Thursday, March 31, 2011

He Wants to Avoid Paying Taxes for Band

Dear Rich: I just purchased your book online called "Music Law: How to Run Your Band's Business." I Paid For Rush Order As I Need Advice Before Friday And Not Sure My Book Will Arrive On Time So I Took The Chance Of Writing To You With Fingers Crossed You Read This And May Have An Answer For Me. My Husband Is A Professional Musician And Tours A Few Times A Year. When He Is Home He Just Plays Gigs Around Town In Different Bands And Plays At Church Every Week. He Does Not Have A Trademarked Or Serious Band Or Anything Like That Himself. He Usually Just Plays With Other Bands When He Gets Off Tour And They Pay Him By Check. They Give Him A 1099 At The End Of The Year If He Makes Over $600 With Them. My Husband Is Set Up As A "Section C" For His Taxes. My Husband Has Never Booked A Band And Does Not Really Know Anything About Signing Band Contracts For Club/Venues. A Club Just Approached Him To Play And Put A New Band Together For His Club. My Husband Is Supposed To Go To The Club On Friday And Sign A Contract. They Want Him To Play At The Club About 2 Times A Month. The Pay Is $800 Per Band And They Only Pay By Check To The Person Who Signs The Contract. I Am Very Nervous About My Husband Signing And What He Is Opening Himself Up To In Relation To Taxes At The End Of The Year. If He Signs The Contract He Will Be Responsible For The Entire Band Taxes For That Year-Correct? (If They Play 2 X Month For 1 Year That Will Be $19,200 Total Band Taxable Income.......$3,840 Per Individual Band Member). How Can He Book Gigs And Protect Himself And Not Get Stuck With Paying All The Taxes For The Entire Band And What Are His Options? Since you're in a hurry and we're in a hurry, we didn't bother to uncapitalize your question but we are curious about this grammatical aberration. Not to be rude, but what's up? If using all caps in email is like shouting, is this less than shouting but still intended to convey a sense of urgency? Curious as many are, but FYI, it makes it a bit tiring to read.
Right, you had a question (and you're in a hurry). Your husband should take the gig and take the payment. You won't have any problem with your taxes because your husband can deduct all of the payments he makes to the other band members (on his Schedule C). After that, he would only have to pay taxes on the remainder (which should be his payment). If he pays the other individual musicians more than $600 in a year, he must issue 1099s. That's not hard to do (we've done it ourselves and you can even automate the process online).  The Music Law book explains all this and you'll have plenty of time to read it before tax time.

Tuesday, March 29, 2011

Registering Copyright for Quarterly Online Magazine

Dear Rich: I’m the editor of a magazine that migrated about five years ago from quarterly print publication to online. Initially, we updated the web site on a quarterly basis, but eventually increased posting frequency and now post content virtually every day. We still archive all content accumulated during a particular quarter by that quarter, however, and would like to continue doing so. I need information on filing for copyright registration for a “quarterly” online magazine that posts new content "virtually every day.” Any suggestions? Here at Dear Rich headquarters we like to provide clarity and a sense of reassurance in our answers. Unfortunately your question deals with some murky waters ... group copyright registrations and online publications. Partially, that's because there has been some uncertainty expressed in recent cases as to what group registrations actually protect -- the collection or the individual units of content. Then, there's the fact that the Copyright Office still hasn't taken a position as to whether an online work is published or unpublished (a fact that also affects your registration).
So what's the answer? First, you need to sort out who produced the content -- you, employees, or freelancers? If you or your employees created the works, then you are the copyright owner. If you own copyright in all content, you can register that content by following the guidelines in Circular 66. You should register the journal on a periodic basis -- perhaps timed to major article releases. (There's a saying among patent lawyers: register early and register often and that would apply to your quarterly magazine.) If you're revising the online work, and the revisions are published on separate days, the only for-sure guaranteed protection for the content is that each version of the online work must be registered individually, with a separate application and filing fee (unless it qualifies under one of the two registration exceptions set forth in Copyright Circular 66). That can get expensive at $35 per application  but in a CYA world, that's the only surefire guarantee of claiming statutory rights. Make sure to list the titles of all articles in the journal. If you don't claim copyright in individual articles, you may wish to claim the collection of articles -- not necessarily the content -- and you should consider serial registration as explained in Circular 62B. If freelancers created the articles, you don't own copyright in the individual articles unless there is an agreement in place. (If a freelancer owns copyright the freelancer should register his or her article using either the eCo system or Form CO.) Whew!
Just in case you weren't aware. Copyright registration is not essential for claiming copyright. You get that automatically. But if you want to claim statutory damages or you want a shot at attorney fees, registering the work prior to infringement is essential.

Monday, March 28, 2011

Royalty or Equity for Copyrighted Character

Dear Rich: I am being asked to work as creative director for a new entertainment company that is just starting. The plan is that this company will have one principal entertainment property that hinges on a main character (a cartoon), with the goal of creating a desirable licensable image and personality (via online episodes and games, and eventually consumer goods). That will hopefully lead to startup funding. I am currently collaborating directly (without compensation) with the founder of the company to co-create this character by providing art and writing. I will eventually be the principal individual in charge of directing her image, voice, and evolution and once the company is funded, I will be offered to join as an employee with full-time salary as part of the employment package. I am also being offered a percentage of equity in the company. The founder's goal is to sell the company (in the internet/Silicon Valley tradition) once the revenue from licenses, etc. is established. The founder and I have discussed the possibility of future royalties as an incentive but we don't have a good idea as to a standard for this. A big concern for the founder (and shareholders) is burdening the sale of the company with an ongoing commitment by the acquiring party to pay an individual (or individuals, in the event the founder also has an interest in a royalty stake) in perpetuity. This sounds non-standard for what we know of the internet industry. But perhaps it is not that unusual and we are just unfamiliar? Sometimes the Dear Rich staff imagines what life would have been like if we (not Peyo) had created the Smurfs -- the licensing possibilities, the interaction with our adorable blue friends, and most important, knowing that we're leaving behind a lovable legacy. We're not saying we'd be happier or more fulfilled -- there's a limit to the satisfaction provided by licensed characters, and we imagine there's also considerable stress -- but things would definitely be different if we surrounded ourselves with Smurfdom.
Right, you had a question. You're kind of in the position of a pre-Smurf Peyo. We admire your business planning and strategizing (as General Eisenhower said, "plans are useless; planning is indispensable") but what you should keep in mind is that while you proceed, legal decisions are being made without you knowing about it. For example, if you and someone else are creating a copyrightable character, then you're both co-authors of that character (once created) under copyright law. No paperwork is required for that to occur. As co-authors, either one of you can license the character provided the other co-author is reimbursed. If you've already created the character, you'll need to deal with (and acknowledge) that fact. Sometimes, this is accomplished by assigning your rights to the venture and once you assign your rights, that's it. You won't be able to get those rights back for 35 years. Alternatively, if you're hired as an employee, and you create the work after becoming an employee, the company will own whatever you create. So, if you haven't created the character then you should probably work out the paperwork before beginning ... so you're not playing catch-up later. At the same, if you and the founder are currently contributing to the business and planning to share in the revenues and you haven't 'created' a company, then you're operating as a partnership, with all of the legal obligations that entails.
What paperwork do you need? It's all about how you will be compensated. Maybe equity -- stock ownership of the business -- will be sufficient. If you acquire stock and the company is sold, you'll probably receive a payment for your shares and that will be likely be that. You're unlikely to receive income from any post-sale revenues (unless that's a condition of the sale of the business). If you're receiving a royalty for your copyright interest, that would continue after a sale because the new owners would have to assume the royalty obligations.
Do acquiring businesses want to assume royalty obligations? As a general rule most companies like to pay once for a business and not to have continuing payment obligations. On the other hand, many acquiring businesses -- music, movie, toy, publishing, and photograph companies --- assume royalty obligations as standard operating procedure. It's no big deal. We believe that if your property is a serious revenue-generator, royalty obligations won't stand in the way of a sale. And we wouldn't worry about a new owner having to pay in perpetuity. When it comes to acquisitions, anything can be worked out if the parties are willing.
Next steps. Document everything. If someone makes you an offer, save the document or email. If you agree to something, put that in writing. If you're in the midst of creating the character or storylines, keep track of who contributed what. Situations like yours are often sorted out after the fact and documentation is essential. If possible, avoid creating your work until the paperwork is in order. That's because if the character is created and becomes a hit, the company will be in a better financial position to challenge your legal rights. That's why the time to get everything right is before creation of the character.

Friday, March 25, 2011

Food Services Biz Wants Same Name as Clothing Store

Dear Rich: We want to open a catering/restaurant business and we have a name that we love, but there is a store (clothing/home furnishings store) in San Francisco that has the same name. We obviously don't want to step on anyone toes. What do you you think? While our staff was preparing this answer we overhead a conversation between two commuters about Fritos. Apparently Fritos brand original corn chips are a good item to take camping (or in an emergency kit) because there's so much oil in the chips that you can use a few to start a camp fire. Who knew? Apparently everybody.
Right, you had a question. As a general rule, your trademark gives you rights for your class of products or services, or for products or services which you are likely to expand into. (The rationale behind all this is that consumers are not likely to be confused between different types of businesses.) So, you're fine to use the same name for your food services business even if another company is using it for its clothing store.  It's true that some clothing stores offer food services -- we use to love eating lunch at Espirit -- and it's true that home furnishings stores may offer food, too -- people seem to covet IKEA's Swedish meatballs. But as a general rule, that type of expansion is rare and usually limited to large chain stores. So always stay away from marks that are famous and owned by conglomerate type-entities.
The bigger picture. Nowadays, it's often not just local businesses that one has to be concerned about. If you're competing on the web, or hoping to expand your business beyond San Francisco, you'll need to check out national uses of the name. We checked your proposed name in the USPTO database and a Florida company has registered it for bar and restaurant services. That doesn't mean you can't use it locally -- the Florida trademark owner may never even learn of your use or care -- but it could become an issue and you might have to change your name if sued (particularly if you can't afford to defend the lawsuit). You could probably avoid those hassles by personalizing the name. For example, let's say you wanted to use PATIO and someone in another state had registered it for food services. You'd probably be okay calling your business, Maggie's Patio or Patio & Potatoes (the Dear Rich staff dreams of a potato-only cuisine). In other words, it's all about distinguishing your name from the competition. That should also make it easier for you to stop others in the event somebody wants to copy your name.

Thursday, March 24, 2011

What Version Do You Deposit for Software App Copyright?

Dear Rich: We have a popular app that's gone through several versions and is available for Apple and Android platforms. We've never copyrighted the app and now we're trying to do it. We started with the electronic registration but we're confused. Do we register the current version of the program or the first version. The Dear Rich staff is feeling kind of strange these days and we're not sure whether it's world events, Liz Taylor's departure, the behavior of the tides and moon, Charlie Sheen's trademark activity, or all of the above. In any case your question triggered memories from back in the 80s when we worked for a software company that developed networking software. And one day the company's developer hooked up the software in our office and somebody in another office sent us our first message from their computer and it was just like one of those "Come here Mr. Watson" moments.
Right, you had a question. If you're concerned about infringement, you should register both the first version and the most recent version, and you should probably do the same for all platforms. Yes, it's true that you get copyright automatically once you create a work. But in reality, the copyright is not so automatic when you want to sue someone. That's because you have to file a registration before filing your suit. When completing the application, the Copyright Office rules require that you (1) list the first date of publication, (2) that you acknowledge any preexisting material that you incorporate in your version, and (3) that you deposit the best edition of the first publication. Those three criteria can cause confusion. That's because software programs (like video games and websites) go through a series of substantial changes after they're first offered to the public.
Date of first publication; preexisting material. The Copyright Office wants you to provide the date of first publication for your software program. But if you're offering a series of version, each constitutes a separate "first" publication. For example, there's a first publication for your iPod version, your iPad version, your iPod 2.0 version, your Android 3.0 version, etc. And whenever you register your work you can claim only what is new over the previous version. As a result, you must file a series of registrations as described here.
Depositing the best edition. Consider the software developer who no longer had the first published version of his source code from 1990. In order to deposit the first published version, he reconstructed it by removing all of the code he'd added since the program was first created. Not good enough said a court who claimed that reconstructions of code would not suffice. Therefore, we hope you have maintained copies of the source code for each version and you can furnish it according to these requirements. P.S. For more exciting legal info on apps, check out our O'Reilly Mini eGuide.

Wednesday, March 23, 2011

Burma Shave signs and copyright

Dear Rich: I'm an author writing and self-publishing a book of fiction. I would like to use an old Burma-Shave slogan, circa 1935, in my text. Burma-Shave was originally owned by Clinton Odell, sold to Phillip Morris in 1963 and then to American Safety Razor Company in 1997. The company is now in bankruptcy proceedings. It's an 18 word slogan: “Don’t pass cars/ On curve or hill/ If the cops don’t get you/ The morticians will/ Burma-Shave.”  The short answer: use it and don't worry. Burma Shave's use of sequential signs ended in 1963, coincidentally, the year in copyright history after which published works no longer required renewal. Putting aside issues as to whether posting the signs amounted to "publication," it's unlikely that signs like the one you want to use were registered and renewed. So, they're most likely public domain. In addition, the signs are arguably a short phrase, which is usually not protectible, and your use appears to be a fair use, anyway, since the incorporation in your novel would mostly likely be transformative.  Even if we're wrong about all of the preceding (sounds like a lawyer, now!), the party that acquires the Burma Shave rights in bankruptcy will probably not care about your use. In summary, "Our answer/Might seem way too long/But it's copyright/Not copy wrong."

Tuesday, March 22, 2011

Permission to Use Museum Pictures

Dear Rich: If I receive permission from a museum to reprint a picture of their building and a picture of a sculpture or artwork, am I to assume that they have the necessary permission from the creator of the artwork or building, as well as the photographer of the given piece? How many permissions do I need? Speaking of permissions and museums, the Dear Rich Staff wishes we could get permission to show you some photos from this exhibit. Our staff reports that it’s quite a mind-blowing event. Which reminds us of when our staff was younger and we used to go up to Berlin, New Hampshire and visit an uncle who worked at a paper mill and that's where we learned how to make paper pulp. All very fascinating stuff.
Right, you had a question.  When it comes to permissions, don’t assume anything; ask what rights are being conveyed and get the response in writing. As for using the picture of the museum, you’ll need permission from the photographer and assuming it’s a publicly viewable building, that’s probably all that’s necessary. (More on that, here.) It’s possible that the museum may have acquired the rights from the photographer so in that case, all is well, as long as the permission states that. It's wise to include a warranty -- a short statement in which the museum assures you that it has the rights described. If the museum doesn’t have rights from the photographer, you'll need to contact the photographer or whoever was assigned the rights.
The picture of the artwork. As for the artwork, you'll need permission from the artist and the photographer of the artwork. Again, the museum may have been assigned these rights and that should be expressed in the permission. By the way, slavish photographic reproductions of public domain artworks may not always be entitled to their own copyright. (We talk about it here). In other words, it’s possible that a photographer may not get a separate copyright simply for creating an excellent replication of a painting.

Friday, March 18, 2011

Protecting an Idea and Title for a Documentary


Dear Rich: I'm making a documentary soon and before I begin to publicize it and fundraise I would like to protect the title and idea from being used by others. How do I copyright this? Short Answer Dept. Forget about copyrighting your idea. Copyright doesn't protect ideas; it only protects the expression of the idea. For example, anyone could make a film of the recent tidal surge at Richardson Bay (and many have) but only after each film is created is it protected by copyright. It's true that some documentary ideas -- for example the idea of filming a 30-day diet on junkfood, or the idea of confronting the president of General Motors, or even the premise of living for a year without buying anything new, may be so strongly associated with specific individuals that copying the premise violates unfair competition laws. But these documentaries are rare examples and the protection would only kick in if the movie is completed and has become popular.
What about the title? An individual title for a movie cannot be protected under copyright law (short phrases don't get any respect) and it's difficult to protect under trademark law. You can register the title with the Motion Picture Association of America. But that's a limited form of protection -- an agreement among members (mostly big time studios and producers) who sign a contract that they'll avoid infringing registered titles.  

Thursday, March 17, 2011

Copyright My Blog


Dear Rich: I would like to copyright my blog content and title. I'm not sure the difference between patent, copyright, and trademark. Which is most appropriate? First, you can eliminate patents from consideration as they deal with inventions and designs (The distinction is explained here).
As for trademarks and copyrights ... You can protect your blog's title by registering it with the USPTO. If it qualifies, you will be able to stop other blogs and related publications from using a similar title. (You can read more about blog trademarks here.) As for copyright, as Dear Rich readers know, your content is protected under copyright automatically once you create it. You can also register your blog as an online work, which requires periodic filing of groups of new blog entries (which has some advantages but which will cost you between $35 to $45 per filing). In the event of infringement, the Dear Rich staff also recommends considering the use of DMCA takedown notices (explained here). You can also augment your blog copyright protection by following some of the suggestions posted here (where you can view more raccoon photos), or you can rely on a Creative Commons license, by following the suggestions here).  Wow, all that linking and reading has got us exhausted.

Wednesday, March 16, 2011

Nonobvious Prior Art Claims

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 nonobvious to the prior art. [Hi Readers. Before we lose you in a torrent of inventor-speak, allow us to provide a short translation.  This inventor has come up with something that he believes to be new and not obvious (nonobvious) to those in the field of invention. (These two standards --  new and nonobvious -- are the basis for getting a patent.) Another inventor has filed a patent application for a related invention (the "patent pending" reference).  In summary, the inventor doesn't believe his invention is substantially similar to the existing technology in that patent application (or "prior art"). What follows are his questions and our answers.
1. Can they accuse me of infringement and take me to court? The other inventors cannot sue you for patent infringement until their patent is granted. If 18 months have passed since the other inventors filed a patent application and the application has been published, they can notify you about the application and then sue you for any infringements that occurred after notification. (We've discussed that previously here). In either case, the actual lawsuit cannot be filed until the patent is granted. Whether the inventor succeeds obviously depends on whether you guessed right about the prior art.
2. 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? You can sell any time you want but if you sell your invention and it infringes, you'll be liable once the other patent is granted.
3. If this invention which I believe is nonobvious 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? We're kind of going around in circles. If you have commercial potential and you're concerned about infringement (or issues of prior art) you should bring in a patent attorney to provide an opinion before you waste your money or time on the pursuit. Keep in mind that whether you're right or wrong about the prior art, the other inventor can come after you if there's enough of a case to get in court. And then you'll be spending money on a court battle when you could be devoting the time and money to some other great new idea.
4. 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? If your invention is new, nonobvious and meets all the patent requirements, you're entitled to a patent. Keep in mind, these determinations are tied to the interpretation of the patent claims, explained here.) If the invention doesn't infringe, do you have to license rights from the other inventor? No.
5. 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 nonobvious then you are protected? In some cases, small changes are enough to get a patent, in other cases, no. If an examiner feels the application is sufficient, you'll get your patent. Alas, that patent can always be challenged and then you may have to deal with two battles, a patent reexamination and a court case.

Tuesday, March 15, 2011

Disney Princess Permission

Dear Rich: I would like to begin offering tea parties and other party services where a particular princess hosts the event. I have seen a lot of party places advertising parties with specific Disney princesses. I am wondering do you have to get permission from Disney to say your having a tea party with say Cinderella or one of the princesses, and if so, how do I begin that process? We've located one source for permission though we can't guarantee it's still accurate. Try writing to The Walt Disney Company, ATTN: Margaret Adamic, Permissions, 500 S. Buena Vista Street, Burbank, CA 91521-6305. The phone number is (818) 569-3128. By the way, we've also written about using Disney princesses in indy movies and about using the princesses on stationery.

Monday, March 14, 2011

Signed NDA; Lost Patent Rights

Dear Rich: In 1995, Company A signed an NDA with me that enabled a presentation to their executives concerning my ideas and vision in the implementation of bar code reading applications using cordless telephone technologies. Following the presentation, and after leaving the documentation with the company, they wrote to me rejecting participating in the proposals presented. In 2001 Company B, which is wholly owned by Company A entered into a joint venture funded by Company A with Company C. Company C has been awarded patents in this area of technology that I proposed in 1995 to Company A. All the major players in the mobile phone market now licence from Company C to enable cordless phones to read and transact operations over the air. In 2003, I wrote to Company A concerning these facts that Company C may not have good title to these patents due to the history of circumstances inter alia myself. They responded with a letter stating that they (Company A) were a strategic supplier to Company C and that the executive who signed the NDA was employed by the business network division at that time and as there was no longer a business network division that position no longer existed. Are there any statute of limitations that would prevent me taking further action legally? Would it be more productive to start addressing these issues directly with Company C in the USA? The short answer is that you've probably waited too long to pursue your trade secret claims. 10 or 15 years may not seem like a long time when considering human history or geophysical activity, but it's eons within the legal system. (You should consult with an intellectual property lawyer to be positive).
The clock started ticking ... As a general rule, you have a certain number of years (typically 3 to 5) to take legal action after your problem developed. For example, most states have adopted the Uniform Trade Secrets Act which has limit of "3 years after the misappropriation is discovered or by the exercise of reasonable diligence should have been discovered." In addition, there's a legal theory known as laches that could limit any damages you may have suffered because you waited too long to bring the suit.  (Here are some of the other defenses that Companies A, B, and C could make to a claim of trade secret misappropriation.) Although it's not the same as a lawsuit for damages, you may be able to argue that the issued patents are invalid by having the patents reexamined.

Friday, March 11, 2011

Needs Music Rights for Dance Instructional DVD

Dear Rich: My wife and I want to produce an instructional dance DVD. Obviously, to instruct people in how to dance, we would need to include some music on the DVD. But I am a little confused on exactly which permissions/licenses we would need to obtain. I have a general understanding of the copyright requirements for producing a music CD, and I also know that the requirements for including music in a motion picture are quite different, but where exactly would an instructional DVD fall between those two very different mediums? Given the answer to that first question, I have a further complication based on the types of musical works I would be including. I envision using three types of musical work in the final product. First is standard pre-recorded original works - anything from Glen Miller to Lady Gaga. Second, I would include pre-recorded instrumental pieces contained on MIDI and karaoke files found on the internet. And third would be my own arrangements of existing works. So, for example, I might use an actual recording of the Glenn Miller band playing "In The Mood", or an instrumental midi file of "In The Mood", or my own arrangement of "In The Mood." As you can tell, I'm already into some fancy foot work. Can you help me get my steps straight? As discouraging as this may sound, our advice would be to either give up on your DVD project or to risk going it without authorization. That's because all three of your potential DVD uses - unlike a standard audio CD -- require a special license to link the music with video known as a "sync license." These licenses are required from the publishers/songwriters of the music. (A separate permission will be needed from the record company that owns the rights to the pre-recorded music tracks.) The Dear Rich Staff has discussed sync licenses in the past and our main takeaway point is that in order to get one, you need to contact each music publisher individually and ask for it --  a task that we imagine will quickly bust your budget, assuming the music publishers even take your calls. That's been the case since 2002 when the Harry Fox Agency discontinued granting sync licenses on behalf of the publishers they represent. As for using songs without permission, the odds of being hassled will decrease if you don't use pre-recorded music as those tracks are easy to identify with music ID software.

Thursday, March 10, 2011

Are wikipedia public domain photos really public domain?


Dear Rich: Our publication is going to publish information about Q-Ships -- merchant ships that were decoy warships used to bring German submarines out in the open, mostly in World War I. Illustrations have been very difficult to find. We have two from the SSHSA archives but the only photo that the author and I can find of a vessel that was involved in the most significant Q-Ship incident is on Wikipedia. It’s a good photo of this World War I ship and it states beneath the photo that the image is in the public domain because the copyright has expired. Under “source” it gives a web address which is all in Russian. Is the Wikipedia declaration that the photo is in the public domain a legitimate one and can we use it? If so, to whom would credit be given? If a source is obscure or unknown, what does one use for credit line? Regardless of your concerns about Wikipedia, we can assure you that any picture of a Q Ship that was published before 1923 (which should cover all the WWI examples) is safely within the public domain.As for Wikipedia, the site typically provides public domain pedigree for its imagery.

For example, in the case of the photo of the Q Ship, used above, the Wikipedia page explains the origins as follows: "This artistic work created by the United Kingdom Government is in the public domain. This is because it is one of the following:

  • It is a photograph created by the United Kingdom Government and taken prior to 1 June 1957; or
  • It was commercially published prior to 1961; or
  • It is an artistic work other than a photograph or engraving (e.g. a painting) which was created by the United Kingdom Government prior to 1961.
  • HMSO has declared that the expiry of Crown Copyrights applies worldwide (ref: HMSO Email Reply)"
Is Wikipedia trustworthy? You'll have to make that call yourself but we tend to find that the information is accurate. And if it makes you feel any more secure, Wikipedia has made its way into many court decisions, and  the Trademark Trial and Appeals Board (TTAB) accepts corroborated evidence from Wikipedia as admissible in its hearings. In any case, even if the Wikipedia claims prove inaccurate, you have a decent claim (which can limit any damages from infringement) that you researched and relied on Wikipedia in good faith before proceeding.
Have you checked other public domain sources?  In case you haven't already checked it out, you may want to search through U.S. Government resources at the National Archives. For example, we found public domain footage, of a Q Ship available from this (or this) as well as formerly classified documents about Q-Ships. (You can navigate the types of media pretty easily at this site; the controls and filters are usually on the navigation bar on the left.)
Back to the trolls. Thanks to everyone for their kind support and comments on our recent troll posting. The little people appreciate it.

Wednesday, March 9, 2011

Is there copyright in rubber stamps?

Dear Rich: I struggled to create two logos to go along with names that I came up with for handmade and vintage items that I intend to sell through etsy. If I am successful on etsy, I might consider an e-commerce site of my own. The logos I created each consist of an image I stamped using a rubber stamp purchased at a national craft store chain and then adding my own text around the images. Even though I did not generate the images, can I use the images in my logos? And can I trademark them without infringing on the rubber stamp company's rights?
Before we answer, a note about trolls .... If you're a fan of trolls, like the Dear Rich Staff, this has been a tough week. First, there was the Charlie Sheen rants, then the FTC announced it was looking into patent trolls, and then to top it off, the Supreme Court agreed to hear a case that could cause the Danish trolls to get dropped back into the public domain (now, that would be so sad). Please take a moment to reflect on all the good things trolls have done for us and if you have time, go ahead and file an amicus in support of our little buddies.
Right, you had a question .... If the rubber stamp is protected under copyright law --  most are not, by the way -- you'll need permission from the copyright owner if you want to reproduce it in your trademark. The reason most stamps are not protected is that they consist of: (1) imagery published before 1923, (2) simple shapes or "generic" imagery, or (3) short phrases or single words. So like so many confusing things in copyright law, some rubber stamps meet the standard and some don't. You'll need to make your own analysis and our favorite choice for guidance would be Steve Fishman's Public Domain book (it walks you through the analysis and provides checklists).
What about licenses. Some companies seek to prevent you from using otherwise unprotectible stamp imagery under the guise of a license (sometimes mistakenly referred to as an angel policy or cottage license). These agreements are often not enforceable because the user is not presented with the license before purchasing. That's essential in order for you to agree to the terms or conditions (referred to commonly as a clickwrap agreement).

Tuesday, March 8, 2011

Can iPhone App Include Other Company Trademarks?

Dear Rich: I have an idea for an iPhone App that is a beginner's guide to an art craft. In this guide I want to write about different products that have different applications in this craft (such as types of paint for a watercolor artist). Does selling an artist material guide for the IPHONE infringe on trademarks of different products just by mentioning the name? Short Answer Dept. You're fine as long as you don't imply endorsement from any of the companies mentioned in your App. Wow, that was easy! Since we've answered your question so quickly and have all this space left, we wanted to let readers know that we're in the middle of a couple of exciting things. First, we've rediscovered tapioca pudding, and second we recently saw a feel good movie that, although it didn't make us feel that good, was kind of interesting from a legal POV.

Monday, March 7, 2011

Reselling Apple Products Double Redux

Dear Rich: I saw in a previous post you wrote in regard to a question from a person wondering if it was ok to resell Apple products; your response was, ‘yes,’ as long as they weren’t grey market, the logo wasn’t removed, and as long as you don’t pretend like you’re an authorized reseller. My question comes from some of the recent penny auctions I’ve seen selling the items at a discount so to speak: 1. How are they allowed to sell these products for a ‘discount?’ 2. How are they allowed to advertise these products? 3. The last item I won from these auctions actually was shipped to me from Amazon.com. Is it possible for these auction sites to legally advertise Apple products, have an auction for them, and then purchase them from Amazon.com and simply have them shipped to the winner? 4. If a person wanted to sell Apple Products that they bought from craigslist or ebay, could they start a business with ‘Apple’ in the name and not get sued? Such as, ‘Great Apple Products,’ and then open a website called GreatAppleProducts.com? When you're in the business of answering questions, like the Dear Rich Staff, you sometimes feel "used" when someone refers to "my question" and then asks four questions. So, give us a second to regroup. Actually we've written about reselling Apple products three times before: our classic post, our expanded classic post, and our "re-selling loaded iPods revised classic post. That doesn't mean we're tired of writing about the subject. So here's our take on your questions:
1. How are they allowed to sell these products for a ‘discount?’ There's no law prohibiting discounting unless a merchant has signed an agreement to fix pricing (which has to be carefully drafted to avoid antitrust laws). A merchant can even give iPods away for "free" although such offers are often considered a form of identity scam.
2. How are they allowed to advertise these products? See above. As long as the merchant doesn't break the rules set out in previous posts, the merchant can advertise the discount.
3. The last item I won from these auctions actually was shipped to me from Amazon.com. Is it possible for these auction sites to legally advertise Apple products, have an auction for them, and then purchase them from Amazon.com and simply have them shipped to the winner? 
If a merchant obtained an authorized copy by legitimate means (buying it from Amazon), the merchant is free to dispose of it any way that's legal.
4. If a person wanted to sell Apple Products that they bought from craigslist or ebay, could they start a business with ‘Apple’ in the name and not get sued -- for example ‘Great Apple Products,’ and then open a website called GreatAppleProducts.com? If you're selling applesauce and apple pie, you're probably okay with GreatAppleProducts.com, (just as the MAC cosmetic company can sell its cosmetics under a "Mac" domain name). But if you're selling Apple computer and software products under an Apple-ish domain name, you may run into opposition from Apple. Using Apple (or the name of an Apple product) in the domain name could imply that Apple is associated with or endorses your site (or that you are in some way authorized) giving the company a basis to pursue you for trademark infringement. Not saying that will definitely happen ... just sayin'.

Friday, March 4, 2011

Can I use fashion trademark in movie?

Dear Rich: Please if you could let me know about using the Barney's name (Barney's New York) in feature film and presenting some space as its office. The lead actress gets an offer to work for Barney's from one of the managers, plot goes into different direction, and from her actions we conclude that she doesn't consider Barney's offer any more. So if it's part of the plot at all, it doesn't have a strong point. I would appreciate if you could respond to my dilemma. Short Answer Dept. You're probably fine with your planned use (although you should ditch the apostrophe as it implies you are dealing with purple dinosaurs not the store's apostrophe-free trademark). As we've said before, filmmakers and screenwriters have a First Amendment right to talk about and reproduce trademarks in films. However, such uses may trigger a lawsuit if a displeased trademark owner believes that your film is confusing consumers--that is, filmgoers  mistakenly believe that Barneys New York endorses or is in some way associated with your film.
Creating the fake Barneys office. We believe your re-creation of the Barneys office is permitted under First Amendment grounds but that doesn't mean that you won't get hassled. As you know from reading our blog, there's a difference between being legally correct, and surviving the lawsuit that proves you're legally correct. Re-creating the office may trigger a wider range of objections -- for example, if you accidentally use a character with a similar name as a real Barneys employee in an unflattering manner, or if the film defames management or by implying that working conditions at Barneys violate the law in some way. An apprehension of a trademark's owner wrath can even kill a big-time Hollywood production. As our previous post pointed out, another  problem in situations like this is that if your film becomes a success, your distributors and festival producers may demand releases for these uses. Hopefully, if you're successful enough to obtain distribution, you'll also be able to afford the legal power necessary to acquire the necessary rights.

Thursday, March 3, 2011

Does travel photographer need property release?

Dear Rich: I have an opportunity to do some video work for a travel related website distributor. They want video tours of certain cities, highlighting the attractions. I was under the impression that I needed property releases from any property I depict in a video or photograph. Now I'm not sure. The video would have scenes of attractions such as museums, theaters, ball parks, amusement parks, bars, restaurants, casinos, etc. I will limit myself to shooting from public property such as sidewalks. I may also have people in these shots. Where would I stand? The client expects me to sign a contract saying I am responsible for obtaining all releases needed. In the U.S., if you're photographing from public property, usually no release is needed. There are two exceptions: structures such as statues and memorials that qualify as copyrightable works; and buildings that have achieved trademark status. You may not need to worry about either of these exceptions as we discussed in a previous post. If you're creating videos outside the U.S., you should review a principle known as Panoramafreiheit. As for the people in your videos, you're generally fine photographing people in public places as they have no reasonable expectation of privacy. Problems will develop if the website deliberately either: (1) makes these people appear in a bad light -- for example, the travel video has a section entitled "The Amsterdam Red Light District" and shows two tourists who do not work there; or (2) you use screenshots of individuals in a manner that makes it seem as if they are promoting the site -- for example, the website creates banner ads using screenshots of individuals seen in your videos.
Property Release. If you need to obtain a release, here's a standard property release (also known as a 'location release') from our book, Getting Permission. You can use this release for buildings that are copyright protected or are not viewable from public space.
Property Release

Wednesday, March 2, 2011

Can I post website comments in my book?

Dear Rich: What should I do to ensure that any emails I get related to my web site or blog are publishable, say, in a book? Is it enough to just say on the web site where I have my email address listed, that anything sent to me via email becomes mine, or must I only allow comments via the web site/blog itself, and only after the sender pushes a button at the bottom of some legal gobbledygook that says that I can use their comments? If someone has chosen to publish comments at your site, you may wonder why you now need permission to "repost" those comments in a book. Hasn't the commenter already consented to publication by posting? No, by posting the commenter has only granted an implied license to reproduce the comment at the site. Even without this implied consent, you may be able to reproduce some comments in your book under a fair use defense, or in the case of comments that are just a few words, by arguing that short phrases are not protected by copyright. But ideally, you want a consent before republishing in a book.
Gobbledygook dept. Copyright law requires that you have a written agreement granting you the right to publish other people's work and electronic agreements such as clickwrap agreements are fine (as long as the user consents before posting). At Nolo, where we work, where we make an effort to avoid gobbledygook, a statement such as "By posting this comment you are granting [website owner] the non-exclusive right to reproduce it online, and in print and digital publications," doesn't seem like gobbledegoo (as Sylvia Plath referred to it) to us. This notice should be posted prominently in the space where the user is posting so that publishing the comment acts as a form of "click-to-accept" agreement.  It's a good idea to save a screenshot of your site with the date you instituted the permission policy (and save a HTML version of the site as well).

Using screen names. You should be okay posting screen names as they don't identify the poster, but issues may arise when reproducing people's real names. If you want permission, you'll need to tweak your goobledegook (note the accepted alternate spelling) to state "... and you grant permission to reproduce the name (whether screen name or real name) used in connection with the posting of your comment."

Tuesday, March 1, 2011

He wants to use image from concert video

Dear Rich: I have some old Who videos from a concert about 35 years ago that I took one frame out of and made my own electronic art out of it. While what I created is quite different then the original frame, it is the foundation of my art picture that I am left with. If I were to hang that up or sell it, would I be violating copyright laws. It was from a very old concert and the frame that I used as a my foundation for what I created could have come from anywhere. And, if I am violating copyright, is it really enforceable and/or do you think it would be an issue with anyone if I were to sell this edited image? Short answer dept. No we don't think your use is likely to become a legal issue. As we explained in yesterday's entry, using a single still can constitute infringement though it's usually not likely to result in a lawsuit. The concert film is most likely protected under copyright law as the Who haven't been around long enough to trigger any of the traps that would drop the movie into the public domain -- for example, if it was published before 1964 and not renewed.
Fair Use Dept. It sounds as if you have the makings of a decent fair use argument (although we'd prefer if you didn't get embroiled in that type of dispute). Here's a link to compare your use to other visual arts fair use cases.
Staying out of trouble dept. Are you selling only a single print?  Problems are more likely to develop if you market the work in bulk. So if you're paranoid about being hassled, don't mass produce your prints.