2010
If you're not using the mark in commerce. If this is just an idea -- that is, you've come up with a good choice for a name and you don't plan on manufacturing and selling the drink -- then you don't really have any trademark rights to sell. Trademark rights are derived from use of the mark in commerce (or to some extent a bona fide intent to use the mark in commerce). If all you have is an idea, then you have no proprietary rights and once you post the name for sale, anyone can use it. (And the first company to use it -- assuming the trademark is distinctive-- will acquire trademark rights.)
If you are using the mark in commerce. If you are using the mark in commerce, and hopefully you've registered the trademark, then you can sell or auction it anywhere that permits such a sale. Ebay policy doesn't expressly prohibit the sale of trademarks, so we assume eBay permits it. And there's at least one eBay store that seems to specialize in the sale of trademarks and domains. And of course, there are various intellectual property auction sites where you can sell trademark rights. The Dear Rich Staff has had no experience with these sites so we can't vouch for any of them.
The domain names would be a different story. The domain names may have value whether you are selling the product or not. And because you control the ownership via a domain name service, selling domains is easy. As you're probably aware, there are many sites such as afternic and great domains, where you can sell your domain.
What's your trademark worth? Short answer: you'll find out when you try and sell it. Long answer: you can hire a professional IP valuation team to give you an opinion -- a procedure that may cost you more than your mark is worth. Here are some of the gruesome details.
Sunday, November 28, 2010
Ennnyway ... Even though the law is likely to be on your side, that doesn't mean you won't run into problems. Distributors may require trademark clearance regardless of our legal explanation, and the same may be true for networks, festivals, or if the film is purchased. (Hopefully, if the film is sold, you'll be able to afford a clearance expert to help you.) At the same time, a company may feel that its trademark is being exploited for an improper association and fire off a cease and desist letter. Even though chances are good that you would eventually prevail in court, you may not be capable of overcoming the bullying tactics (and be forced into fuzzing your signage). By the way, you can further lower your risks of getting a C&D letter by avoiding any implication that the other company endorses or is associated with your film -- that is, by not using any other company's trademarks in your film's advertising, posters, and possibly even the trailers.
Friday, November 26, 2010
Right, you had a question(s). Yes, you're right. Things are either public domain or they're protected under copyright (and that includes creative commons stuff, too). Because Crissy debuted in 1969 and hit her stride in the 70's, the patterns are still protected under copyright and renewal wasn't necessary. The website owner is acting as if these patterns are "orphan works." That's because the Ideal Toy Company, who probably owned the copyrights originally, has disappeared. It's been swallowed up by Mattel and by CBS Toys (which also went under). And because the doll's been dormant, the site owner is probably assuming there will be no hassles. In other words she views it as an untended copyright, sort of like the tree that falls in the forest and no one hears (or records). That may be the case, although USPTO records show that Mattel still maintains a live trademark for Crissy for dolls and doll clothing. So, we're going to presume that Mattel -- who's not known for being a shrinking violet when it comes to litigation -- will roll out the big guns if someone comes out with a rival Crissy doll.
The library thing. You're right about the library analogy. A library has the right to circulate copies of works. It doesn't have the right to make copies of the works (with the exception of some archiving exceptions). The patron's use of a photocopy machine may be a fair use or it may be an unexcused infringement. That's why libraries post those notices on photocopy machines, to deflect liability for the illegal acts that patrons may use books for. And the laws regarding a library's rights differ for printed books, digitial books, movies, music, etc.
The watermark. We haven't seen the watermark, but if Mattel is actively pursuing infringers of Crissy, they may have a good argument under trademark law that the watermark confuses consumers as to it's source. On that basis they could stop the distribution. (But maybe the giant won't wake up for a website that's distributing 40-year old doll patterns.) Oh, and in case you're interested, the patent (pictured above) for the hair-growing device is in the public domain.
Posted by The Dear Rich Staff at 2:24 PM
Tuesday, November 23, 2010
Right, you had a question. No matter what you agreed upon in your deal memo, splitting copyright ownershiprequires that you conform to copyright law's principles of ownership. Under those rules, ownership is always derived (at least initially) from authorship. A 50-50 copyright split would occur if: (1) you and the client are joint authors of the film (unlikely, unless the client participated in the creation/making of the film with you); (2) you are the sole author, and under the agreement you assigned 50% to the client; or (3) you are making the film as awork made for hire for the client, and the client (as the owner), assigned you 50% of the copyright. If it's not a work made for hire and the co-ownership is not based on one of the other scenarios, there could be a problem for the client trying to claim copyright. That doesn't mean that the client gets nothing -- a court would likely imply a 50-50% revenue split -- but it does mean that the client may have trouble gaining control over work product like the Final Cut files or mini DV tapes. So our first suggestion is that you have the agreement reviewed by a lawyer to be sure that the 50-50 copyright split is effective. (Here's a case where the client thought it had created a work made for hire but couldn't control later sales of stock footage.)
Let's assume you have a 50-50% copyright split. Okay, if we assume that you split the copyright ownership 50-50 somehow, then you need to review the deal memo to see what that copyright refers to. If, as you claim, it refers to the finished film, the client probably couldn't claim dibs on work product; they could only go after the edited result. But if you assigned half the copyright to everything created during the filmmaking process (or if it's a work made for hire arrangement), then the client could probably claim rights to the work product that is on the mini DV tapes. (That's probably true for the Final Cut conversions and files, too.) So our second suggestion is a lot like our first one -- you'll probably need an attorney to review the agreement.
Separating the physical from the copyright. A final thought ... It's possible that if the client has been paying for everything, then the client owns the physical goods -- the mini DVs, the hard drives, etc. So even if the client can't do anything with the copyrighted materials, the client can retain ownership of the raw materials on which they're stored. That could lead to a Mexican standoff in which the client possesses the physical storage devices and you control the right to copy and edit the enclosed files.
Bottom line. We feel like we've provided a long-winded, but unhelpful answer. That's frustrating for us and for you, as well, but it's often the case when copyright ownership is disputed and the details are buried in an agreement. And what was your third question?
Posted by The Dear Rich Staff at 2:25 PM
Friday, November 19, 2010
Buying the trademarks. Usually when one company buys a business, the buyer also acquires the trademarksand associated will that goes with the trademarks. We're going to assume that didn't happen in your case and that the seller later sold (or "assigned") the marks and good will connected with your business (and other assets) to the third party. We wish that weren't so and that the trademarks traveled with your purchase. So far, the other company has not sought a federal trademark registration for the marks. Although we can't read too much into their inaction, we do know that they can only register the marks if they have a bona fide intent to sell products under that name.
The trouble is ... As you can imagine there are problems when someone else owns a mark that you intend to use. For one thing, the trademark owner -- particularly if they apply for and acquire federal trademark registration -- can hassle domain holders under ICANN rules and under the anti-cybersquatting laws. In addition, they have a reasonable basis to hassle your company if they choose to oppose your federal registration.
Are you using the mark now? If you are currently selling products under the trademark, you should consult with a trademark attorney. Come to think of it, you should consult with a trademark attorney even if you're not selling any products under that name. You need to clear all rights and determine what the other company owns. You may wonder, what good is the Dear Rich staff, if we're referring you to an attorney? It's because some situations are too complex to resolve in a 500+ word public blog entry (and we're afraid your situation is one of those). After all, the success of your business may be at stake, so let's lower your risks (while we increase your expenses). BTW, as a general rule, don't fear dealing with trademark attorneys; we've found them to be a relatively erudite, amiable bunch.
Thursday, November 18, 2010
(We registered our blog name last year and didn't run into any problems.)
You'll have to meet the requirements for trademark protection and registration, much of which we set forth hereand in our helpful book on the subject. The online registration process should cost approximately $300 depending on which method you choose. And when you register, you would describe your blog services as "On-line journals, namely, blogs featuring commentary and information in the fields of [describing the content or field of the blog]."
Wednesday, November 17, 2010
Right, you had a question. We checked out the other site. Yes, it looks like your database has been ripped off. You have two challenges: (1) You have to categorize the ripoff as a valid legal claim, and (2) you need to find out if there's a way to sue in Nevada (otherwise, you will you have to hire an attorney in New Jersey).
(1) Making a Valid Legal Claim. Okay, here's a long-winded explanation of the possibilities:
- The Affiliate Relationship. You say the owner of the other site used to be your affiliate. Did you enter into an affiliate agreement (some sort of click-to-accept agreement that sets out the terms of the affiliate relationship)? If so, you may have a few choices available to you. For example, many affiliate agreements prohibit reverse engineering, "scraping" of your site's code, and similar types of behavior. Affiliate agreements also often contain things like attorney fees provisions, or jurisdiction clauses (and that may require the other party to consent to Nevada jurisdiction). If an agreement exists, that could be your best strategy.
- Terms and Conditions. A second (and similar) route is to enforce the terms and conditions of use of your website. The terms and conditions of your site prohibit reposting of the material and also require that lawsuits be filed in Nevada. That may assist you. However, we don't see a mechanism by which the user of your site must agree with those terms and conditions before proceeding. For example, we don't see a box to check when registering that says "I agree to abide by the terms and conditions of this website." That would certainly help as the enforcement of end user agreements usually requires that the other party demonstrate some form of consent to the terms and conditions.
- Copyright Claims. If you can't rely on the affiliate agreement, you may be able to pursue copyright infringement. If the other site "scraped" your site, you may have a claim for copyright infringement of your site's code, or alternatively, of your database. (You'll need to demonstrate that your database is sufficiently unique and required some judgment or creative skill to create.) We talk about database protection in more detail, here. You should register copyright applications for both the website and for the database using the Copyright Office's system for electronic registration (and you'll get a registration back within six to eight weeks). If you need a registration sooner than that, you could speed it up by using a more expensive special handling system.
- Unfair Business Practices. There is also a patchwork set of state laws known as unfair competition lawsthat prohibit sleazy business practices and scraping of your site may qualify as such.
(2) Jurisdiction. We mentioned jurisdiction (which refers to where you would have to sue). A lawyer can best advise you on how to proceed but we think that you may have a reasonable basis to sue in your home state of Nevada based on the previous affiliate relationship, your terms and conditions, and possibly because the other site may have customers in Nevada. All of these are factors in determining long-arm jurisdiction. You can read more about it here.
Posted by The Dear Rich Staff at 2:34 PM
Monday, November 15, 2010
Making a film based on real events. When making a film based on real events, there are three primary concerns: (1) Are you stepping on anyone's copyright? (2) Are you defaming or invading the privacy of any individual? and (3) Are you stepping on anyone's right of publicity?
- Copyright. The facts of the case are available for everyone to use. As a general rule, the more that you fictionalize the less chance you'll run into copyright problems. However, too much fictionalization of real-life characters may lead to claims of defamation if the fictional liberties cause people to suffer harm. In other words if you fictionalize a real person doing something illegal or immoral, you might hear from a lawyer (or barrister since this is a UK story). Still, we wouldn't worry too much, see below.
- Defamation/Invasion of Privacy. Occasionally people complain that a movie portrays them in a libelousmanner or a "false light." Such lawsuits rarely get very far because judges give movie makers a lot of free speech leeway. For example, a former ambassador sued the makers of the film The Missing on that basis, and the case was dismissed.
- Right of Publicity. A right of publicity claim is unlikely to succeed solely on the basis of a film. However, it may get more traction if the film sells merchandise or other commercial items using the person's image or personna.
Bottom line dept. There have been plenty of re-tellings of the Enfield poltergeist story and so we think there's room for yours as well.
Posted by The Dear Rich Staff at 2:35 PM
Wednesday, November 10, 2010
Gather info and check your status. Whether you handle this on your own or you get a lawyer, you need to start by gathering information. You need to review these websites and plug in your song titles: HFA, Limelight,BMI, and ASCAP. You should find out who is listed as publisher of the song and who is listed as songwriter. You should also search the Copyright Office website to see if the songs have been registered and whether you are listed as co-writer.
- If you're not listed as co-songwriter ... then you're going to need to prove ownership. That will require documentation from the past -- either publishing contracts if you have them or circumstantial evidence (vinyl recordings listing you as a co-writer, credits listing you at other websites, previous payments for the songs, etc.).
- If you are listed as co-songwriter ... then you will have an easier time proving your case and hopefully recovering royalties (and if you are listed as a co-writer at BMI or ASCAP then you should be receiving quarterly payments directly for radio and certain digital performances -- unless your contact information is outdated).
Get a lawyer. Once you've gathered this evidence, we think it's time to contact a lawyer. We know it may cost you money but if the recording artist was well-known and the songs are generating thousands in revenue per year, it could be worth your while to get an attorney involved. If you live near a volunteer lawyers for the arts organization, you may be able to find an ideal attorney. Otherwise, you will need to look for a copyright attorney who might hopefully be willing to take your case on a contingent fee basis.
Monday, November 8, 2010
First sale doctrine. The first sale doctrine provides the right "to sell or otherwise dispose" of authorized copies of copyrighted works so as a general rule you will probably be okay using fabric that includes copyrighted images (assuming it's not bootleg fabric). There are limitations and complications. The more you split up a purchased work -- for example cutting out prints from a photography book and reselling them as framed works -- the more likely someone will come after you. We explained these principles here and here.
Copying from books. You will not be okay copying images from books or photos and applying them to coffee sleeves. In that case you're not reusing a copyrighted work, you're actually making copies and that's prohibitedunder copyright law.
"Intended for Personal Use." We wouldn't worry too much about statements such as "Intended for Personal Use" unless as a condition of buying fabric or some other product, you entered into a license. That fact should have been evident at the time of purchase -- often a statement such as "By breaking the seal on this package, you are entering into a license, etc. "
Using trademarks. Even if you purchased authorized fabric, you're almost always violating the law by placing another company's trademarks on your product because it is likely to confuse consumers that the company that owns the trademark is associated with your venture. Consider the situation from the trademark owner's perspective. Would you want your mark to appear on a product that you didn't make, had no control over, and for which you receive no revenue?
Making a good faith effort. Making a good faith effort to find the owner of rights doesn't get you off the hook for infringement but it is likely to reduce the damages if someone comes after you. For this reason you should always document your searches.
Blah blah blah Dept. As for your question as to why (or whether) the law protects corporate entities with huge bankrolls ... the Dear Rich staff believes that -- considering the terrible governments and laws that exist in the world today -- the U.S. copyright law and our federal judges are relatively fair and balanced. We think your beef is with the way the legal system (not "the law") can be gamed by fat cats because the well-heeled can better survive the costs of legal enforcement. In truth, digital copying of movies, music and books has reduced many of these "huge bankrolls" (consider the demise of EMI for example).
Friday, November 5, 2010
Dear Rich: My friends and I recently made a short film. It is a "mockumentary" on Sunday school. In the video, a teacher poorly sings (no instruments accompanying her) a popular song for about 10 seconds. The song in question is Blame it on Cain by Elvis Costello. The question is, do we need to obtain copyright for an out of tune rendition? We would eventually like to submit this film to local film festivals and want to make sure we're in the clear before we pursue anything. Alas, copyright law doesn't care whether your version is in tune or out tune (or even if it's out-of-tune and you later use this to fix it). Ifout-of-tune singers didn't have to pay for rights, the music biz would likely go belly up (Ashlee Simpson, call your lawyer). So we'll start with the premise that any unauthorized version is considered an infringement, even if only for ten seconds.
Possible defenses. It's unlikely you can afford a lawyer to fight but if you want to defend your use, you have two arguments. One is fair use. You can argue it's a traditional fair use and that you've only taken a small amount to comment on the song. Or alternatively, you can argue it's a parody in that the out-of-tune version of Blame it On Cain sung in a Sunday School mockumentary is being used to poke fun at the lyrical message -- blaming sin on a Biblical character. Cases such as this one (When Sunny Sniffs Glue) and this one (the Pretty Woman case), may bolster your defense. Alternatively, you might be able to make the argument that the amount you took was so small that it didn't matter (known as a de minimis argument). But as we remind readers, these are defenses -- which means you're hoping to stop someone who's already on the offensive -- and unfortunately that often means you're on your way to court.
Thursday, November 4, 2010
Tuesday, November 2, 2010
The Dear Rich Staff doesn't think you should worry about it. You're okay reselling pool cleaners bags provided that the bags are authorized (not fakes or knockoffs) and purchased within the U.S. The principle that protects you is known as the exhaustion doctrine. (We talked about it here.) This appears to be the general rule although according to this case, some patent owners can establish post-sale restrictions on patented products if the purchaser agrees to the license. In the case cited, that 'agreement' occurred when the consumer accepted a price incentive to purchase toner cartridges. So if you are about to buy pool cleaner bags and you see language in advertisements referring to a "license" to use the product -- for example, "By opening this package, you agree to the terms of the license agreement ..." then you may be bound by those terms provided that you can see the license agreement before you purchased the bags. In general we think this is unlikely. Although we don't own a pool, or a robotic pool cleaner, we did examine our vacuum cleaner bags and found no license language.
What you can and cannot do. It's also possible, though unlikely, that if the bags you buy infringe a patent, the patent holder will move down the food chain and sue you as well. That's because anyone who makes, uses, or sells an infringing device can be liable. Some things you cannot do: you cannot remove trademarks and resell; and you cannot open pool bag cartons and place additional merchandise inside; you cannot combine other merchandise with pool bags and create the impression that the patent holder or pool bag manufacturer endorses your combo-package. Also, from an ecological POV, you should not fill the bags with mermaid repellent.
Posted by The Dear Rich Staff at 2:40 PM