Monday, February 28, 2011

Using movie stills at a website

Dear Rich: I am planing to make a site that shows screenshots from the movies that I love. A movie might have 50 or so, (or even more?) screenshots in it. There will be no critics or teaching material. There might be an affiliate link to purchase movie. Of course I want them to be in good quality so these might not consider as thumbnails but not wallpaper size also. I made a quick research and have a roughly an idea what might be considered as copyright infringement. It seems like a very fuzzy area in my opinion. On one hand it is promoting the work but on the other hand copyright holders might ask for permission. History Dept. Did you know that prior to 1912, the U.S. Copyright Office did not recognize film as copyrightable subject matter? Early filmmakers had to print out every frame of the film and register each movie as a series of photographs. The law was amended in 1912 because, as a Congressional report announced, movie production, “has become a business of vast proportions.”
Yes, you're infringing. It's not really that fuzzy. Unauthorized reproductions are infringement unless excused by a defense such as fair use. You probably can't afford to fight a fair use battle, so the question you're probably more concerned about is whether movie companies will come after uses like yours. After all, a lot of websites freely use movie stills to discuss films and don't run into problems. Our suggestion: follow Aristotle's advice, "Everything in moderation." If you use two or three stills or only use thumbnails, you're unlikely to get much fanmail from movie company lawyers. But when you begin using 50 full-size images, you're more likely to show up on their radar screen.
Are you promoting the film? Many infringers argue that they're actually promoting the work they've ripped off ... and you can certainly bring that up as part of your fair use defense. But that argument rarely succeeds. First, you can promote the film without infringing copyright. Second, like many bloggers and website owners, it looks like you're really concerned with promoting your own site and earning money from affiliate sales.  Finally, copyright owners might not want to be promoted in the manner you do it at your blog. Part of the benefit of owning a copyright is that you can control, to a limited extent, the manner in which the work is promoted.
Speaking of theft ... We recently re-watched this heist film (we love Akim Tamiroff) and when we Googled it, we noted (wistfully) that the movie itself had been heisted.

Friday, February 25, 2011

Can I base children's book on "orphaned" toys?

Dear Rich: I am writing a children's book and it is based on two little toys found at a recycling center. I have looked online with no luck to find if they are the property of some entity. Is there a legal issue with using the images of these two characters in a book? If there is do you have any suggestions as to how I might locate the owners of the toys?  Wow, saved from a recycling center and made the stars of their own book. What a great story right there. We assume you've also tried searching for printed notices on the toys -- many toys produced from molds contain wording pressed somewhere into the toy that indicates the manufacturer or trademark owner. It's also possible that sites like TD Directory or the folks from Playthings can help. But frankly, we think you're facing an uphill battle -- not just finding the manufacturers -- but getting permission as well.
You've got two choices: You can proceed without permission or you can use toys that you can verify are no longer made or promoted. Proceeding without permission may be fine, particularly if the manufacturer is gone. The good news is that you probably won't have to be concerned about trademark infringement because you don't know the toy's name. We also think you have a good chance of avoiding copyright infringement assuming your use is transformative. And that perhaps you may even be able to argue that the toys lack sufficient creativity to be protectible under copyright law at all. PS. If you're looking for old toys that may safe to use, check out sites like this.

Thursday, February 24, 2011

Does a music producer own the copyright in a band's sound recording

Dear Rich: Help us out here. My band wants to register the copyright in our recording but we're not sure who to list as owner. Is it the producer, or the band, or do we split it? There's no definite answer for your band because determining the ownership of a sound recording copyright (as with a songwriting copyright) depends on the contributions made by each person. Usually, yes, a producer is co-author of the recording because the producer performs a wide range of tasks including performing, arranging, and mixing. (That's why they get paid the not-so-big bucks.) On the other hand, as happened in a case involving the White Stripes, a co-producer who set up mics and chose reverb settings did not have a claim to copyright because his contributions were not considered sufficiently creative. And of course, just because you produced or played on the recording, doesn't mean you own copyright -- for example, record companies routinely require producers and musicians to assign all their rights back to the company. This guarantees that the record company can claim sound recording copyright. P.S. Here's one producer we love.

Wednesday, February 23, 2011

Can you protect oral disclosures under NDA?

Dear Rich: I am considering creating an nondisclosure agreement (NDA), but I am curious and concerned about what form a document might take indicating that the recently transmitted oral communication was confidential. In one of the free NDAs you posted, it has the following statement: "If Confidential Information is transmitted orally, the Disclosing Party shall promptly provide a writing indicating that such oral communication constituted Confidential Information." So my question is how should one go about constructing this writing? My other question is on stamping; does a traditional red ink stamp saying "confidential" suffice for stamping documents?  If  you've made oral disclosures without an NDA in place, you can't claim what you said is confidential. As they say, the horse has left the barn. But if you have the agreement in place before the disclosure, then you should be okay provided you follow up with an email or other writing confirming that you disclosed something that's a secret. It's best to reference the secret without fully disclosing it in the email -- for example, "Bob, it was great seeing you for lunch. This is to confirm that I disclosed certain information at our lunch that should be treated as confidential per our nondisclosure agreement. That confidential information includes information I provided regarding our plans to develop a new mobile application for gymnasts and ballet dancers."
Stamps and other trade secret stuff. Any stamp (or handwriting) that indicates the material is "confidential" will suffice. Of course, we should remind you that the stamp is useless unless you treat the information with confidentiality. For example, stamping it "Confidential" won't mean much if the document is shown to people who are not bound by nondisclosure requirements. Here's plenty more free stuff to read about NDAs.

Tuesday, February 22, 2011

Is origami protected by copyright?

Dear Rich: I'm frustrated after multiple attempts to reach (Fumiaki Shingu) for permission to use his copyrighted origami folding methods for greeting cards. The U.S. publisher of some of his diagrams won't give me his contact info, the Japanese phone number on his website doesn't work, his email on website doesn't work, and I get no reply to my snail mail inquiry. I even have friends in Japan trying to locate him for me. Is there a point where I can just go ahead and use the folding methods without injuring my reputation or pocketbook. His website is The initial question when you want to use someone else's work is whether it is protected by intellectual property laws. So we should start by asking whether origami designs and origami instructions can be protected. According to supporters of origami, the answer is yes. We tend to agree. The U.S. grants design patents to origami works, and considering the amazing creative work that is expressed in much origami, we believe that such works merit copyright protection. We also believe that instructions for creating such works may be copyrightable depending on the extent of original expression.  And finally, compilations of origami works may be protected to the extent of the author's choice and selection of material. Traditional origami is most likely in the public domain.
Getting permission. If you are using protected works as the basis of your cards, you should obtain permission. In 2008, the First International Origami Copyright Meeting (Tokyo) proposed the creation of a clearinghouse for origami artists so that people like you could obtain permission from artists. You might want to contact the participants at that meeting to see if such a clearinghouse was created. If that's not possible, you may wish to check out artist Robert Lang's origami resources page. As for your question about proceeding without permission, our standard answer would apply: if the works are protected and the owner learns about your use, you may have to face the consequences of a cease and desist letter (or worse, a lawsuit). The odds of that happening are affected by the popularity of your work and the tenacity with which the owner pursues infringers.

Monday, February 21, 2011

Can copyright in Freud's work be restored?

Dear Rich: I was reading a book on the public domain that has two statements: "there are some foreign works that don't qualify for copyright restoration. These are works that are no longer under copyright in their home countries because the copyright in their home countries has expired ..." and "Thus if the author of the foreign work died long ago, the work may not have qualified for copyright restoration in the United States." Does this mean that all works written by, for example, Sigmund Freud (who died in 1939, and then his works are in the public domain in Europe) are in the public domain in the US since January 2010 even if they were published in the 30s and renewed in the 60s? According to our research, you are correct that the writings of Sigmund Freud are now in the public domain in the European Union.
Here's where it gets complicated. As to U.S. protection, the short answer is that Freud's work is likely still protected in the U.S. if it was published after 1923 and with proper notice. Here's why. If Freud's works, first published in Europe, were published with a copyright notice, then they are protected in the U.S. for 95 years from the date of first publication. If they were not published with a copyright notice, or if they were republished before 1978 with valid copyright notice, then U.S. courts may differ as how to treat them but, according to author Steve Fishman (whose book you cited) the best approach as to such works is:

"A work first published outside the U.S. without a copyright notice before 1978, and never republished before 1978 with valid notice, would be treated as in the public domain only if (1) the author has been dead more than 70 years (the same rule as for unpublished works); and (2) the work was first published before 1923 (the same rule as for works published outside the U.S. with a valid notice).
What's this got to do with restoration? Not much. Restoration is the process by which previously public domain works in the U.S. are resurrected and are awarded copyright protection. The U.S. agreed to permit restoration of certain works as a condition to joining an international treaty in 1994. We don't believe restoration is relevant to Freud's work because restoration applies to works that have already fallen into the public domain in the U.S. because they were works published:

  • between January 1, 1923 and March 1, 1989 without a proper copyright notice, or
  • during the years 1923-1963 but never had their copyrights renewed by filing an application with the U.S. Copyright Office during the 28th year after publication, or
  • in countries with which the United States had no copyright relations.
So unless Freud's U.S. publications dropped into the public domain for one of the reasons listed above, it would not need to be restored. Speaking of which, do you think it's unheimlich (as Freud might say) that the authors we're discussing today -- Sigmund Freud and Steve Fishman --  have the same initials!

Friday, February 18, 2011

Wanted: Product endorsement from Seinfeld character

Dear Rich: After several years of slow product development, I am ready to proceed with launching a product that I believe will have some national, continental and perhaps European appeal. The invention is an accessory that compliments an already popular product.  It's fashionable and performs several functions. In the marketing plan I would like to trademark a phrase from a popular Seinfeld character.  (I read your blog entry on the "No Soup for You" question.) The product will sell without it, but the phrase dovetails perfectly and would help greatly.  I've done a limited trademark search and have not found the phrase. Ideally I would like to use the phrase and get the character's endorsement and to show the clip from the Seinfeld show. We're familiar with the Seinfeld Brand and we think you'll run into trouble trying to connect your product, the phrase and the show. It's possible that you may be able to register the phrase as your product's trademark (we'd advise a search of USPTO records before proceeding with that) and it's possible that you might be able to convince the show's owners to make an endorsement deal. But in the world of probability -- and considering how selective the show is about endorsements -- any attempts to associate with Seinfeld will likely be scrutinized by the show's protective lawyers. If your product is as sellable as you describe, we don't think you need to risk the lawsuit.

Thursday, February 17, 2011

Can you copyright a joke?

Dear Rich: It seems that jokes attributed to a particular comedian are copyrighted and could not for example be used in the routine of another comedian. But what about if I wanted to compile and sell a book of jokes on a particular subject, the material found say on the internet on websites not belonging to the original author, who is probably (and usually) unknown? Or just generally known to me, you know the kind you heard somewhere, passed from person to person? Actually, comedians often infringe other comic's jokes (as William Patry's thoughtful blog on the subject explains) and that activity rarely leads to legal action. (Comedians have their own system of self-regulation.) Lawsuits are much more likely to arise when a book or collection of jokes are infringed. In that case, the dispute is usually over the choice and selection of jokes -- that is, a compilation like the one you suggest -- and not necessarily about individual jokes. For example, if you had a unique collection of chicken crossing the road jokes, you might be able to stop someone who copied your collection, even if the underlying jokes are unprotectible or in the public domain. Speaking of jokes, we wanted to share our most recent favorite punchline (it's a dark joke that takes place in a bar): "Wow, Superman you're such a mean drunk."

Wednesday, February 16, 2011

Somebody stole my creative commons

Dear Rich: I'm a great believer in Creative Commons, and have used their "attribution, non-commercial, no derivatives" licenses for my work. A friend was searching for one of my hummingbird pictures, and told me that the search results didn't lead to my site. When I looked into it, the top results led to an aggregator/scraper site. My site was listed in a caption, but the links led back to the aggregator and, what was most disturbing to me, led to pages of thumbnails that were mostly pornographic. So, I guess, fun animal pics are a good way to get people to click through to crap. I'm upset about this, and I have no idea what to do. Do I have any recourse? Does a CC license mean that my work can be used this way? If not (I'm hoping the answer is "not"!), what's the next step? I'm very much not a lawyer (I'm a biologist) and hate dealing with legalese. If I hired a lawyer, what kind of expense would I be looking at? Hundreds of dollars, or thousands? What about the fact that people misusing my work seem to be more well known for it than I am. What to do about that? Sue Google for malpractice? Whoa ... you almost scared the Dear Rich staff away by using the "M" word. (FYI, malpractice claims are typically brought against professionals like a dentist, doctor, or accountant, not your search engine provider.) We're not sure what inexpensive non-legalese recourse you have but here are three things to consider before taking any action.
  • You have a copyright in your photos. You retain copyright when you make your work available under a Creative Commons license. As copyright holder you have provided a restricted license by which people can use your work without asking permission. If users (like the search aggregator) don't abide by the terms of the license then you can go after them for infringement. Here's an explanation of how it works.
  • Search engines and thumbnails. Your beef seems to have something to do with the use of your photos as thumbnails by a search aggregator. One hurdle for you is a 2007 court ruling in which a court ruled that Google’s reproductions of images from an adult men’s magazine website were permitted as a fair use. That's similar to a 2003 case that ruled that a search engine’s practice of creating thumbnails was also a fair use. Translations: courts are willing to tolerate thumbnail reproductions by companies that scour and sort the web for consumers.
  • Using the DMCA. If someone has copied and reposted your work without following the Creative Commons license, you can also pursue the matter with a DMCA Notice. Typically you file it with the company that hosts the website. But you can also have it removed from Google's Web Search results (even if you can't remove it from the website where it's posted).  Here is Google's online application form. If the company responds with counter-notice, then the material will be "returned" to Google's search results unless you file a lawsuit within 14 days. If you wish to sue in court, you will need a copyright registration. Also, if it's demonstrated that you had no right to ask for the DMCA notice, you could get hit with attorney fees.  
Bottom line dept. We're not happy about your situation but we also don't believe in pursuing legal remedies unless you can demonstrate economic damages. The last thing we want is for you to be dragged into an expensive time-consuming lawsuit over hummingbirds. Perhaps, a less expensive and less risky approach is to start with a DMCA notice.

Tuesday, February 15, 2011

Free speech and company blog

Dear Rich: I was hired to write a blog for an apparel company. So, I did and everything was fine until I started slipping personal opinions in. I told the company that readers want personal opinions and that was part of blogging. They said no and that if I kept putting my opinions in, they'd fire me. What I'm wondering is where the first amendment fits into all this. The first amendment won't be of much help in a battle with your employer. Our office mate (and fellow blogger) is the expert on that subject and we'll defer to her article (and her book).

Monday, February 14, 2011

How do I register sound recording and songwriting copyright?

Dear Rich, I recently recorded a CD with my fiance and am trying to figure out how many applications I should submit to the copyright office. Here's a breakdown of contributions for this CD/project... I wrote all 10 songs (music and lyrics), except one which was written with my fiance. I recorded/arranged/mixed most of the music. Vocals and another instrument (performed by my fiance), were recorded at her father's studio. Her father mixed the tracks (that I had put together) with these additional recordings (vocals, etc.), then he mastered the CD. So, should I submit one application for music and lyrics for songs 1 - 9 (for myself), another application for the 10th song (my fiance and I), then a third for the sound recording including all three of us? Wow, with all the turmoil and terror in the world, the Dear Rich Staff is so happy to answer a question from some kissing musicians on Valentine's Day.
Right, you had a question. You need only submit two applications, one for the songwriting (musical composition/performing arts) and the other for the recording (sound recording). We think that the Form CO is easiest and here's a video explaining how to fill it out for your songs. You're allowed to list songs by more than one writer on a single form provided that one writer is the same for all of the songs. Here's a circular about registering musical compositions. Next, you would use a Form CO and claim sound recording copyright (here's a circular). Although we didn't think it applies in your case, you can use just one Form CO for everything if the same person owns the copyright in the songs and the sound recording. This could happen, for example, if your fiance and her father assigned you their rights in the sound recording. We hope your wedding plans work out and speaking of V-Day, have you seen this patent application?

Thursday, February 10, 2011

Dropshipper claiming breach of website terms and conditions

Dear Rich: Long story short, when I filled out an application form on my dropship supplier's website, they had a Terms and Conditions on their website that I never noticed until my supplier accused me of violating it recently. My supplier is now threatening to sue me for breaching this contract that I didn't know about. It's probably my fault that I wasn't more careful when I applied to it, but it's too late now. When I filled out the application online, there was no click-to-agree mechanism. There is also no language that explicitly says I am agreeing to it. There is only a link with somewhat obscure anchor text pointing to the agreement. The text read: "Please read the terms and conditions of our dropship program and email us with any questions." The words "dropship program" were used to link to the T and C page. Looking at it, I was expecting to see more information about the dropship program if I were to click it. How do courts treat these types of non click-to-agree online contracts? Will this likely be treated as a valid contract in court? Or will it fairly easy for a lawyer argue against it? My supplier is in Ohio and my business is in Texas. It all depends. A contract cannot be enforced if the parties never agreed on the material terms. That's why the most effective terms and conditions and end-user licenses (EULAs) require some type of actual agreement -- typically a click-to-accept checkbox or button. These mechanisms for "agreeing" come in many shades and as a general rule, the harder it is to demonstrate that the other party agreed to the terms and conditions, the harder it will be to enforce the agreement. For example, Adobe was able to demonstrate that its software license is enforceable because users had to, at some point in the transaction, consent to the terms. By the way, electronic consents are acceptable under the Electronic Signatures in Global and International Commerce Act which legitimized all electronically entered-into agreements.
So, the best argument the drop shipper could make would be that you checked a box or clicked to accept a link that led to the terms and conditions. But, absent clear proof that you were made aware of the terms and conditions -- and obscure links don't sound like clear proof -- the drop shipper will have a harder time proving that the terms and conditions were part of the agreement. How hard? We can't say for sure and the unfortunate part is that it may take a court to decide. We think you should inform the drop-shipper that you don't believe the terms and conditions are enforceable because you never agreed to them and at the same time, you should look for a way to resolve the problem that is less expensive than hiring a lawyer in Texas.
Note, even if the drop shipper's mechanism for agreement is acceptable, terms and conditions and EULAs will not be enforced if they are unconscionable, a slippery standard that requires a court's intervention. Some such agreements are considered unenforceable based on the presence of forum-selection provisions, clauses that typically require that lawsuits must take place in a specific location. (See this article for information on jurisdiction.) Often these agreements are invalidated as "adhesion contracts."

Wednesday, February 9, 2011

Should we apply for trademark in Mexico?

Dear Rich: I am writing because I have a new home/office product that I am in the process of getting manufactured and we plan to launch by the middle of this year. My company has the U.S. and Canadian patents on the product and we've also applied for trademark protection in the U.S. At the moment, we're considering our options for international trademark protection and have narrowed our list down to a handful of countries that we feel will be important markets for us and are within our budget. U.S., Canada, EU Community Trademark, Japan and Australia. My question for you is this: How important is it to apply for trademark protection in Mexico in this instance? We don't anticipate selling directly in Mexico in the immediate future, but want to make sure we're protecting ourselves as best as we can in North America. Do you think it's a no-brainer to apply for protection in Mexico or something we can hold off on until we see how the product does and how the company grows? As an American company, what risks do we take if we don't apply for trademark protection in Mexico? Does trademarking there help protect against unauthorized "copies" coming into the States or is it really just about sales in Mexico, and the ability to have distribution deals that cover the continent? The Dear Rich staff is biased towards a conservative money-saving approach and for that reason, we think you can wait on the Mexican trademark registration. Your U.S. registration will enable you to prevent the sale of counterfeit merchandise from Mexico (and you can work with U.S. Customs to prevent Mexican knockoffs from traveling into the U.S.) As you may know, you can also file an international application under the Madrid Protocol rules which, if done properly, will guarantee you priority (a claim that you used it prior to someone else) in countries that you designate for trademark protection. If your approach to business is less conservative than ours -- you want serious protection everywhere in the line of commerce --  then you should obtain counsel in Mexico to assist in preparing a Mexican trademark application. It's true that under Mexican trademark law, you do not need to use the mark in Mexico in order to register it there (you must disclose that the mark has not been used). However, actual use of the mark in Mexican commerce will be essential for disputing claims of priority. And of course, we must remind you that having these rights won't mean much if you can't afford to enforce them.

Tuesday, February 8, 2011

Can I use screenshots of art programs?

Dear Rich: I tried to search the blog to see if this question had already been asked, but the search function isn't working. Or maybe it's a problem on my end. Either way, I'm sorry if this is a repeat but I really need to know! Right, I had a question. I'm a digital artist, and a lot of my fans have asked me to put out a book showing how I accomplish various styles that I do, essentially like a cook book for digital art. But in order to show people clearly which button to press, which brush to use, which tool to use, I need to use a few screenshots of the interface. They aren't the main focus of the book, but it's really hard to explain what I'm trying to teach without sometimes showing exactly what to do. I use a bunch of programs, from well-known ones like Adobe Photoshop to lesser-known ones like ArtRage. Do I need to obtain permission from the creators of these programs to use these screenshots? Yeah, you're right, there's something funky with our search feature. We did find this entry. As you can see, the party line on screenshots is that they are infringements. But as we mentioned, it's unlikely any software company is going to chase someone who uses screenshots of the program in a "how-to" book.  First, the shots likely qualify as a fair use. Second, it would be remarkably counter-productive to sue because books like yours help to popularize the programs. The only case we found in which a company sought to stop screenshots involved Sony (who you think would be friendlier to fair use) and they lost that one. So, we think the coast is clear for your book.

Monday, February 7, 2011

Beerings: Where beers and ears meet!

A partner and I sell earrings made from recycled ONLY beercaps. Because many of the caps bear trademarked/copyrighted names, are we in any sort of violation for turning trash into treasure and profit? We would like to know, before attempting to grow the business. You're probably fine selling recycled beer caps as earrings. Considering the proliferation of these types of products, it's unlikely that a beer company will risk the publicity of going after a crafts artist, and if they did, the beer makers might have a hard time winning. The companies would have to show that you're either diluting their famous trademark, or infringing them by confusing consumers -- for example, Michelob Ultra customers believe your earrings come from Michelob, not you. To be on the safe side, avoid focusing your collection on one particular beer company or otherwise creating the impression that any beer company is affiliated with your business. A disclaimer at your website may help ... something like, 'We are not associated with or endorsed by any beverage company.'
Were you going to use 'Beerings' as your mark? Others have sought to register 'Beerings' for jewelry but none have been successful so far (although one company registered it for the following goods: "Bejeweled articles in the nature of charms not containing precious or semiprecious gemstones, for attachment to beverage glassware for identification purposes." We're not sure what that's about and if you're going to try and claim the name, we'd recommend more research.

Friday, February 4, 2011

We want to pitch a food item

Dear Rich: We're working with a popular food manufacturer to find a company to license and extend its brand into a different food category. We're actually close to finalizing our simple 3-page agreement with the company, so we wanted to run some questions by you. Keep in mind that we prefer to keep the agreement short. What exactly should our pitch materials (to prospective licensees) consist of? In addition, what other topics should be considered when drafting a Brand Licensing Agency Engagement? (1) agency services, (2) agency compensation (3) agent authority and expenses (4) nondisclosure  (5) assignment (6) termination (7) amendment (8) applicable law (9) dispute resolution? We think we understand what you're doing: you and your business partners want to act as an agent for a food manufacturer and you want a simple agreement to represent the manufacturer but not so simple that it overlooks important elements.  You also want to know what to say in your pitch to potential licensees. Is that right? We hope so because the Dear Rich staff stayed up past our bedtime to answer your questions.
What about your pitch? There's a legal side and a business side to your pitch. We can't tell you much about the business side. That's between you and the food manufacturer (referred to as the "principal" in your agency relationship). As for the legal side of your pitch, obviously you want to represent the principal truthfully and you don't want to divulge anything confidential unless you have a confidentiality agreement (NDA) in place prior to the pitch meeting. We've posted one for free here. The other major legal issue that is part of your pitch may relate to the terms of the eventual licensing agreement you hope to procure. So you may need to become familiar with that agreement and what it will consist of. For example, what do you say if a potential licensee asks about the territory, the length of the license, how the compensation will be made (per unit, per net sales?) and what types of deductions will be included. In some cases, the agent is responsible for dealing with these issues and even preparing the license agreement. In other cases, the principal handles the whole thing. We hope you can figure that out before your first meeting.
Your agency agreement. If you're close to finalizing a three-page agreement with the principal, we'd recommend that you speak with a lawyer. It's not that we don't think you can accomplish it yourself using our licensing book. It's just that you may be making lengthy binding commitments and it would be wise to at least have an attorney bless your final paperwork. Having said that, (and assuming you can't afford to hire an attorney) we think that our book covers the major issues with sample clauses. What the book doesn't do is tell you whether the principal will make a reliable business partner. So, to the extent you can research the principal and its business practices or propensity for lawsuits, that would help. A lot of that is discoverable on the Internet. We bring that up because if you're dealing with a cutthroat business, you'll spend all your royalties on lawyers chasing down your royalties.  That's also why attorney fees provisions and dispute resolution provisions are often so important. The same may be true for indemnity provisions that will shield you from liability if that food product makes people sick. Finally, agents sometimes like to include provisions that prevent the principal from circumventing their work. For example, if you solicit a licensee, are you entitled to royalties if the principal enters into an agreement with that licensee a week after the agent agreement terminates? These are the kinds of issues that can make that short simple agreement a lot more complicated.

Thursday, February 3, 2011

Copyright on pre-1923 National Geographics

Dear Rich: Is it possible for works published before 1923 to have had their copyrights renewed and therefore protected? I read that National Geographic and some other magazines had their pre-1923 publications renewed and was wondering if this information is correct. It's possible that pre-1923 National Geographic magazines may have been renewed at some point, but even if they were, they are no longer protected under U.S. copyright law. Like the 5.4 million pre-1923 published books still existing, they are definitely in the public domain. If you need more info on the public domain, check out our favorite resource. Regardless of their copyright status, those old NatGeo issues may or may not (or definitely don't) have any value.

Wednesday, February 2, 2011

Can we assign video rights?

Dear Rich: My employer has an agreement with a non-U.S. entity to use their video. My employer is establishing a new separate entity, a publishing company. Can my employer use this video, under the name of the new publishing company; or must we go back to the non-U.S. entity and ask them to reissue the agreement to include the name of the publishing company? What you're seeking to do is "assign" the contract to a new entity. With an "assignment," a new entity can step into one party's shoes and fulfill the obligations and reap the benefits. (We summarized the rules here.) Whether you are free to assign the agreement without asking depends on the agreement. Look through the contract for a provision titled "assignment" or for a statement about "assignment."
If there is no assignment provision ... If the contract is silent as to assignment, you are free to assign it without permission. You should prepare an assignment agreement between the new and old entities. And you should notify the other party that the agreement has been assigned. However, your assignment won't be enforced in court if the new arrangement materially alters what’s expected under the contract -- for example, if the assignment affects the performance due under the contract, decreases the value or return anticipated, or increases the risks for the other party to the contract (the party who is not assigning contractual rights).
If there is an assignment clause ... Assignment provisions come in various forms. Typically an assignment provision prohibits any assignment of the contract. In that case you'll need permission from the other party. Many assignment clauses permit assignments under certain circumstances, most commonly if one of the parties is sold, or ownership of the company changes, or the company merges or becomes a subsidiary of another company. In that case, you may be able to assign without permission. If that's the case, you should still notify the other party that the new entity is assuming the rights and obligations under the agreement.
Don't try this at home. If the contract does not permit assignments, it is often quite easy to proceed with a transfer, anyway, particularly if both parties get along. The parties simply sign a short agreement in which they agree that one party's rights can be assigned to a third entity. You should probably seek an attorney's assistance to make sure the assignment is properly prepared.

Tuesday, February 1, 2011

Can I patent clothing designs?

Dear Rich: I am a designer who is new to patterning clothing for manufacturers. I agreed to work with a small clothing company and design and pattern pieces for them. Can they patent my patterns, or should I be patenting my patterns (to then potentially sell them to other businesses who are looking for stock patterns)? Do I automatically have the right to these patterns because I designed them, or do I actually have to patent them in order to "own" them? If I sell the patterns to the company without patenting them, do they then have the right to patent them and do what they want with them, or would I still maintain some rights over my work? Do clothing designs fall under creative ownership? It's virtually impossible to protect clothing designs in the U.S. (We discussed some of the issues in a previous post.)  Unlike European nations which offer a few years of protection to new fashion designs, U.S. protection for designs is zip, zilch and zero despite some wishy-washy attempts to change the law. (This article sums up the bad news.) The lack of protection is obviously a boon to makers of fashion knockoffs and it has not diminished the need for designers; approximately 22,000 designers make a living in the U.S.
What's a designer to do? Because fashion is hard to protect, the industry has focused on the creators, rather than the creations. Designer names (which can be protected under trademark law) have tremendous value and designers can earn royalties on fashion that includes that trademark. Because you can't stop others from copying your designs, we urge you look for ways to get paid based upon the success of your designs. For example, in return for creating designs exclusively for a company, can you seek bonuses if sales of your work pass certain benchmarks? Can you receive royalties for successful items? In other words, try to be creative in the ways that you get paid.