Monday, January 31, 2011

Importing T-Shirts

Dear Rich: My wife and I have a small importing business. We have recently acquired some t-shirts and are wondering how to react to possible copyright. We are building a website for all our other hand-made goods and are wondering if we can put the t-shirts on there for sale. Are we on the hook for the copyright or is this like reselling an item personally purchased (aka that the assumption is that the copyright was paid by the original seller)? It all depends if the shirts are infringing -- that is, whether the shirts were authorized by the copyright owner.  The first sale doctrine permits you to resell authorized merchandise without any hassles. So if you buy 100 t-shirts that were authorized by Disney, Lady Gaga, or the NFL, you can resell them, no problem. Because infringing shirts are not authorized, their resale is not permitted under the first sale doctrine. The same rule is true for importing in general. You can import non-infringing t-shirts, but you're prohibited from importing infringing ones. As for your website, copyright law (see Section 113c) permits you to post images of the copyrighted merchandise in connection with the sale.

Friday, January 28, 2011

Can I post recipes at bulletin board service?

Dear Rich: I have a “bulletin board” web service limited to subscribed members with a special medical problem. I make no money from the board. Often, recipes are posted which are intended to facilitate the treatment of the medical condition. Often these recipes are copied, or at least derived from recipes probably taken from commercial cookbooks or from the web. Sometimes they are attributed, at least by a link, and sometimes they are not. Can I be held responsible for furnishing the service by which these recipes are disseminated? The law states that the recipe’s author’s description of the technique used to assemble and cook the item is subject to copyright. My pile of cookbooks are literally filled with recipes that are indistinct from one book to another, and websites are filled with recipes indistinct on multiple sites. I intend to add to my "Information for New Subscribers" this instruction: “When possible, recipes that are copied from a recipe book or website should be attributed, or a link provided to the website from which it was taken.” Is this sufficient to cover me? I should add that the purpose of the board is not to post recipes, but to also share support, advice, and resources.  Speaking of recipes, let's start with a shout out to the Dear Rich staff for their excellent red pepper tapenade recipe. (It's pretty close to this recipe except without the garlic, of course) By the way, we've discussed recipes before and we think this post and this post address many of your concerns. In general, you're probably fine operating in the manner you described. You rarely need to be concerned about copying one or two recipes from a cookbook. But you should be concerned when a bunch of recipes are copied from one source. In that case, you're more likely to hear from the copyright owner who may claim that their collection or "compilation" has been infringed.
What should your notice say? We think your Terms and Conditions (to which each member of your group should agree before joining), should include a statement to the effect of: "We don't permit the posting of materials that infringe copyright or violate the law and we reserve the right to remove such materials." That's pretty general but it sets the tone in case you are asked to remove materials. FYI, attribution and linking are fine but keep in mind that they won't get you off the hook for infringements.

Thursday, January 27, 2011

Can I use painting of photo for book cover?

Dear Rich: My mother painted a picture (that I really like) of Walter Benjamin who is the subject of a book I've written. The painting is a cropping from a postcard of a photograph of him looking very angst ridden. The photograph on the postcard is copyrighted from 1938. Do you think it's okay to use the painting as a book cover anyway or should I try to contact the photography studio listed at the back of the postcard (which has a copyright that is presumably more recent)?  We believe that the rights to the photo (No. 1, above) are owned by the Estate of Gisèle Freund/IMEC Images (L’Institut Mémoires de l’édition contemporaine, Paris). (Contact at: imecimages-icono@imec-archives.com or Tél. 02 31 29 37 44). Because Freund, a French citizen, died in 2000, her works are protected for 70 years following her death. (An exception to this rule might be if the photograph was first published in the U.S. and was never renewed. In that case, no permission would be needed for reproductions in the U.S.) Your mother owns the copyright to her painting (No.4, above) although it would be categorized as a derivative work because it is derived from the Freund photo. The two questions you need to examine are whether your mother's work is substantially similar to Freund's (requiring permission) or alternatively, if it is similar, whether reproduction is permitted as a fair use.
Substantial similarity. Art experts may be required to offer opinions on the issue of similarity but often it comes down to a judge or jury's lay opinion (the "ordinary observer" test) as to whether enough of Freund's work was taken to be considered a "misappropriation." (Of course, Freund's estate does not own a copyright on Benjamin's face; but it does claim rights to her expression of it.) We can't predict this issue, but we think there is enough similarity for the Freund estate to drag you into court.
Fair use and paintings of photos. Thanks to the AP/Shepard Fairey case, many people are aware that copyright owners can raise a stink when their photos are turned into paintings. That case appears to have settled and the leading case on art reproductions of photos remains Rogers v. Koons, a 1992 case in which a court ruled that Jeff Koons' arty reproductions of a photo of a couple holding puppies was not considered a fair use. (You can compare the two works here.) Again, the Estate has enough of a claim to get take you to court.  
What about transformative uses? Two years after the Koons case, the Supreme Court recast fair use in Campbell v. Acuff  by emphasizing that the "transformative" nature of the derivative work is the most important factor to consider when making fair use judgments. So the rules are a little different in a post-Campbell  world. Others have prevailed in comparative art-to-art situations using a parody defense, and even Koons prevailed using a fair use defense in a more recent case. In another case involving a postage stamp based on a copyrighted war memorial,  the fair use defense did not help.
Does the painting alter the original with new expression, meaning, or message? In our tableau, above, No. 2 does not seem transformative; all that was done was to apply a Photoshop algorithm to the photo that made it look like a painting. In No. 3, we cropped the Photoshop image so it matches your mother's painting and the cropping has an effect that transforms the work somewhat by bringing us "closer" to the subject (removing the hair and suit) and by intensifying the angst, pulling us more into Benjamin's brain (and that's some brain: we love his writing tips). That's still probably not enough to avoid liability. Besides the cropping, your mother (No. 4) has modified the shading under the hand, the colors (the glasses, for example, are green) and Benjamin's head is not as tilted, his eyes looking more at the viewer. There's no doubt she has created a different experience for the viewer than Freund, but the larger question is whether your mother has altered the original with new expression, meaning, or message. We're not sure there's enough to carry the day in court. For that reason we're going to leave this entry open for comments (Readers, do you think it's fair use?).
Your publishing agreement.  To some extent, much of this answer may be unnecessary. If you have signed a publishing agreement it likely requires that you acquire all rights to material that you use in your book. It also probably requires that you pay for (indemnify) any lawsuits. We're guessing you don't want to have to risk that in the event the Freund estate claims your use is not fair.

Wednesday, January 26, 2011

Can we sell movie "promotional" posters if they say that sale is prohibited?

Dear Rich: I have in my possession over 400 movie posters from the last 4 years and would like to see if I can sell them without any problems. However, I am concerned about the possibility of getting into trouble since most of the posters states on the bottom, “Property of …… studios for promotional use only. Sale, duplication or transfer of this material is strictly prohibited.” The Dear Rich staff used to work as a movie usher and we sure wish we hadn't given away all of the movie posters (or one-sheets, as our boss referred to them) from back then. Who knew? It's weird how long Woman of Straw (one of our fave posters) played at that theater -- almost as long as Never Too Late.
Right, you had a question. The use of the "prohibited" language by movie studios is so that they can claim that the posters are not sold; they are licensed. That distinction would exclude the posters from the first sale doctrine (we explain the principles, here) which would otherwise permit you to resell them. But we think that the movie studio's argument will be difficult to make, thanks to this case. (Here's an article with more details.) As the case indicates, these types of statements are not enough to create a license. Although the case deals with promotional CDs, the general rule is that a license can't be created (1) without some method of agreement by the recipient; and (2) without some means by which the studio can track and retrieve its posters.
But the posters were given away for free, not sold, so how can the first sale doctrine apply? Even though the word "sale" is used when referring to the first sale doctrine, as this case states, the doctrine applies "not only when a copy is first sold, but when a copy is given away or title is otherwise transferred without the accoutrements of a sale."  So, based on our reading of the case, we think your activities are probably within the protective limits of the first sale doctrine.

Tuesday, January 25, 2011

How do you do a quick trademark search?

Dear Rich: How do I do a quick trademark search? I need to check the national records for my new product. It's not hard to look deep into the USPTO records. (Here's some background on trademark searching.) If you'd like to see whether anyone is using your word mark for similar goods, go to www.uspto.gov, click "Trademark Search," then choose "Word and/or Design Mark Search (Structured Search)."
You should get a screen that looks like this:



(1) Enter the words used in your trademark on the left where it asks for "Search Term" and chooose "Basic Index" from the drop down "Field" menu on the right.
(2) List a generic term for your goods or services on the left. (Try different terms -- for example, "furniture," then "chairs") and choose "Goods and Services" from the drop down "Field" menu.
(3) Choose "AND" from the "Operator'" drop down on the right (that's important).

After you click Submit, you'll get a list of possible conflicts. Look for marks that are labeled "LIVE," not "DEAD." You can read about the distinction at a previous post of ours. You can also use the search feature at Trademarkia. (which also offers design searching) If you want to see all the uses of your word mark (not just your field of goods), click the "Basic Word Mark Search (New User)" and enter your mark.




Monday, January 24, 2011

Inheriting book copyrights: What do we do?

Dear Rich: My father was a novelist who died in 1973, intestate, my mother became executor by default. All posthumous contracts pertaining to his books' rights were written in the name of his estate, with her signing as executor. She died recently and her will appoints me executor. My mother's will makes no mention of his estate nor the copyrights, but does leave all her property to her three children, per stirpes. I have an offer pending at this moment and they're waiting to hear from me what entity or name(s) to which the contract should be written. Is it as simple as this; that a deceased author's copyright is always treated as "the estate of so-and-so?" Or, having inherited ownership of the copyrights, can we three be named as the current owners? It's a bit confusing, for in every other aspect of estate law of which I'm aware, an estate is a short-lived entity, dissolving once the probate process is complete. Does a literary (or musical, etc.) estate survive as a legal entity as long as the copyrights survive? Short Answer Dept.: If you're in a hurry, all three of you can sign as co-owners. However, there are other ways to do it (discussed below).
Literary estates and executors. Sometimes, a famous author names a literary executor in the author's will. The literary executor differs from a traditional executor; the literary executor just manages copyrights and manuscripts on behalf of the estate. (Here's a good explanation of how it works.) When a literary executor is named, the executor often operates on behalf of "Estate of [Author Name]." In some cases, a trust or other business entity is established to manage those works. That may make sense for tax purposes. Keep in mind that you can operate informally as a partnership, too.
Recording ownership changes. If you wish, you can simply record a statement with the Copyright Office indicating that you and your siblings have inherited the copyrights (to make it easier for others to find the owners). If a new version of your father's work is  published, you (and your sibling co-owners) can be listed as copyright claimants on the copyright application. In Section 3 of Form CO, check the box indicating you inherited the copyright.
Co-ownership arrangements.  As co-owners of the copyrights, any sibling can make licensing deals provided that the person making the deal accounts to the other co-owners and provided that it is not an outright sale (assignment) or exclusive license of all rights to the novel (see # 4 in this article). Many co-owners who inherit don't want the ongoing hassle and tax reporting so they sell or trade their rights to one sibling. If you form an entity, even a partnership, it's best to enter into a co-ownership arrangement in which a division of duties and revenues are established. 
Where can you learn more? You can learn more about registering literary works and recording documents at the Copyright Office in Steve Fishman's Copyright Handbook. And this PDF from ASCAP (even though it deals with musical works) offers one of the better explanations of issues that arise when copyrights are inherited.
Housekeeping. What deals currently exist? Create a list with relevant info; you may be able to terminate some of these.  In any case, notify the people who are still paying royalties of the change in ownership so that you can continue to receive income. It's probably a good idea to consult with a tax specialist, particularly if the books are generating thousands of dollars in revenue.

Friday, January 21, 2011

How do I sell song to McDonald's?

Dear Rich: I am helping run a budget music studio in Chicago, and I stumbled upon an old recording of a hip-hop artist doing one of the most hilarious food songs I've ever heard titled "mikdonalds." Basically my goal is to purchase the rights to the work, create a funny video and take it to the McDonalds marketing firm, which is located here in Chicago. I am somewhat under the impression that the only way I can make this work is if I am also in control of a publishing company... is this true? I'm also wondering if it is possible to create a contract that says something along the lines of "you give us X amount of money to make a video, then we post it on youtube, then we are paid X amount of dollars for every... 10,000 hits." To be honest this seems like a much more efficient marketing campaign than just some commercial on CBS. We don't know about you, but sometimes the Dear Rich staff lays in bed wondering if the apostrophe is still part of the MickyD mark -- y'know considering how domain names and Internet usage have decimated so many grammatical symbols. (Answer: Yes, though it was strange how hard it was finding the company name on their homepage.).
Right, you had a question.  Assuming you own the copyright in the song, you can make a deal with McDonald's without creating a music publishing company.  If you license the song, instead of assigning it, it wouldn't hurt to create a music publishing company; its primary function would be to collect money from performance rights societies in the event the ad is played on TV or on the radio, etc.
What about the contract? We think if McDonald's wants the song, they can work out any kind of deal, including one like the contract you suggested. However, we don't think that the contract is your biggest concern, right now. The major hurdle is convincing McDonald's to use the song. Most people in your position have a difficult time getting in the door to sell songs and for that reason, you may have a better time making a viral video hit and hoping McDonald's comes to you (and not with a cease and desist letter for diluting their mark). If McDonald's does express an interest, they'll either have a contract for you (time to hire a lawyer to review it) or they'll ask you to prepare one (time to hire a lawyer to write it).

Thursday, January 20, 2011

Can we use nick names when claiming copyright

Dear Rich: If an artist performs and releases music under a nickname of her legal name, which, according to this Copyright Office link, does not qualify as a pseudonym or fictitious name, does that mean it's OK to claim copyright ownership under that nickname (first name being the nickname with her real last name, kind of like me using Jeff instead of Jeffrey)? The only issue I see is that someone could argue they didn't know who held the copyright.
We're not so sure that the truncation of Jeffrey (Jeff) qualifies as a nick name. (Some folks think that it is a "diminutive" nick name, while others are not as sure).  In any case, it doesn't matter what name the performer uses on the CD. What matters is whether she can prove she owns the copyright. For that reason most copyright owners prefer to use their legal name when filing copyright registrations or signing publishing deals because it's the easiest version to confirm in the event a dispute arises. For example, 'Muddy Waters' appeared on stage but it was McKinley Morganfield who appeared in court.  In your case, use of surname and nick name should suffice for copyright and other legal purposes because it should be fairly easy to prove that the claimant and the artist are one and the same.
Full Disclosure: The Dear Rich(ard) staff has a vested interest in promoting the legal rights associated with nick names (and truncations).

Wednesday, January 19, 2011

Wedding photographer claims copyright and won't provide proofs

Dear Rich: We have a massive dilemma with our wedding pictures. Our photographer has completely messed up our pictures, she has printed a very poor quality story book when we asked for a traditional wedding album. Our photographer is refusing to give us proofs or reprints without an extra charge. Our photographer states she has copyright and therefore we would have to pay for any further work. We have never signed a written agreement, does she still have copyright? The only copyright information we have seen is some written text on the bottom of an invoice she gave us.  For background, please check out some of our answers about wedding photos -- this one explains ownership of copyright for wedding photos; this one explains the working relationship between photographers and clients; and this one discusses another bride's massive dilemma. If you don't have time to read all that stuff, you should presume that the photographer owns the copyright in the photos. But both sides have rights. Your rights are tied to the contract with the photographer.
Copyright, invoices, and contracts.  The invoice may be relevant, but it's usually not considered a contract by itself (unless it sets forth the terms of the agreement and you agreed to those terms, preferably in writing). So, apparently you made an oral agreement and you need proof that the arrangement guaranteed you a traditional wedding album as well as proofs and reprints.
How do you prove the details? Acceptable proof of your agreement may include witness statements (did anyone hear your conversations?), emails describing the arrangement, examples of typical contracts for wedding photographers, or statements made at the photographer's website.
Mediation or arbitration instead of small claims court. If your goal is to get the album, proofs and reprints, we don't think small claims court is the way to go. Small Claims court is best if you just want your money back. That's why reaching a settlement agreement of some kind would be in everybody's best interests. Have you considered arbitration or mediation? Not everybody likes these methods but we think they could provide an efficient way to achieve your goals.

Tuesday, January 18, 2011

Do I have to stop using networking site name?

Dear Rich: I just started a private networking site/discussion forum that members can join and talk about the trade I'm in. I gave the site a name, and was recently contacted by someone in my state that said that they have that name trademarked in the state and I cannot use it. Upon looking up their info, I see that they trademarked the name under clothing and education. I also noted that while they trademarked the name in late 2009, they haven't really done much with it - they have a website with a logo and 'coming soon' message. They also have a Facebook page with 0 followers and no activity. My website does not sell anything, it is just a discussion forum that I've started as a hobby, so if I'm reading the law correctly, I must be actually selling a good or service to be infringing on his trademark rights, am I correct? Also, if the site gets so big that it becomes costly for me to keep up, I may decide to sell advertisements to local members just to cover the cost of the site. Could I do so without any issue? If so, should I trademark the same name under "Advertising" and "Personal Services" to protect myself, or is that necessary? It's difficult to say for sure whether you are "in commerce" but we think there's a good possibility that you are, regardless of whether you make money. You are likely offering "services" whether or not you accept compensation or charge for them.  Making money probably has more to do with the issue of damages. A lot of trademark owners don't bother chasing uses like yours because if they win, there are no profits to recover in damages. (Selling ads would of course generate income that might be recoverable.)
Are you headed for a lawsuit? That depends on whether the owner is puffing or really intends to do something about your use. In your favor: you're obviously in a different trademark class (although you may overlap if your forum caters to education and fashion); and the other party's state trademark registration does not offer as much legal ammunition as compared to a federal registration. (That's because some state registration agencies don't examine applications, they just basically rubber stamp the application without much checking.)
Should you federally register your mark? When you ask about whether you should register your trademark, we assume you're referring to federal registration. If you're considering that solely to block or defend against this trademark owner, it might be too early to take that action; many trademark owners only threaten a lawsuit, and it's possible that this will all blow over. But if you're considering registration  for long term purposes -- as an investment in your activity -- then yes, definitely pursue it. (We explain some of the basics, here.) As for your trademark class, we can't tell for sure but it's most likely in one of these: 35, 38 or 42. (BTW, trademark mavens have convincing arguments that 'trademark' is not a verb.)

Monday, January 17, 2011

Can the peace symbol be a trademark?

Dear Rich: Can I use the peace symbol as part of my trademark or is it considered a generic thing like the smiley face? According to some sources, the peace symbol is off limits for trademark registration but our staff doesn't believe that's accurate. It's true that if you try to register the peace symbol as your trademark (or as an element of your trademark), a USPTO examiner might object. The guide used by the examiner, the TMEP, states, "the significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, "smiley face," or the phrase "Have a Nice Day") are normally not perceived as marks."
Not a showstopper. This doesn't mean you are prohibited from using the peace symbol and it hasn't prevented registrations for many peacenik marks including these for boomer grandparents, a NY restaurant chain, t-shirts, and even, surprisingly as jewelry. In fact, the peace symbol even has its own design search code at the USPTO: "24.17.20 - Peace symbol." To get an idea of all the registered marks using the symbol,  type in "peace symbol" here.
Bottom line dept. So, if you can demonstrate that your use of the peace symbol is not merely ornamental but actually serves as part of your product or service identifier, you should be okay.
PS. Sad to say, even the peace symbol can lead to infringement battles).

Friday, January 14, 2011

Defending a federal trademark lawsuit pro se

Dear Rich:  I run a company, Queen City Segway. I ran a daily Internet special called a Groupon. Groupon mistakenly listed my name as Queen City Segway Tours. The owner of the service mark Queen City Tours is now suing me for the profits of my one day sale in federal court. He is representing himself pro se. I have consulted attorneys and they are telling me that it would cost 15 to 25K to represent me in this kind of case. I am a small business start up and there is no money for me to hire any kind of legal protection. So, I am forced to represent myself as well.  The big problem is that he is suing me in federal court and I am not very familiar with how the whole system works. He is suing me personally and not my LLC. 
Our first concern for anybody new to litigation is that they will miss a deadline and lose the case or get penalized just because they weren't paying attention. So mark due dates at the time you learn of them and use a calendaring system that provides alerts. And of course, stay organized, document all proof, and save the paperwork. Also, look into why you're being sued as an individual. One purpose of an LLC is to shield you personally from such lawsuits.
How do you start? You're being sued in the Western District of North Carolina. If you haven't already done so, get a copy of the local court rules.  You will need to follow those rules along with the Federal Rules of Civil Procedure. Your goal is to learn the basic principles of civil procedure and try to steer the case to a quick resolution. Unless you can afford to buy some of the guides mentioned here, you'll need access to a local law library. You will also need access to trademark books like these that provide sample responses. (Beyond law libraries, your local library may have our book on trademarks and Nolo has free information at its website.)
Electronic tracking of the case. Although pro se parties can't use the court's electronic filing service, you should track the documents that are filed in the case. You may be able to do that via the federal ECF system or Justia's Docket's and Filing service (a screenshot is shown below). Fill out the opening form with the names of a party, choose your court and the type of dispute as shown, and periodically check this site to see if anything has been filed that you weren't aware of.

What papers should you file?  Since the case was filed in August, 2010, we assume you filed an Answer. That's a document that looks like this in which you walk the court, point by point, through the Complaint and deny or admit the truthfulness of each statement (or deny a statement because you lack information as to its truthfulness). In the answer you would also provide affirmative defenses -- arguments that say, "Okay, maybe what you say is true, but I have a defense that excuses me." At the time you file your Answer you should also state claims, if you have any, against the party who filed the lawsuit (the "plaintiff").
What are your defenses? Typical defenses in a trademark case might be: (1) There is no likelihood that consumers will be confused (here's a summary); or (2) The plaintiff's trademark is invalid. As for this latter defense, take a look at the Boston Ducks Tours case. That's not exactly on all fours, as lawyers say, but it's close. One tour company sued another for using "Boston Ducks" and the defendant  argued successfully that "Duck" was the generic term for amphibious tours. That made it generic and generic terms cannot be trademarks.
How can you end it? You have a few possible paths to resolution: (1) settlement, (2) court-supervised alternative resolution such as arbitration or mediation, (3) you end the case with paperwork -- usually by filing a Motion for Summary Judgment, (4) you're dragged through discovery and proceed to trial. The last choice is the least likely as judges and magistrates pressure litigants to resolve things.
Where can you get more help? We're a fan of lawyers for the arts groups but we're not sure if the North Carolina group is operational. You can try writing here.
Parting suggestions.  Don't try to talk or write legalese. And if you have business insurance check with your agent to see if you're covered for this type of "advertising injury."

Thursday, January 13, 2011

We've Moved!

First, in case you haven't noticed, we've moved! Assuming our tech staff pulled it off, your browser should automatically re-direct you to this new address (http://dearrichblog.blogspot.com). Starting Monday January 17, 2010, we'll broadcast exclusively from this location. We haven't transferred all of our previous entries but assuming the caffeine holds out, we'll have that done soon, too. We hope you like our new location (and thanks to the staff at Justia.com for their help with the previous hosting).  Second, and equally important, we've got a correction from a few days ago. A knowledgeable reader pointed out it wasn't the Doublemint Twins who were "both right." It was the ladies who used to bicker in the Certs ads. Thanks (although personally I think we can all concede that Certs is basically a candy mint, even with the inclusion of the miracle drop of Retsyn).

Can we call it Grass Roots Magazine?

Dear Rich: We are in the beginning phases of starting up a magazine called Grass Roots Magazine. Initially we will be distributing magazines in California, then as we grow will be branching into other states. None of us have trademark experience so I have a few questions: (1) Should we register the magazine name as a trademark? (2) Since we dont have experience filling out the application for trademarks, is it best to consult with an attorney or have an attorney assist with the trademark application? (3) Can we proceed without registration? The Dear Rich Staff is fascinated by gardening magazines. Oh wait, it's for that kind of grass!
Other trademarks. Our search at the USPTO website uncovered this trademark: Grass Roots Publishing registered for bimonthly magazines (They're the publishers of I Love Cats Magazine). Because it costs about $300 to file a federal trademark application, your attorney might counsel that you're risking the money because the marks are near-identical (both companies would disclaim "magazine" and "publishing") and you're seeking registration in the same class. On the other hand, it's possible -- assuming you're willing to go through a legal wrestling match with the USPTO -- that you might succeed with the registration. You would argue that Grass Roots Publishing doesn't publish a magazine called Grass Roots, so arguably consumers are less likely to be confused by your use (as a magazine title) and the other company's use (as the title of a publishing company). Also, you might argue that although the potential audience for those who like cats and grass may overlap, consumers are sophisticated enough to tell the difference.
Is it best to use an attorney to file? That depends. For applicants who don't anticipate a problem, it's a fairly easy task using the USPTO's TEAS service (or if you need a little more hand-holding, using a service like the one offered by Nolo). Of course, if you can afford it, it's worth using an attorney. It's essential in cases where you anticipate serious opposition to the registration because preparing a response is usually beyond a non-lawyer's abilities. (Your case appears to be one of those.)
Can we proceed with the name without registering it? Yes, and many companies do just that. It's called a common-law trademark. It's true that registration provides a lot of benefits for stopping others but common law trademarks have worked just fine for thousands of businesses. The neat thing about any trademark is that generally, the longer you use yours, the stronger it becomes (and the less vulnerable it is to attack). BTW, your common-law rights would not prevent the 'other' "Grass Roots" from coming after you at a later date. But, the longer you co-exist without dispute, the harder it becomes to stop your use.

Wednesday, January 12, 2011

What are first serial rights?

Dear Rich: If I published an original poem on a personal website, similar to a blog, with no associated advertising, can I still offer first serial rights to a publisher? We think so ... We can't be sure because we're relying on trade custom  not a specific case or law. It used to be that first serial rights (FSRs) referred to the first rights to publish excerpts from a book in serialized form in a periodical, usually before the book's publication date. Second serial rights, according to Kirsch's Handbook of Publishing Law, refers to publication in a periodical after the book has been published. Nowadays, the term is sometimes (perhaps mistakenly) used to refer to the general first right to print something in a periodical (whether magazine or newspaper). Posting material on the web is considered a separate set of rights known as "electronic rights." Those two worlds are obviously mashing together with magazine applications on mobile devices. If your agreement refers to electronic and FSR separately, you're definitely okay. If it doesn't, you can consider discussing the issue with the publisher, specially asking what the publisher believes it is acquiring. Based on trade usage and the historic basis of the term, you're porbably okay to go ahead with the arrangement.

Tuesday, January 11, 2011

Can I use a lot of stuff from Star Wars and not get sued?

Dear Rich: If I wanted to write a book that takes place in the Star Wars universe, and is populated by named Star Wars characters, would that be legal? Moreover, let's say I call it something like "Rebel Discord" (I assume Lucasfilm can't trademark "Rebel"), would I be able to say something like "a Star Wars story" on the cover or advertising? As a general rule, you should presume that owners of movie franchises like Star Wars have a pile of copyrights and trademarks and generally use proton torpedos against anyone who makes unauthorized use. Since well-defined characters can be protected under copyright law, your proposed book with Star Wars characters, locations, and the word 'Rebel' in the title could lead to a claim of copyright infringement. You'd be free to use the title Rebel Discord if you weren't borrowing from StarWars but the combined use of the characters and other elements with "Rebel" also makes it seem as if you're riding on the back of the Star Wars success and in that way. you're likely to confuse consumers (leading to claims of trademark infringement). Of course, It's also possible that Lucasfilm lawyers would never see your work and in that event this answer would be irrelevant.

Monday, January 10, 2011

Can I repost the California Building Codes?

Dear Rich: Is it legal for us to add Title 24 of the California Code of Regulations (otherwise known as the California Building Code) to our website. I got the HTML version of the regulations from Public.Resource.Org. The notice on the top of the title page says: "Public Domain: U.S. Court of Appeals, Fifth Circuit, 99-40632." Please tell if you see any issues with the legality of this. The Public.Resource.Org folks believe the California Codes are in the public domain. The private organizations that create these building standards believe that they are protected under copyright law. Like the ladies in the Certs ads, they both may be right, at least according to a 2002 decision, Veeck vs. SBCCI. In that case, a website owner posted a state model code on his website. The Fifth Circuit ruled that once a model code was adopted as a state's law, it fell into the public domain. The ruling is based on two theories: (1) The Supreme Court has held that the law is not copyrightable; and alternatively, (2) the law consists of facts and facts can't be copyrighted. Because model codes are not always adopted as written, the Fifth Circuit separated the original model code (copyrightable) from the code as adopted (public domain).



Bottom line dept. The Veeck opinion is binding only on federal courts in Texas, Louisiana and Mississippi.  Other federal circuits could disagree with this decision particularly the Second (New York) and Ninth Circuit (California) both known for favoring copyright owners. The Supreme Court refused to hear this case and let it stand (a decision supported by the U.S. Government's Solicitor General). The fact that PublicResource.Org has not been shut down and that 8 years have passed since Veeck was decided without any other major cases on the subject may indicate that copyright owners of model codes are not eager to proceed against those who post the codes.

Friday, January 7, 2011

Can I be sued by owner of patent-pending invention?

Dear Rich: Say there is a known prior art that currently has a patent pending and I file for a provisional stating claims with which I believe are the non-obvious to the prior art:

  • Can they accuse me of infringement and take me to court?
  • Can I sell during my provisional status and if or when do I have to stop selling because there is a known prior art with a patent pending status?
  • If this invention which I believe is non-obvious to the prior art shows that it has commercial value, but there's a known prior art - Is it worth filing a non-provisional after 8-12 months?
  • If my invention is non-obvious to the prior art will a patent be issued and do I still have to license the basic idea of the prior art?
  • I read in your book that changing something small may be considered as a novelty and may be considered patentable (if I am correct) - If so, do you have to go to court to prove that or can the examiner just approve it and when a patent is issued to the non-obvious then you are protected?
Gee, that's a lot of questions and we've only got 20% of our battery power left on our Mac. We better get busy! We liked your use of bullet points so we'll respond accordingly.

  • No, the owner of a patent-pending application cannot sue you for patent infringement. The owner of a patent-pending application cannot sue you for patent infringement until (and if) the patent issues. If the USPTO doesn't grant the patent, there can be no patent infringement. If the USPTO does grant the patent, the owner can only sue you for infringements that occur after the patent is granted with one exception. 18 months after the regular patent application is filed, the application is usually made public. If the applicant notifies infringers after that 18-month publication that they are infringing then -- and only after the patent issues -- can the patent owner sue for infringements that occurred between the date of notification and the date the patent is granted. We previously explained these principles here.
  • You can sell your products after your provisional patent application is filed but ... keep in mind that selling triggers the one year on sale bar, and also that if you are infringing a soon-to-be issued patent, you are likely to be forced to stop. As you may know, your provisional patent application does not grant you any rights. It merely holds your place in line at the USPTO for a year until (and if) you file and successfully pursue a regular patent application. And for that to all work, the regular patent application must reflect what's in the provisional patent application.
  • Is it worth filing a provisional patent application? We don't know. You need an attorney's advice or perhaps you can find it pursuing this guide we posted online.
  • Will you have to license rights if an examiner determines your invention is novel and nonobvious? Probably not but there's no guarantee that the examiner got it right. A patent holder can later go after you and challenge the USPTO findings.
  • Does changing something small get you off the hook if the examiner approves the application? Same answer as above.
Wow, looks like we made it before our Mac shutdown. Thanks Mr. Jobs!

Thursday, January 6, 2011

Is 'Pounds and Inches' in the Public Domain?

Dear Rich: I have been trying to figure out if the original manuscript of Dr. A.T.W. Simeons, Pounds and Inches, is in the public domain. It was originally written in the 50’s in Italy, and there seems to have been a reprinting in the 70’s. A current publishing is being sold on Amazon at this link. Do you have any information on this? I have been very successful on this program and would really like to republish this book myself to help others. Your question is timely because our Wii Fitness "counselor" keeps asking us how we gained 1.5 pounds over the holidays.  So, we will have no problem putting Dr. Simeons' diet book to the test. ANd we'll also have no trouble getting a copy as it appears as if the complete manuscript is available here and here and the full text is supposedly included in this book (and seems  to be available in various incarnations at a variety of diet websites).  The fact that others are  freely copying the manuscript doesn't confirm that the work is in the public domain (the Dear Rich Staff has many unauthorized books out there, as well). But the proliferation of unauthorized reproductions may indicate that the likely copyright owner -- either a publisher or the estate of the British Dr. Simeons -- is lax in pursuing infringers.
Is it public domain? Short answer = No. According to our research, the book was first published in 1954, and Dr. A.T.W. Simeons died in 1970. British copyright law protects works for 70 years from the death of the author  as does Italian copyright law. So we're not seeing any reason why the work would be in the public domain.
Bottom line dept. Although past performance is no guarantee of future results, the widespread reproduction of Simeons' materials creates an implication that enforcement is lax and publication in the U.S. is unlikely to trigger a cease and desist letter.Publish Post

Wednesday, January 5, 2011

Finding Royalty Rates

Dear Rich: I am an attorney in South Korea and found your article Licensing Artwork: Negotiating and Monitoring Royalty Payments to be very informative. I write to you today to inquire further about the article. My question relates to the royalty rates for the apparel industry listed in your article. To briefly explain my situation, I am currently pursuing a lawsuit against a counterfeit seller on behalf of my client, who is a trademark owner of a high-end fashion brand. To calculate the damages, we need to determine the royalty rate ranges for the apparel industry, more specifically for the luxury brands. Although the information in your article that apparel industry royalty rates arrange from 2% to 10% was very helpful, more supporting information is needed to submit our data to the court. As such, it will be greatly appreciated if you could inform us about how you derived your data or point to other sources that could be helpful in determining the range of the royalty rates. Thanks for writing to us from South Korea and its good to know that even south of the 38th Parallel, fashion designers are getting top-notch protection. As with so many legal issues related to licensing, we got our rate information from the then-current edition of Battersby and Grimes' Licensing Royalty Rates. (We also recommend verifying those numbers if possible by talking to someone knowledgeable in the field.) Battersby and Grimes, the legal team that publishes The Licensing Journal, have a cottage industry of books about licensing; they also practice law in Connecticut (where they reverse the names).

Tuesday, January 4, 2011

More on using (tobacco) trademarks in films


Dear Rich: Thanks again for the blog post with my question about using trademarks in a film. One of my concerns had been that a Marlboro sign appears in the store where we filmed. I've since tried to contact Philip Morris twice via e-mail, receiving the exact same stock response both times, basically saying they don't pay for or endorse their products in any media. So I was about to call them up when I stumbled on this article on their site, which quotes:
Unfortunately, the fact that we do not engage in product placement does not mean that our brands are never shown. Some producers and directors choose to depict our brands in their work without our permission. But we are limited in our ability to stop all displays of our brands because federal and state trademark laws, as well as the U.S. Constitution, protect freedom of expression and the "fair use" of trademarks in works such as movies and television shows. Our position is clear – we do not want our brands or brand imagery depicted in movies and television shows. The unauthorized use of our brands and brand imagery perpetuates the misunderstanding among some that we pay or are otherwise responsible for these depictions, which is simply not the case. We strongly encourage the movie studios to eliminate references to or depictions of our brands. 

So I'm kinda giving up on asking them for permission, and am just going to include the image in my film. I am contacting other companies to get their permission with great success so far, but I've given up on the tobacco industry. Thanks again for your help!
Thanks for filling us in on this fascinating aspect of trademark practice. There are two reasons for the tobacco company's response. First, the tobacco companies signed a master settlement agreement of a class action lawsuit in 1998 that prohibits payment for placement of tobacco products in films. Second, there's no sense in promoting tobacco products because the tobacco companies are often sued under the theory of negligent advertising. Of course, product placement is a separate (though related) issue from granting permission. However, as we've discussed before, use of trademarks in films is commonly justified under first amendment grounds.

Monday, January 3, 2011

Do You Have to Get Paid to Create a Work For Hire?

Dear Rich: Thanks for your answer to my question about ownership rights for a documentary film. I wanted to add a couple of things after reading your response: First, we are listed as "company" and the subject of the documentary as "owner" and the language specifically says 50% copyright of the documentary with no mention of source materials or materials created as a result of the production of the documentary. There is a clause that says we will return to "owner" whatever materials they gave us (photographs, video tapes, etc.) but nothing about our mini-DV tapes, edit files, etc. This was NOT a work made for hire as the "owner" has not spent any money nor offered to give us money over the three years we've been in production. We spent over $7,000 out of our pocket during production and were not paid an hourly rate of any kind (this is actually stipulated in the contract, that neither party would be paid except to split revenue generated by the sale of the movie on DVD or other means). Second we've resolved ourselves to the fact that in light of the "owner's" unwillingness to offer us a reasonable buy out of our source tapes we will simply do nothing, as has been suggested to us. Our concern however, is that since they have an attorney that they will look for a way to return to the issue of our breach of contract and attempt to sue us for some alleged damages - damages we are unclear on since aside from their attorney they have not paid for anything. Could they sue us for damages of lost potential revenue of the sale of the DVD? Did anybody miss us? We missed you and thanks for bearing with us as our hosting service retrofitted itself with some highly technical IT stuff all of which forced us into an extended hiatus. Anyway, we're back and we may have more exciting technical information to report soon ... then again, maybe not. It could be that kind of year.
Right, you had a question. Because you never got paid, you assume your arrangement can't be a work made for hire. That’s not necessarily true. There are two ways to create a work made for hire. The first way is irrelevant since you're not an employee. The second way -- for independent contractors -- occurs if the following three criteria are met:
(1) the film is specially ordered or commissioned (check)
(2) the work falls into one of the enumerated categories (check, it's an audio-visual contribution), and
(3) “if the parties expressly agree in a written document signed by them that the work will be considered a work made for hire” (Hmmm …. Notice there’s no mention of getting paid). As a general rule, courts presume that the above-referenced “written document” is a contract of some sort. In order to be a legally valid contract, there must be consideration.
What's consideration? It can be anything that one party does (or doesn’t do) for the other, and vice versa. Typically it's a payment but it can also be a promise to be paid in the future, even if it is speculative. (We recently signed a speculative arrangement like this when we wrote a book and got no advance). We’re not concluding that your document is a work made for hire arrangement (after all, we haven't seen it), but it could be even if you never received a dime from the other party.
Should you fork over the raw footage. None of this really helps your decision about whether you should fork over the raw footage and files. A lot depends on what is (and what's not in) the agreement. An argument might be made that the parties only intended to share copyright in the completed project. Even if it is implied that the shared-copyright extends to all footage, it's still not clear whether you are required to furnish that footage to the other copyright owner. We start to get into a slippery area as an intangible right is used to claim rights over tangible elements. If it's not spelled out in the agreement, this type of battle sometimes ends up in the courts.
What about damages? As for damages, keep in mind that although your payment for a contract can be speculative, damages in a lawsuit usually cannot. Courts are often hesitant to award financial damages if the person claiming damages cannot say with some certainty how much the film would have earned. There are ways to demonstrate damages in film cases but they are often confusing and when litigated can go on for years-- for example the Kim Basinger/Boxing Helena lawsuit (the judgment for which was later voided) (BTW, Kim, you did the right thing). In other words, the aggrieved party needs to show the court why they’re entitled to the dough, not just ask for it. We wish there was a volunteer lawyers for the arts group in your area to help you get some low cost arts advice. To learn more, here’s a recent podcast we did with the folks who run California Lawyers for the Arts.