Wednesday, December 29, 2010

Recording a Lindsey Buckingham Song

Dear Rich: I have friends in a band in Norway and they want to release a song written by Lindsay Buckingham. They plan on releasing 1000 CDs and 500 vinyl singles. Does the label ask for permission or should the band? We think your friends should look at their recording contract (if they have one) to determine who has responsibility for paying for the rights. In the U.S., the label typically pays (and then charges it to the band somehow).
Rights Organizations. In the U.S., the band would have a fairly easy time sorting this out. They could either pay the compulsory license fees and follow the instructions issued by the Copyright Office. Or they could take the easier route of charging the fees to their credit card at the HFA site -- you just set up an account and tell them how many copies. HFA instructions note, however, that the license is only for recordings distributed in the U.S. In Norway, rights are commonly sorted by Kopinor, and your friends might want to check their website for assistance. Other European rights organizations are shown here.
Small Correction Dept. You spelled Mr. B's name as Lindsay; the hypervigilant Dear Rich Staff reports that it's actually the more common male variant, Lindsey (placing #834 among male names -- compared to #1211 for Lindsay). 

Friday, December 17, 2010

My Documentary. Her Idea. Who Owns It?

Dear Rich: A woman has asked me to do a documentary on her. She wants to pay me for shooting, editing and basically putting the whole film together. Do I own the rights to the documentary or is it split up because the idea to do it was hers and she's paying me as an independant contractor. "Good ideas are common - what's uncommon are people who'll work hard enough to bring them about." Those are words spoken by someone to whom we once provided legal advice (and one of the few people to win a court case protecting ashort phrase.) He had a lot of clever ideas and was able to turn them into pithy creative expressions. For that he was rewarded with a copyright.
Right, you had a question. If the only contribution made by the woman who hired you is the 'idea' to make the documentary, then she would not have any copyright claim to the resulting movie unless it qualifies as work made for hire (below). For example, we have this idea to make a documentary about our jet-setting bon-vivant doctor uncle (shown here). Great idea, we think, but worthless unless someone takes the time to express the documentary (hopefully in a manner that is as interesting as the subject matter). So, even if the woman offers you some suggestions about who to interview, or even what to ask or where to do the interview, it's unlikely -- if that's all she provides -- that she will have much claim to the copyright in the result.
If the woman hires you as an independent contractor. If the woman is paying you as an independent contractor, that brings us into the world of works made for hire. In order for it to be a 'work made for hire' made by an independent contractor, your situation has to meet several criteria including a written agreement that designates your work as made for hire. Alternately, she could create a written agreement where she pays you for services, and in return you assign her the copyright. Finally, she may agree that you own the copyright but may contract with you to receive a payment from any revenues based on her cooperation in making the documentary. Even if you don't get the agreements right, it's possible that if the woman is paying you, a court may imply certain rights to the woman based on your working relationship.
Bottom line dept. Things can get messy if you don't sort this stuff out before you start. We'd suggest that you check out a couple of good legal film resources before proceeding: Clearance & Copyright: Everything You Need to Know for Film and Television, and The Pocket Lawyer for Filmmakers: A Legal Toolkit for Independent Producers.

Thursday, December 16, 2010

Can I Mix Captain America With My Poetry?

Dear Rich: I am about to publish a collection of poems, and I want to use a photograph of a father and son dressed in Captain America costumes for the cover. The image was taken by a local photographer. I think he was at a fair or something and saw this father/son duo dressed in the costumes. To legally use this image, would I have to acquire permission from Marvel? The short answer is, "Probably no, maybe yes."
Copyright issues. Under Section 113(c) of the Copyright Act, you wouldn't need permission to reproduce the costumes (and let's hope the Dear Rich staff doesn't need it either for our 1941 blog imagery). And we also think you have a strong fair useargument for using the Captain American costume imagery as well.
What about the other stuff? The use of the image on your cover could possibly trigger trademark issues. If Marvel can argue that consumers are likely to be confused -- that is, they are likely to think Marvel had something to do with your work, Marvel could take you to court to stop the publication. We haven't seen the imagery you are using but we think the statistical chances of getting hassled by Marvel are low (assuming Marvel's lawyers read poetry). However, you should definitely get permission from the photographer for reproducing his image. And it would be wise, because you will be using the cover to advertise and sell your book, that you obtain a release from the Dad and son in the photo.

Wednesday, December 15, 2010

Is it legal to sell restored covers of pulp magazines?

Dear Rich: I am a dedicated digital restoration artist, and enjoy nothing more than restoring a vintage work that's been torn, faded, and dogged almost to death, and bring it back to life the way it appeared on the first day it was printed. 100% digitally reborn, I call it. My collection of digitally restored vintage posters from Japan and China is the world's largest collection, and can be seen here. Problem is, in my old age I suddenly developed a desire to also make some money, and have a new plan. The Asian posters are well past any copyright considerations, but I have been restoring some great old science-fiction magazine covers from a defunct publication called "Amazing Stories", begun in 1926. Even though I'm somewhat familiar with copyright laws, however, it does not allow me to answer my own question, I'm afraid. I was assuming that since the publication was defunct, there would be no issues, but now I notice it belonged to the Ziff Davis Publishing Group when it was still being printed. The copyright laws regarding restorative works become a little murky, because although I cannot claim copyright on any items by someone else per se, the law allows me to copyright my digital restoration work. So, my question is really, if I digitally restore works and sell reproductions of the restored format, is this legal if the company itself is still extant? Or would I best enter into an agreement with the publisher of the erstwhile publication? It appears as if the existing copyrights and trademarks associated with Amazing Stories are now owned by this company. Ziff-Davis owned it for a while butsold it to TSR who apparently sold it off to others, and the magazine limped along in one form or another until publication halted in 2006.
Who owns what? Like other extinct publications, it's difficult to tell who owns what, or if elements of the old magazine are even 'ownable.' If you're betting the odds, then Amazing Stories covers from 1923 through 1963 are most likely in the public domain. That's because these works must have been renewed and most works were not. That's not a definite, but it's a strong possibility. (BTW, you can hear an interview on the PD with author Steve Fishman, here.)
Why can they sell them? You'll notice that the illustration we are featuring includes a copyright notice from this company. As you can see by following the link, the company sells high quality digital versions of Amazing Stories covers and other pulp magazines. How can they do this? One possibility, though unlikely, is that this company acquired all the rights and they now own the copyrights hence the placement of their copyright notice. (By the way it's illegal to place false copyright notice information on a work though it's a common practice). Another possibility is that the company researched the Copyright Office records and determined that the work was public domain. (If that's the case, placing a copyright notice on the work is improper because anybody can copy it freely.) A third possibility is that the work is 'orphaned' -- it's still protected but nobody is looking out for it. And that's why this company can risk offering it.
What about trademarks? It's likely that the last buyer of the Amazing Stories catalog acquired trademark rights. However, nobody appears to claim a valid federal trademark registration to Amazing Stories. In any case, we wouldn't worry too much about that particular issue unless you begin making or selling new products with the Amazing Stories name or logo, or unless you claim some affiliation or association with the Amazing Stories brand.
Your course of action. You can double-check Copyright Office records to see if you can find any renewals for covers prior to 1963. If there are none, you are free to sell your restorations of covers from that time period. You shouldn't include a copyright notice because restoring a public domain work, as difficult as it may be, does not amount to copyrightable subject matter. That doesn't mean you can't be proprietary -- for example, by installing a visible watermark as a Photoshop layer.

Tuesday, December 14, 2010

Can I Really Use Public Domain Image for My Book Cover?

Dear Rich: I have this image in mind for the cover of a new book I've got a contract for. The image is by Gustave Dore and dates from the 19th century. If you look on Wikipedia Commons it says it's in the public domain because the copyright expired. But I wasn't sure that this meant that it was OK to reproduce the image as a book cover for free (although I of course hope that is what it means). Do you think that would be OK? The book will be published by a UK publisher. The short answer is that you're free to use the image. You're correct that British and U.S. copyright laws may differ (you can read the gruesome details about the British public domain here). And you may still have to suffer through a payment to some museum/gatekeeper who possesses access to the quality reproduction you need. But the image is in the public domain and you're free to use it without asking anyone'spermission.

Monday, December 13, 2010

Can A Songwriter Negotiate for Mechanical Royalties?

Dear Rich: If the owner of a song copyright for a song that's not available through Harry Fox is directly contacted by a band wanting to release a cover of the given song, is there anything that limits how much compensation the copyright owner can ask for? The Dear Rich staff are big fans of compulsory mechanical royalties -- the rate that an artist or record company has to pay to cover somebody else's song. Right now, the Copyright Office rate is 9.1 per song. So, if you made 10 CDs of (I Can't Get No) Satisfaction, you'd owe Keith and Mick $.91 cents. And best of all, you wouldn't have to call up Keith and ask for permission (and pray that your telephone call doesn't trigger Keith's "red mist" like when someone cut into his precious shepards pie). (BTW, Harry Fox is a company that enables you to pay for mechanical royalties at their website;Limelight is another.)
Historical Digression Dept. They're called mechanical royalties because back in the day when player pianos were the rage (and they were crazy popular up until radio fully arrived in the mid-1920s) the makers of piano rolls didn't pay songwriters because they argued you couldn't "see" the music on a piano roll like you could see it on sheet music. Songwriters got the law changed so that they got paid for 'mechanical' versions of songs (regardless of whether you could see the musical notes). The mechanical rate has always been a few pennies (back in the days of the Beatles, it was two cents) and in the whole history of the music business, artists and record companies never had to pay more than a dime per song per copy.
Right, you had a question. It's possible for the artist to pay the songwriter less than the government rate. That happens a lot with record deals where the record company pays less -- typically 3/4 of the compulsory rate (unofficially known as "the three-quarter rate"). But paying more for a compulsory license seems kind of kooky. And we should also mention that: (1) this rule is for cover songs--new versions of already published songs and (2) your cover shouldn't materially alter the composition. 95% of covers don't -- they keep the basic melody and chord structure even if they create a new arrangement -- and for the remaining five percent (think Devo's version of Satisfaction), they're probably okay anyway but keep in mind that a songwriter could arguably refuse if the cover materially altered the composition.That's because Section 115 of the Copyright Act provides that the cover arrangement "shall not change the basic melody or character of the work, and shall not be subject to protection as a derivative work...except with the express consent of the copyright owner." You can read more about the process here and here.

Thursday, December 9, 2010

Can video artist collect royalties from MTV UK broadcast?

Dear Rich: A friend and pro photographer made a music video for a friend's band which is now going to be broadcast on MTV Britain. She wondered whether she can collect any royalties from this? This seems like a money-making situation. Wow you sure got us thinking about some of our favorite music videos, like this one by A-ha, and this one by the Beastie Boys, or one of our favorite overlooked (and overcooked) rock videos as shown above. (Spoiler alert: heads explode). (And y'know the DR staff has appeared in a couple of music videos, too!).
RIght, you had a question. Funny how deceptive the music business can be. You'd think that the director of a video that's broadcast on MTV would receive some kind of a check in the mail even if it's a small one.Not! Though the songwriters may be entitled to payment (and possibly in some cases, union actors or musicians), we can find no basis for a compulsory payment to the director/photographer of a music video on British TV. (Shout out to any UK readers who know otherwise). The TV network must get permission to broadcast the video from the owner, but typically there's no payment for the use because such broadcasts are considered to be promotional -- that is, they promote the band. So, alas, there's no reason for your friend to wait by the mailbox.
Ducks in a row dept. That's not to say the director/photographer doesn't have some rights. She may claim rights for any revenue that the video earns based on any contractual relationship she has with the band -- for example, if the video is sold as part of a DVD of compiled videos. Or she may have a claim to copyright in the video (assuming there was no assignment of her rights or assuming her contribution cannot be categorized as a work made for hire.) If she does have a claim to copyright, she could obstruct the permission process. But we don't think that's what anyone wants to do in this situation. Apparently, there's no dispute between the parties (and we don't want to be the ones to cause one), so perhaps now is the time for the photographer to work out some contractual relationship with the band that determines what happens if the video does generate income.

Wednesday, December 8, 2010

Can I Patent an Invention Based on Expired Patent?

Dear Rich: After going through many cycles in regard to creating a patent that is similar or could be viewed as an enhancement to a current product, I found the patents that had been issued for a similar product ended in 1989. Given that utility patents expire in 20 years, what prevents me from creating my patent and using anything I want from the expired patent? Or, what are the ramifications of taking an expired patent as the framework of a product? You're using the term patent in two ways -- to refer to your invention, and to refer to the government sanctioned monopoly granted for new inventions. The emphasis in the latter is on "new" (and not obvious to others in the field). Existing prior art -- basically, that's any stuff that existed before you created your invention (whether patented or not) -- can't be the subject of your patent because it's not "new."
Nothing new under the sun. The vast majority of famous inventions are improvements of some kind. The lightbulb improved upon existing technologies (as did almost all of Edison's inventions). Alexander Graham Bell's invention was filed as an "Improvement in Telegraphy" and George Westinghouse's famous patent was for an "Improvement in Steam-Power Brake Devices."
So, if you improve on an existing invention (or expired patent), you may be able to acquire a patent for your improvement, but not for the underlying prior art. This article and this article both explain the distinctions. So to the extent you can separate and identify the improvement, you may be able to acquire a patent on that.

Monday, December 6, 2010

Does second producer need to sign work for hire agreement?

Dear RIch: I recently took a production from an artist, (who had had another producer start the production), and I added new, refined production to the first production by adding better drums and guitars to the parts that already existed. Also adding background vocals ad string and various other parts I myself performed. Then mixing the song. Therefore, there is now a new recording which is an amalgamation of the previous artists's and producer's work and my own added work. I was paid to do this and only consider my part a work for hire as a co-producer and instrumentalist. I have requested the artist fill out a production contract giving me 1.5% producer's points. I am allowing for the other producer to retain an additional 1.5% should he request this. 1) Does the other producer necessarily need to be a signatory on this contract between me and the artist. (The other producer was also a work for hire and verbally knew about me re-producing the track but has signed nothing as of yet). 2) Do I have the artist include me and the first producer on the SR copyright form as a work for hire? Or, does the artist leave me and the 1st producer/instrumentalist, OFF of the SR form. The song is now in rotation on NYC radio and thus, I wish to take care of these legal issues so that the artist can put the song on iTunes for sale. Congrats on the heavy rotation! We forgot that radio stations still exist perhaps because there's a gaping hole in our car dashboard where the radio used to be. And by the way, we support your work as a producer. We know how challenging that can be, sometimes. And by the way, you might be interested in this recent study of what one of our musician friends affectionately referred to as the 'mucus biz.'
Right, you had a question(s). Your agreement for payment should not include or even reference the other producer. After all, it's not up to you to determine what the other producer should get. We know that 3% is considered an industry average for producers but the Dear Rich staff also wants to point out that you're both free to seek as little or as much as you want, or to modify the percentage based on the source of income -- for example, you might negotiate 5% of iTunes income and 1% of CD sales income. As always, keep in mind that it's not just the percentage that matters but also the deductions that determine the royalty base.
Names on copyright applications. If, as you say, your contribution is as a work made for hire, then the "author" of your contribution is officially the hiring party,that is, the artist. In other words, you have no claim to copyright under a work made for hire arrangement. In cases like this, the artist can list you as one of the co-authors and indicate that your contribution is a work made for hire. But that doesn't always happen, and if it doesn't, it doesn't render the application defective, either. If you want to be listed on the copyright application you can include that request as part of your production agreement. Although having your name on the application as the author of a work made for hire contribution doesn't grant you any rights, it does inform the world (or at least that part of the world that is searching copyright records) that you are involved in the creation of this work.

Friday, December 3, 2010

First, I look at the purse; then the trademark

Dear Rich: I am assisting my cousin in launching a line of purses. We conducted research and found out that there is already a line of purses in the market being sold under the name that she would like to sell her purses. However, the name is not trademarked or copyrighted. Is she able to sell her purses under the name that she chooses even though someone else is already doing so, since there is not a trademark or copyright in place? Should she go ahead and trademark the name or get it copyrighted? The Dear Rich staff is -- like all well-bred blog staff -- interested in all fashion accessories. Did you know, for example, that purses can even be found in Egyptian hieroglyphics? Fascinating? Maybe not.
(1) Don't use the other company's name for purses or other fashion accessories. We assume when you say that the name is "not trademarked" (more on the improper use of trademark as a verb, later), that you mean it is not federally registered. A name can function as a trademark whether or not it is registered. In other words, if someone is using a name as a trademark, that person can stop later users even without a registration. (It's sometimes referred to as a common-law trademark.) You get additional rights and benefits by federal registration, but, as a general rule, you could not seek registration if you are aware that a competitor has been using the same name prior to your use. That's because the applicant must sign an oath indicating that the applicant has the right to claim the mark -- a right that you apparently don't have.
(2) Copyright has nothing to do with it. You can't copyright a name or short phrase. So neither you nor your competitor can protect the name mark under copyright law.
(3) What happens if you don't pay any attention to the Dear Rich blog? If you proceed with the use of the name while another company is using it, you have placed a serious limitation on your purse business. It's always possible that the other company may not find out about your use but if they do (which is more likely, the more popular you become), then you will probably have to stop your use and perhaps destroy any merchandise that contains the mark.
(4) Maybe we're wrong. We don't have all the facts, here, so it's possible we're wrong. For example, the namemay not be capable of functioning as a trademark for some reason in which case both companies can use it without much problem although neither company can stop others.

2 New Books from Dear Rich Staff

Dear Rich: When is the DR staff going to create an eBook to advise mobile phone developers about intellectual property law?Great idea. We just did it and it's been published by O'Reilly. Check it out here and here.

Dear Rich: When is the Dear Rich staff going to provide a helpful encyclopedia style book on contracts -- something that lay people, lawyers or law students can use? Great idea. We'll get right on it. Wait a second! We just finished that one and it 'dropped' today! Buy it at the regular outlets and read excerpts here.

Wednesday, December 1, 2010

Needs a contract for Chinese toy manufacturer

Dear Rich: I wanted to know where I would be able to find an agreement between a toy company and the vendor/manufacturer making the prototype/product for them? It would be a U.S. company having the product made by a Chinese manufacturer. The answer depends on what the Chinese company is doing for you.
If the Chinese company is creating a prototype. If the company is creating a working model that you can pitch and later manufacture, you would need an agreement to create a prototype (sometimes called a model-maker's agreement). We included an "Agreement for Creation of Prototype or Patent Drawings" in this book. That agreement preserves your IP rights and provides for confidentiality.
If the Chinese company is manufacturing your work. If the company is providing you with completed toys that you will sell and distribute, then you need a manufacturing agreement. Quite often the manufacturer supplies that type of agreement in the form of a deal memo or detailed work order/invoice.You can find a Contract for Manufacture of Goods in this book.
If the Chinese company is manufacturing and distributing the toy. If the Chinese company is actually marketing your toy and paying you a percentage then it sounds as if you need a license agreement and we would recommend you consult this book, which also contains a discussion about the challenges when contracting with a company in another country.
Whatever agreement you use ... Keep in mind that when international contracts go bad, it's often difficult to obtain contract remedies. You may have trouble with issues such as jurisdiction, foreign patent rights, arbitration, and the ability to audit foreign records. Not to bring your head down, but when the Dear Rich Staff used to do foreign toy licensing for a client, we remember when our client learned that the manufacturer did two runs of each of his products: one for the client and the other to sell out the backdoor to a network of foreign distributors. Ouch!