Friday, April 29, 2011

Who Owns Copyright in Piano Arrangements?

Dear Rich: If a sheet music publisher wants to license my songs for a folio (a collection of all songs from an album), with the proviso that their particular, notated piano arrangements of my songs are being created as a work-made-for-hire for me, then can the sheet music publisher nevertheless claim copyright in the overall folio as a collection? Or to phrase my question a bit differently: Is the copyright in a collection a "derivative copyright," which I would have to expressly grant to the sheet music publisher? Speaking of sheet music, we recently downloaded sheet music from Appetite for Destruction by Guns N' Roses (the 11th best-selling album of all time) from Wow, the world has come a long way. We can't prevent world hunger or predict earthquakes but we can get the guitar tabs for Welcome to the Jungle in a few keystrokes. Yea!
Right, you had a question. We're going to assume that you granted the sheet music publisher exclusive rights to publish the portfolio. In that case, the publisher (as exclusive licensee) is considered the “copyright owner” of that collection of sheet music and has the right to register the collection and to file an infringement action in court to stop a rival sheet music publisher who rips off the portfolio. In reality, the rights acquired by the copyright owner are narrow because the sheet music publisher doesn't own copyright in the songs or their arrangements -- that's yours. What the folio publisher owns is the equivalent of a "thin copyright" -- a work that contains limited copyrightable subject matter. The key to the publisher's ability to claim its copyright is that the license you granted is exclusive. A non-exclusive license won't cut it.
Do you have to expressly grant a derivative copyright? No, not exactly, but you do have to grant the exclusive license which automatically gives rise to the publisher's ability to register its rights and pursue thieves. The agreement may also modify the rights and relationships of the two parties. So, you could request that if the publisher is going to go after someone that you be notified immediately so that you can also pursue the infringers as well. You can also request to be asked to be named on any copyright filings and of course, once the license ends, all rights revert to you.

Thursday, April 28, 2011

How Do I License Information Designs?

Dear Rich: I have created several information designs in the past few years in the hope of seeing them improve commercial communication. I have the additional hope that they could be licensed and generate a little royalty. Is there a company like the Copyright Clearance Center which might work for me? Do I have to PAY a lot up front, especially to an attorney? We think we have a rough idea what information design is all about and we assume that you're talking about licensing specific information design works (for example, things like this or this) and not the underlying tools, elements or processes used to create your designs. These types of works could possibly be licensed through CCC under their RightsLink program (which does not require an attorney's help.) (And of course, you would need to provide a format that contains the various works -- a website, book, or other collective work -- to enable the viewing of your works.)  Organizations such as CCC will manage license arrangements and collect fees but they don't actually bring in the licensing customers. That's still your obligation, either via web traffic or old-fashioned solicitations. To that extent, if you can find licensees on your own, you probably don't need an organization's services and can license directly to customers. You can find plenty of examples of license agreements at Nolo's website or through other sources.

Wednesday, April 27, 2011

Does Downloading MP3s Trigger Public Performance Payment?

Dear Rich: In your Getting Permission book, when you discuss digital download permissions for MP3s, you write that "Music publishers currently seek to get paid in two ways (referred to as “double-dipping”), once for the reproduction of the MP3 file and again for the transmission of the file over the Internet." I thought that they could only get paid for the downloads. You're right. The statement in the book is outdated. In a 2007 decision, a federal court held:
"Although we acknowledge that the term “perform” should be broadly construed [cite omitted] we can conceive of no construction that extends it to the copying of a digital file from one computer to another in the absence of any perceptible rendition. Rather, the downloading of a music file is more accurately characterized as a method of reproducing that file."
It's true that music publishers are still seeking to get paid both ways and that they petitioned Congress to revise the copyright law accordingly. But their desires have not yet been transformed into law and we'll report if and when things change.

Tuesday, April 26, 2011

He Needs Poets' Permission for Choral Work

Dear Rich: I am a professional composer and I am looking to gain the text permissions from several authors for use in a commissioned choral composition I am writing. The author's works are found in a book entitled Earth Prayers, published by HarperCollins Publishers. The work I am writing has been commissioned by The Bucks County Choral Society. The authors are as follows; Wendell Berry, W. E. B. DuBois, Joyce Fossen, and Stephanie Kaza. I am comfortable with the fact that I may not be able to get any permissions from these authors. The DuBois permission I am sure would be through some estate. Since Berry is still alive and his poetry is widely published, he may deny permission as well. He may not even like music, though I cant imagine that. I just would like the chance to ask him. Joyce and Stephanie, I am not sure of. My initial research of their works online have yielded little results. The Dear Rich Staff wishes you well and hopes you don't run into the kind of problems faced by composer Eric Whiteacre (but if you do, there's always crowdsourcing). As for your permissions:
  • It's possible that some (if not all) works by W.E. DuBois (above) are in the public domain. DuBois lived from 1868 to 1963. Any works of his published before 1923 -- for example Darkwater: voices from within the veil (published in 1920) -- are in the public domain. And all works published before 1964 were subject to renewal; most works were not renewed. Many of DuBois' works written after 1923 have been the subject of multiple copyright claimants, a strong sign that these works are either in the public domain, or that nobody is pursuing rights. You can check these details further by searching Copyright Office records. 
  • Stephanie Kaza appears to retain copyright in her work, at least according to Copyright Office records. So, you could start your search for her by checking with her most recent publisher Shambhala. They published her recent (2005) work, Hooked! Buddhist writings on greed, desire and the urge to consume. 
  • We love Wendell Berry (especially his recent book, Remembering).You should probably start your search through his current publisher, Counterpoint, which maintains the Wendell Berry website.
  • We located Joyce Fossen in the Copyright Office records and if it is the poet you're seeking, she appears to have passed away in 1989. The copyright claimant for her work is a George J. Fossen and we imagine he would be the person to contact for permission (although we have no way of locating that information).

Monday, April 25, 2011

Does Copyright Office Check for Conflicts?

Dear Rich: Are works submitted for copyright protection automatically registered, or does the copyright office check for conflicts before registering submitted materials? Unlike when you file for a patent, or a trademark, there is no "similarity check" when filing for a copyright registration. (Don't worry, we won't bore you with a long explanation as to why that is.) When an application arrives, the Copyright Office checks: (1) that the application is complete -- that is, all of the parts are there, (2) that there are no obvious errors in the application (see below), and (3) that the work being registered is appropriate "subject matter" for copyright. The best way to get an idea of what matters to the Copyright Office and whether an error has been made in the application is to review the Copyright Compendium II, the 'rule book' for Copyright Office examiners. In addition, these internal rules overlap with 37 C.F.R. Sections 201-202 (the Code of Federal Regulations). By the way, the fee for filing a paper application has risen from $45 to $50. The fee for electronic filing is still $35.

Friday, April 22, 2011

How Do You Apportion an Infringer's Profits?

Tell It To The Hand. Today’s inspirational quotes by Learned Hand:
“We may win when we lose, if we have done what we can; for by so doing we have made real at least some part of that finished product in whose fabrication we are most concerned: ourselves.”
“To be pulled in many opposite ways at once results negatively, but it is not the same thing as to feel no impulse at all. An ass between two bales of hay is said to have died of starvation, but not from indifference.”
“[L]life is made up of a series of judgments on insufficient data, and if we waited to run down all our doubts, it would flow past us.”
“The spirit of liberty is the spirit which is not too sure that it is right; the spirit of liberty is the spirit which seeks to understand the minds of other men and women; the spirit of liberty is the spirit which weighs their interests alongside its own without bias; the spirit of liberty remembers that not even a sparrow falls to earth unheeded”
The last quote comes from a 1944 address given to a small crowd in Central Park. The speech was reprinted in Life, Reader’s Digest, The New Yorker and many newspapers. It struck a tone of tolerance that reverberated around the country and brought Hand unexpected attention and celebrity from the non-legal world.

Edward B. Marks Music Corp. v. Jerry Vogel Music 1 and Edward B. Marks Music Corp. v. Jerry Vogel Music 2. In 1907, the Edison Company released a performance of The Bird on Nellie's Hat. It was co-authored by Edward B. Marks and written in the 1890s. Marks also co-authored a song, “December and May.” In the early 1940s both songs became intertwined in a dispute that resulted in two separate lawsuits. One suit was about who had renewal rights to “December and May” and the other was an infringement action over “The Bird on Nellie's Hat.” In the latter, the defendant (the author of the infringing song) argued that both co owners (not just Marks) must sue him in order for the case to go forward. Judge Hand disagreed. He established the important legal principle, that either co-owner of copyright may bargain for, or litigate rights regarding the copyright, provided that the other co-owner receives an equitable interest in the results of the bargain or lawsuit. In the second case, Hand established that the same co-authorship principle applied for renewal as well -- that is, either co-owner may file the renewal of a copyright and that renewal benefited both co-owners, not just the co-owner who files the renewal.

Sheldon v. Metro-Goldwyn Pictures Corporation 2Yesterday we discussed a case involving a Joan Crawford film, Letty Lynton, that infringed a play, Dishonored Lady. After resolving the issue of infringement, the case returned to the Second Circuit Court of Appeals and Hand again wrote the opinion. This time around the dispute was over how much MGM had to pay in damages. Until that time, the courts had taken the 1909 Copyright Act at its literal word; it stated the prevailing plaintiff in an infringement action was entitled to all of the defendant’s profits derived from the infringement. This was how the district court ruled and MGM appealed, claiming that only those profits attributable to the use (or portion of use) should be owed. Judge Hand acknowledged the difficulty in apportioning profits from a movie:
“Strictly and literally, it is true that the problem is insoluble. The profits from a picture consist of admission fees, which the playgoers pay because the picture attracts them with the hope of enjoyment. That enjoyment, which is one source of its further popularity, is made up of many factors: the actors, the work of the producer and director, the story, the scenery and costumes. The attraction and the hope which first draws them are principally aroused by advertisements, and the reputation of the stars and the producing company.”
Despite the difficulty, Hand jumped in to the fray and after deducting certain MGM expenses, discounting expert accounting opinions, and apportioning a reasonable value to the use of the material from Dishonored Lady, he determined that the owners of the play were entitled to one-fifth of the film’s profits. In this decision, Hand ended the era of “all profits to the winner” and set the modern standard for copyright damages still used today. Although other judges have advanced theories of damages, Hand’s analysis is still considered the gold standard.
The Complete Hand. We've said a lot of nice things about Learned Hand during the past week but we’re not trying to paint him as a saint (can an agnostic be a saint?). There are a few eccentricities to report as well.  Hand did not believe that the Bill of Rights should be considered “law” but merely "admonitory"principles. (He also advocated for the removal of the due process clauses from the Constitution and -- though strongly in favor of equal rights -- he criticized the Warren Court for its legal basis for striking down state segregationist laws.) He was a melancholic, highly self-critical and despised his own ambitions. When FDR failed to appoint him to the Supreme Court, he confided, "It was the importance, the power, the trappings of the God damn thing that really drew me on.” We’ve also seen he was a bit of a curmudgeon when it came to popular culture as evidenced by his distaste for Hollywood movies ("trivial"), comics ("silly pictures"), and popular music ("treacle"). But none of that means much compared to his accomplishments. This was, after all, the man who saved the Wright Brothers' patents and Superman's copyright. No fear of flying here. Thanks, Judge!

Thursday, April 21, 2011

What is "Original" under Copyright Law?

Tell It To The Hand! In 1910, one year after being appointed as a district court judge, Learned Hand issued an injunction preventing the French aviator Louis Paulhan from making flights within the U.S. At issue were patents for the airplane’s rudder, owned by the Wright Brothers. The defendant argued that the flying machine's rudder was not novel. Judge Hand disagreed, dryly noting mankind's previous difficulty in becoming airborne.
"The number of persons who can fly at all is so limited that it is not surprising that infringers have not arisen in great numbers."
Responding to the issue of whether the rudder was novel or obvious at the time of its invention, Hand said:
“Many great inventions are of this character, and the reason why the ordinary man does not discover them although they are so plain when some one else has done so is that habit has limited his power to see what he has not been accustomed to see, and his selective attention is fast bound by his past experience.”
Two for One. In an effort to further drive down our dwindling readership, we’re going to include two of Hand’s copyright decisions today, both discussing the standard of originality.
Arnstein v. Edward B. Marks Music Corp (1936) This case is the first of five lawsuits for copyright infringement brought by songwriter Ira Arnstein over a ten-year period, most of them based on a semi-paranoid notion that famous songwriters (or their agents) had stolen Arnstein's songs by various nefarious means (including breaking into his apartment). Although not labeled as a vexatious litigant (the term hadn’t been invented then), one judge did chastise Arnstein for his “persecution mania.” (The last of the Arnstein cases was brought against Cole Porter and set the standard for summary judgment in copyright cases.) Several of the Arnstein cases are described in detail here, along with relevant sound clips.
In Arnstein v. Edward B. Marks Music Corp, Arnstein believed his melody for “I Love You Madly” had been stolen and used in defendant’s song, “Play, Fiddle, Play.” The similarities apparently were driving Arnstein mad, as he stated under oath, "I was desperate. I heard my song being played everywhere, and I was starving. I was out of my mind and might have committed murder.” Arnstein lost at trial and on appeal, he used various means to attempt to show similarities between the two songs. Alas, he misjudged Judge Hand’s knowledge of musical composition. Hand wrote:
"The second phrase of the chorus has no resemblance whatever to the next phrase of the song, but if one takes some notes of the treble in the accompaniment, moves them to the melody, raises them an octave, and cuts short the resulting melodic phrase, an identity can be made to appear. When the two songs are played the phrases show no resemblance, at least to the untrained ear. To a mind already set to find piracy, this of course seems proof strong as Holy Writ, but it is really of no significance.”
In truth, Hand did not have much affection for either composition – he referred to the lyrics of the defendant’s work as “the kind of treacle which passes in a popular love song” -- and believed pop music was an arbitrary and unpredictable business. After demolishing the plaintiff’s claims, Hand observed, “Success in such music as this is by no means a test of rarity or merit; it is a commonplace that the most experienced are usually unable to tell in advance what will hit the public fancy and what will not. Were it otherwise much waste could be avoided.”

Sheldon v. Metro Goldwyn Mayer (1936). The owners of the play, Dishonored Lady, sued the makers of the movie, Lettie Lynton, for infringement. Both works were based on a true story about a Scottish woman who was accused of poisoning her lover. The trial judge had determined there was no infringement, perhaps influenced by the fact that none of the play’s dialogue had been lifted. Judge Hand reversed:
“The play is the sequence of the confluents of all these means, bound together in an inseparable unity; it may often be most effectively pirated by leaving out the speech, for which a substitute can be found, which keeps the whole dramatic meaning. That as it appears to us is exactly what the defendants have done here; the dramatic significance of the scenes we have recited is the same, almost to the letter. True, much of the picture owes nothing to the play; some of it is plainly drawn from the novel; but that is entirely immaterial; it is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate.”
Hand continued with a statement familiar to most students of copyright:
"If by some magic a man who had never known it were to compose anew Keats's Ode on a Grecian Urn, he would be an "author," and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats's."
In other words, copyright does not protect against similarities, it protects against copying. The Sheldon case also led to another important copyright standard known as the Sheldon Rule, and we’ll discuss that in tomorrow’s final entry. Thanks Judge.

Wednesday, April 20, 2011

At What Point Does Copyright Protect a Plot and Its Characters?

Tell It To The Hand! Some facts you probably didn't know about Judge Learned Hand:
  • his first name was Billings (ideal for a lawyer), 
  • he was friends with the artist Maxwell Parrish (and his wife posed for one of Parrish's paintings), 
  • he considered himself a melancholic (and "hopelessly hypochondriac"), and
  • he was the godfather of J.D. Salinger's daughter, Peggy.
The Salinger Connection. Salinger and Hand, neighbors in Cornish, New Hampshire, were close friends. Salinger considered Hand a "yogi" and according to J. D. Salinger: A Life by Kenneth Slawenski, Hand's relationship with Salinger was perhaps the "fullest he had enjoyed." The men shared an intense interest in spiritual topics, and Salinger confided in Hand about his wife Claire's loneliness. Slawenski writes:
"Sadly, both men were enmeshed in troubled marriages, a fact both painstakingly concealed from others. Perhaps most important, both Salinger and Learned Hand suffered from periods of deep depression, a penchant towards melancholy that fused them together in a way unique to such sufferers."
Salinger wrote to Hand regularly and those letters were among the many paraphrased in a biography of Salinger by Ian Hamilton in the 1980s.  Salinger sued over Hamilton's paraphrasing of his letters and an appeals court ruled against Hamilton, relying on a Learned Hand case, Nichols v. Universal Pictures, as precedent.
Nichols v. Universal Pictures (1930).  Abie's Irish Rose, a corny tale of interfaith marriage, had been one of the longest-running shows on Broadway (inspiring playwright Lorenz Hart to pen the couplet: "Our future babies we'll take to Abie's Irish Rose -- I hope they'll live to see it close.") Despite a critical drubbing  (Robert Benchley said, "People laugh at this every night, which explains why democracy can never be a success.") the play was a huge hit and and like all hits, inspired imitators including the motion picture, The Cohens and the Kellys. The owners of Abie's sued for copyright infringement.
Abie's and The Cohens shared similarities: both plots involved children of Irish and Jewish families who marry secretly because their parents are prejudiced. At the end of each work there is a reconciliation of the families, based upon the presence of a grandchild. Beyond that, the works had little in common except for some ethnic cliches. The challenge in assessing this type of infringement is how to measure nonliteral similarities -- that is differences other than verbatim copying.  Learned Hand's visionary analysis demonstrated a deep understanding of the creative process:
"Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended."
In other words, the premise of a film -- say Boy-Meets-Girl-Boy-Loses-Girl-Boy-Gets-Girl -- is never protected but the fully expressed plot -- say, When Harry Met Sally, can be protected. And the same is true for the characters within a play. Hand wrote -- in what was to become one of the most quoted statements in copyright law:
"If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare's "ideas" in the play, as little capable of monopoly as Einstein's Doctrine of Relativity, or Darwin's theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly."
We don't want to belabor the point  -- though we are lawyers -- but Nichols was the breakthrough that enabled judges to assess and compare narrative works built around similar underlying ideas. Although it is true that wherever Hand's line of abstractions is drawn, it may seem arbitrary, "that," as the judge stated in Nichols, "is no excuse for not drawing it." Nichols has been cited in over 1,900 cases and its precepts have been borrowed for legal theories affecting software and websites. Thanks Judge.
P.S. Bridget Loves Bernie Dept. The unprotectible plot premise discussed in Nichols was resurrected in the 1972 TV show Bridget Loves Bernie. Oddly, an Irishman named David Birney played the Jew, Bernie, who married his co-star in real life. Sadly, the network dumped the show after one season  - even though it was in the top five for ratings -- reportedly because the networks had so many complaints about interfaith marriage. Go figure.

Tuesday, April 19, 2011

Saving Superman

Tell It To The Hand! More on the Reiss case. Yesterday we mentioned that James Joyce's Ulysses was released within a year of Judge Learned Hand's decision in the Reiss case. What we forgot to mention was that 13 years later, Judge Hand was on a three-judge panel that ruled that Ulysses was not obscene. The decision was written by Augustus Noble Hand, Learned's cousin, also a federal judge. (The third judge on the panel dissented, making this a two-Handed decision.) The cousins apparently shared an expansive view of the arts. Augustus wrote: "Art certainly cannot advance under compulsion to traditional forms, and nothing in such a field is more stifling to progress than limitation of the right to experiment with a new technique." Here here!
The L-Man Goes to Hollywood.  In the mid-1930s, Learned Hand visited Hollywood and watched a movie production. He later wrote of his experience for the Harvard Alumni Bulletin:
"Who could resist the inspiration of the magic by which light and sound were converted into some other essence, instantaneously transported, and made permanent upon a tiny celluloid strip? When one reflected upon the years of devotion and ingenuity, of seething imagination, and of patient verification which lay behind these results, it seemed an honor merely to be one of a species which could do such things."
As much as he appreciated the 'medium,' he was baffled at the 'message,' and considered most popular films to be "tawdry, trite, dreary, and childish." He asked:
"Of what value is it to scale the heavens, to descend to the bowels of the earth, to practice alchemy and all the necromancer's art, if the end were to be so pitiful as this?" 
Good question L-Man and we're only glad that you didn't live long enough to see Jersey Shore. 
National Comics v. Fawcett Publications, Inc. Learned Hand was no fan of comics (he viewed the Superman strips as "silly pictures" -- a view shared by cousin Augustus who, in another case, referred to these comics as "poor thing but mine own") but Hand influenced copyright law and modern culture when he pulled Superman from the public domain. It was 1952 and the legal battle between Captain Marvel and Superman had been going on for such a long time (12 years) that the super hero stories seem to have become intertwined (Was Lex Luthor a copy of Marvel's villain Dr. Sivana or vice versa?) The previous year, Captain Marvel had triumphed at trial -- not because he was original (the trial court ruled that he infringed Superman) -- but because Superman's owners had failed to include proper copyright notice on several strips. Under the 1909 Copyright Act, if you failed to include proper notice, you lost copyright. So, U.S. copyright law had done what kryptonite could not -- dooming the Man of Steel to an unprotected life in the public domain.

Poor Thing But Mine Own. As a general principle, Hand believed that technical pitfalls should not trump personal rights. In National Comics, Hand was able to combine that precept with a copyright principle he had pioneered two decades earlier in Nichols v. Universal Pictures (which we'll talk about  later this week). In Nichols, Learned Hand introduced the then-revolutionary idea that a character within a work could achieve copyright protection separate and apart from the underlying work. Learned Hand reversed the trial court and in a wise bit of judicial surgery, held that the improper notice only doomed certain Superman strips to the public domain, not the Superman character. He wrote, "The absence of any notice, or the affixing of an imperfect notice, upon one strip had no effect upon the copyright upon another strip depicting a different exploit."

Bare-faced infringers. Hand's decision prevented a "bare-faced infringer" (Captain Marvel) from profiting and prospering because of a technical forfeiture. (Hand later took this approach even further in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., his final copyright decision where, in a flash of judicial activism, he prevented a fabric design from falling into the public domain because of a lack of notice.) When Hand decided National Comics, the United States was the only country in which copyright was forfeited if no notice was provided. In that sense, National Comics was 40 years ahead of its time.  In 1989, the U.S. gave up the ghost when Congress changed the law and ended this unjustifiable requirement. Thanks Judge.

Monday, April 18, 2011

Are Incomprehensible Words Protected Under Copyright?

Tell It To The Hand! We decided to celebrate our fourth year on the Internets by discussing five great copyright decisions by Judge Learned Hand. Yes, we know many of you have pressing questions (and we promise to get to them soon) but they'll have to wait while we finish our tribute to the most Zen jurist ever to sit on the federal bench.  ("Life is not a thing of knowing only," he once said. "Mere knowledge has properly no place at all save as it becomes the handmaiden of feeling and emotion.") And we have to love a federal judge who wanted every courthouse and church entrance emblazoned with Cromwell's words, “I beseech ye in the bowels of Christ, think that ye may be mistaken.” The L-man's advantage in copyright law (and the reason why he could redirect that law into the 21st Century) was because he understood (and was in awe of) the creative mind. Ennyway, the proof's in the pudding.
Reiss v. National Quotation Bureau, Inc. Learned Hand decided Reiss in 1921, a remarkable year for the arts -- Picasso's Three Musicians debuted as did Mondrian's Red, Yellow, and Blue, and Eubie Blake was having a hit with his ragtime jazz piano roll for I'm Just Wild about Harry. Within a year of the Reiss decision, James Joyce would publish Ulysses.
In Reiss, a man had published a book of 6,325 “coined” or nonsense words that could be used as a secret code by telegraph operators (who would assign private meanings to the meaningless words). A publisher copied the code words and when sued, defended himself by arguing that copyright could not protect the book because the code words had no "meaning." Judge Hand established a principle that we now take for granted: copyright law does not impose a standard of comprehension on works of authorship. Like Picasso, Mondrian, Blake and Joyce, Hand understood that the narrative sensibility (whether in stories, imagery or music) was no longer essential, if it ever was.
"I see no reason why words should [not be protected] because they communicate nothing. They may have their uses for all that aesthetic or practical and they may be the productions of high ingenuity or even genius." 
The code words, said Hand, were like "an empty pitcher" in that they had a prospective meaning, but as yet had not received it.
"Not all words communicate ideas; some are mere spontaneous ejaculations, some are used for their sound alone, like nursery jingles, or the 'rhymes of children in their play. Might not some one, with a gift for catching syllables, devise others? There has of late been prose written, avowedly senseless, but designed by its sound alone to produce an emotion. Conceivably there may arise a poet who strings together words without rational sequence - perhaps even coined syllables - through whose beauty, cadence, meter, and rhyme he may seek to make poetry."
Fifty-seven years after Reiss was published, it became a cornerstone for protecting computer code; it was used by the CONTU Commission to validate protection of computer code, and served as precedent for the seminal case protecting operating systems and object code.  Thanks Judge.

Friday, April 15, 2011

When is A Digital Photo Copyright Notice Valid?

Photo Week #5
Dear Rich: How do I add a copyright notice to a digital photo? I don't want a watermark or anything that appears on the image. If I embed it, is it still valid? Wow, The Dear Rich Staff loved working on Photo Week and we can't believe it's already over. Look for more exciting theme weeks soon.
Right, you had a question. A valid copyright notice is one that should be applied on all visually perceptible copies in a manner that, according to the Copyright Office, "gives reasonable notice of copyright." The notice should be permanently legible to an ordinary user of the work under normal conditions of use and should not be concealed from view upon reasonable examination. (Also, keep in mind that since March 1, 1989, copyright notice is not required on published photographs. Before that date, you could lose copyright if it was left off published copies.)
If it's not required, what good is notice? Notice serves a couple of purposes: it alerts everyone as to your copyright, and it prevents someone from ripping off your photo and later claiming they didn't know it was protected (an "innocent infringement").
So what works? If you're posting photos on a website, you can include notice on each photo -- usually accomplished by creating a "copyright notice layer" in Photoshop (and flattening a version of the image) before posting. That pre-flattened layer can be easily removed from the photo in the event you license it. Alternatively, you can include a notice near the photo or on a separate page like this.
What about metadata? A copyright notice that is included in a photo's metadata -- information that travels with the photo file but is not visible when looking at the photo -- probably does not provide valid notice since it's not visually perceptible when looking at the photo. However, we recommend that you include that information in your photo file (or using an invisible digital watermark) as that can sometimes be the key to proving infringement. (We explain how to do it below.) To include it in your metadata, you need to save copyright notice with your photo file. If you're using Photoshop (or probably any other photo editing program), you can enter metadata by going to File Info, or File Properties, (depending on your version) and entering the information as shown below. Photoshop even allows you to link to a web page where you can provide more information about copyright ownership.

Today's public domain photo: an 1853 "occupational daguerreotype" of a seamstress, part of a PD collection, "America's First Look into the Camera: Daguerreotype Portraits and Views, 1839-1864." 

Thursday, April 14, 2011

Should I Sue for Copyright Infringement or Breach of Contract?

Photo Week #4
Dear Rich: I still haven't been paid for some photos I did for a local car dealership. They're using the photos online and in advertising. I have a signed contract. Is this infringement?  It's not likely to be considered copyright infringement. That's because the judge, with some exceptions, would consider your case as a contract dispute, not a copyright dispute (a common legal toss-up). In other words, the car dealership has acquired the contractual right to use your photos; they just haven't paid you. So the battle isn't over your rights under copyright law; it's about rights under contract law (as in this case). That may not be so bad because your contract may provide for attorney fees or for dispute resolution such as arbitration -- money-saving provisions that might not be available to you under copyright law. If you did sue, you would be doing it in your local state court, not your local federal court. You could even file it in Small Claims Court if the amount you are seeking is within the court's jurisdiction. However, before filing the suit, you should probably send the car dealership an official demand letter and then give them 30 days to correct their failure to pay (or "cure") the contract.
Today's public domain photo: by Robin Waserman, a 2009 picture of two Emperor penguins near Ross Island, Antarctica, part of the National Science Foundation's free photo library.

Wednesday, April 13, 2011

Can I Prevent My Photos From Being Modified?

Photo Week #3
Dear Rich: I sold some Italian street photos to an ad agency and they Photoshopped two of the streets together in one photo for an ad. What can I do to prevent things like that? It all depends on the sales agreement. If you sold (assigned) the copyright with no strings attached, the new owners (the ad agency) can do whatever to the photos. If you want to prevent those types of modifications, your agreement would prohibit any modified (or derivative) versions unless approved by you. Alternatively, if your agreement provides for a photo credit, you can also request the right to remove your credit if you don't like the result.
Bargaining Power. Asking for approval and removing credit sounds fine but practically we doubt whether many photographers have the bargaining power to get these provisions. Of course, it doesn't hurt to ask. But in a world in which companies want to own everything, photographers usually have to give up on approvals, etc. (That's not always the case outside the U.S. where artists have moral rights.) By the way it's easier to prohibit modifications if you license the photos -- this article explains the difference between assignments and licensing.
Today's public domain photo: by Ansel Adams, a 1943 image  of children at Sunday school class at the Manzanar Relocation Center in California. (You can see more of these Ansel Adams photos here and here.)

Tuesday, April 12, 2011

Why Can't I Take Photos in Court Room?

Photo Week #2 
Dear Rich: I want to photograph an empty courtroom but the people at the courthouse told me photographers weren't allowed unless a judge approved it. I just want to photograph the court room, not the people.  It's possible that the courthouse personnel mistook your request. They may have thought you wanted permission to photograph during a business day or trial. That's a matter usually left up to the judge. Otherwise, the regulation of photography within government buildings is determined by the relevant city, county or state government (as discussed yesterday). Alas, taking photos of public buildings is sadly over-regulated in a post-9/11 world. You need to find the local public official who can grant permission -- often indicated somewhere within the local rule or permit requirement.
Today's public domain photo: by Ann Rosenera, is a 1943 image  of California shipyard workers on the ferry to the Richmond Shipbuilding Company yards.

Monday, April 11, 2011

Photo Permits and Public Property

Photo Week #1
It's our annual Photo Week Celebration in which we answer questions regarding photography.
Dear Rich: I am an amateur photographer and have taken photographs of many public places within the city in which I live (e.g. parks, beaches, statues and other public works, buildings, streets). I compiled these photographs for an advertising campaign that I wanted to start of which the photographs would be used for commercial purposes. Now I find that a city issued permit is needed to commercially photograph, anywhere in the city. According to one city website, photographs cannot even be compiled, as part of a commercial portfolio without first getting a permit from the city, even if these photographs are not being sold. My questions is this: My registration for copyright at the copyright office is now in progress (although temporarily delayed at my request). Can I be penalized or fined by the city if my photographs are registered and made public (published) by the copyright office? Also, can I be sued for infringement if some of the photographs that I had taken and sent into the copyright office were of statues and other publicly displayed art works and buildings (which I now realize, may have been copyrighted by the artists). Start with the principle that a "permit law" created by a local government will have no effect on your ability to copyright your photos. Any permit law that attempts to limit your right to claim copyright would be preempted by federal law. In other words, even if the law says stuff about copyright, it would be invalid if challenged in court.
What's up with permit laws? Many cities and counties have permit laws for commercial photography and they're all pretty similar -- here's what Miami's law looks like. These laws require permits when shooting commercial photography in order to limit the impact of photo shoots on the public and to require  insurance in case someone is injured during the shoot. As this article points out,  the definition of commercial photography in these regulations is usually vague, so that a photographer who is not acting commercial -- working with models, props, crews, vehicles, or closing down traffic -- can usually manage without a permit.
Will the city chase you after the fact? It seems unlikely that a municipality will chase a photographer after the fact -- more likely if an incident occurred during the shoot. As for statues and public art, that's a different matter and we've discussed this issue previously (check out one recent example). That type of dispute involves the copyright owner and the photographer (not the municipality).
Today's public domain photo: from the U.S. Dept. of Agriculture photo website,  a 60-minute-old agar plate culture from an air sample taken in a caged layer room of birds infected with Salmonella enteritidis.

Friday, April 8, 2011

Copyright and Trademark Issues for Expansion Pack for Game

Dear Rich: I read with interest your post "Do Not Pass Go: How to create non-infringing board games" and I have a related question regarding expanding existing games. I have created an expansion for a popular board game. I do not use any of the original game trademarks in my naming or design, and I don't replicate any of the original game's physical, visual, or textual elements. Can I legally market my game? You may be legally correct in what you're doing -- that is, you're not infringing any copyrights, trademarks, or patents of a famous board game -- but if the board game company perceives your work as chipping away at their potential revenue or trading off their famous trademarks they may sue first and ask questions later. Why is that?
Inside the mind of a board game executive. Perhaps it would help to imagine what happens if you put yourself into the mind of someone at the legal department of a big toy and game company ... for example, Mattel. Fade in on your office. You sit behind your desk, sipping a chai latte and looking at the framed posters of Chatty Cathy, Barbie, Tickle Me Elmo and several Hot Wheels vehicles while you sneak time to work on your screenplay. You quickly switch screens as your boss comes into your office to show you a print-out from a website. It's an expansion pack product for a Mattel board game. Your boss -- pleasant enough in the office, but a tough cookie in licensing negotiations -- says, "Memo Me Elmo" which means you better come up with a good legal theory for going after these guys because after all, this is business, and Mattel wants to earn any and all revenue resulting from the success of its games.
Your memo. You know there are a few legal cases related to these issues and you know that Mattel will have a legitimate claim against the expansion pack maker only if: (1) the game company can demonstrate that consumers are likely to believe that the expansion pack is endorsed by, affiliated with, or commercially connected with the game; (2) the game company can demonstrate that the expansion borrows enough copyrightable elements from the board game such that it is a derivative under copyright law; (3) the expansion pack somehow dilutes or tarnishes the trademarks of the famous board game. You study the advertising for the expansion pack at the website and look for references to your famous game's trademarks and then you buy a copy to examine the expansion pack in detail. A few weeks later, your boss directs you to send out a cease and desist letter. Fade out on legal counsel.
Takeaways.  Even if the law is on your side and your expansion packs may be legitimate products (subscription required), turf-protection by game companies may hinder or slow down your ability to get to market. We hate to stifle your creativity but you'll notice that the case law we cited was between well-heeled businesses able to take each other on. Otherwise, you'll be flipping through Yelp looking for an attorney.

Thursday, April 7, 2011

Can We Name Our Non-Superman Movie After Superman Villain?

Dear Rich: I'm stumped here. I'm doing a title search for a client and their film is the name of a superhero villain in the Superman series and has nothing to do with this superhero. Is this kosher? We can't tell you whether you will violate Jewish dietary laws, but we can tell you that you may trigger a battle over intellectual property and free speech laws. Most likely your use will be permitted under first amendment grounds -- assuming that consumers are not likely to associate your film with the Superman franchise. If Superman's owners believe consumers will be confused or that their mark will be diluted-- in other words, you're causing their franchise to lose value -- they'll sue. (Superman's legal posse is not shy about litigating; they have gone after everything from reversionary rights to kryptonite).  These battles between First Amendment and trademark rights can be expensive. Mattel battled to keep Barbi's name out of a pop song (and lost) and Dairy Queen battled to keep the name out of the title of a movie about beauty queens (and won). The issue is discussed at length in this article (subscription needed). So, even though the law might favor your right to use the name, your film's insurers and backers may not want to risk the distraction of a legal battle.

Wednesday, April 6, 2011

The Lawyer Who Invented Copying

Wow are we annoyed! We missed celebrating Chester Carlson's 100th birthday last month. Oh well. Here's an article we recently wrote about  one of the coolest inventors ever.
Snazzy inventions aren’t just for science geeks and movies about time travel—they also changed the way that law offices did business in the twentieth century. The ballpoint pen made it easier to sign contracts, by eliminating attorney’s fountain pens and inkwells. Post-Its made it possible to flag legal errors and provide handy “sign here” notes. Liquid Paper enabled secretaries to make corrections (instead of retyping whole briefs), the Rolodex simplified keeping client information, and, of course, Scotch tape enabled lawyers to tape together legal bills after clients ripped them to shreds.
But one invention—the Xerox 914—turned out to be the most profitable device to drop into the law office. And surprise, surprise, it was invented by an attorney.
Like many people who worked with legal documents, Chester Carlson was frustrated by inefficiency. Back in the early 1930s before he became a lawyer, Carlson worked in the patent department of Bell Laboratories. He quickly tired of copying patents using carbon paper. The reproductions were time-consuming and prone to errors. (For those too young to remember, copies used to be made by jamming sheets of carbon paper between sheets of paper, stuffing them into a typewriter, and typing firmly enough so that the carbon made imprints—then swearing up a storm if there was a typo.)
At about the same time, Carlson’s hypercritical mother-in-law moved into his apartment. To avoid her unpleasant nightly tirades, Carlson enrolled in law school. While hand-copying passages from law books one night, Carlson again ran into the same frustration. Why wasn’t there a simple method of reproducing copies on paper? Carlson began to pursue an obscure idea—a process that would fuse fine black powder to paper using electrostatic charges. Carlson originally called his process “electron photography,” and then nicknamed it xerography (from the Greek words xeros (dry) and graphein (writing).
In 1937, by which time he was a patent attorney, Carlson perfected his theory and used his legal drafting skills to patent his revolutionary process. But he still had no actual proof that it worked. He offered his patent to IBM for a $10,000 advance and 5% royalty—in hindsight, one of the best offers of the twentieth century—but IBM passed. (Twenty years later, IBM still failed to see the potential when it reviewed the first Xerox copier and concluded that the device “has no future in the office copying market.” Ouch!)
It wasn’t until 1945 that Carlson partnered up with a nonprofit R&D firm in Ohio, which improved on the invention and licensed manufacturing rights to the Haloid Company, a tiny photographic paper manufacturer in Rochester, New York. Things dragged on until the mid-1950s when—just as Carlson’s initial patents were expiring—the Haloid Company (now renamed Xerox) perfected
Carlson’s process and tested it in nearby offices. Xerox knew it had a hit when the testing companies asked to keep their demo machines.
The debut of the Xerox 914 was one of those rare moments in inventing history when a device transforms the environment in which it is placed. Xerox believed that businesses would use the 914 primarily to make duplicates of outgoing correspondence. They never imagined that employees—no longer encumbered by messy and time-consuming copies—would use it for internal document reproduction, such as memos, reports, newsletters, and even personal documents or their faces and other body parts. The result was an explosion of office and personal copying. Within seven years of its introduction, Xerox was the 15th largest publicly owned company in the United States.
It’s said that the business of law is really about selling paper to clients; and the Xerox machine put that principle into overdrive. The law firms devised a clever system of markups. Initially, they leased copiers and paid per copy, allowing them to mark up and pass along those charges to clients. But even after law firms began to own their photocopiers, they retained the per-copy charges for clients. A few cents per copy may not seem like much at first, but hey, what if everyone is suddenly buried in paper?
And buried they are. Consider, for example, when one business sues another. As a normal part of the pretrial discovery process, in which each side asks to see evidence held by the other, attorneys review the other side’s relevant memos, phone records, financial records, and other documents. With piles more photocopied documents at each business, however, it creates an exponential increase in the size of discovery requests—literally boxes, and sometimes trucks of documents being sent back and forth. To deal with this paper explosion, law firms added more staff, thereby increasing the billing. In short, Xerox had created a cash machine for law firms.
The copier also triggered illegal activity (always a boon for lawyers). For example, there was office espionage, loss of trade secrets, and even fraud (for those who understood how to create fake photocopied documentation). The Xerox machine launched many copyright lawsuits: for example, a series of cases where authors and publishers protested the fact that people—students and teachers, in particular— were no longer buying their books and scholarly journals, but simply slapping a borrowed original onto a copy machine. Legislators took the device into consideration when creating the 1976 Copyright Act, by including provisions on academic photocopying. Although we now take the photocopier for granted, it was essentially the original VCR or Napster—a device that, for the first time, put infringement into the hands of ordinary Americans.
Carlson earned millions from Xerox, but never measured success by money. He had spent his childhood in poverty—during his last year in high school he lived in a converted chicken coop—and had a goal to rid himself of his wealth before he died. He spent his final years getting rid of his royalties via charitable contributions and pursuing spiritual goals. His process—which remains virtually unmodified from his 1937 patent—continues to supply copies to his legal brethren via photocopiers, laser printers, and fax machines.

Tuesday, April 5, 2011

Can We Make Custom Movie Posters?

Dear Rich: I have a question for you. We run a theatre here in Ottawa, Ontario and wanted to start creating our own 'promotional posters' for upcoming movies. Our movies are mainly cult classic and B-movies anywhere from 1940 to 1980. We would like to hire an artist to create a custom promo poster advertising the showing of the film at our theatre. We pay for rights to play the film, but we're unsure if we are allowed to create these custom movie posters. Also, we would like to print a limited supply of these posters, say 100 – 200, to offer souvenirs from our theatre. Do you have any idea if this would be breaking the law? I see this done a lot for music venue's (the resale of music venue posters), but never for theatres. Any advice would be awesome! Wow, will you be showing our favorite B cult movie, Carnival of Souls? We loved that movie when we first saw it and still love it today (and the fabulous soundtrack). And just as the lead character moved in and out of reality, the film moved in and out of copyright. Some claim it is in the public domain while others claim that a chain of title has been reestablished.
Right, you had a question. We love your theater for presenting older films (no subwoofers needed for these movies) and we love your theater for making original posters of the film. (Can we pre-order Carnival of Souls?). We hope our love for you doesn't affect our judgment but the short answer is that we think your creation and sale of movie posters will probably be fine.
The difference between music posters and movie posters? Yes, there is a diff. Movie posters usually include copyrightable elements from films or copyrighted characters from those films -- think Sam Spade, Superman, or the Terminator. That's not the case with music posters where the emphasis is on the artwork and the event. We bring that up because the only way we can see you tripping any alarms is if you use copyrighted stills or imagery from a film (or as in the case of this lawsuit, you copy a non-film copyrighted image into your poster). But if we were a betting blog, we'd bet that the copyright owners of these films (if they are even aware of your use) won't bother chasing after a hip Ottawa movie theater which may after all, be one of the few paying venues showing such films. Takeaway: If you're really paranoid, keep in mind that the more original the poster -- and the less use of stills from the films -- the less chance for hassle.
This just in from our CYA Dept., We're not experts on Canadian copyright law which differs in many ways from U.S. Copyright law (also, note the distinction between "fair dealing" and "fair use").

Monday, April 4, 2011

Newspaper Columns and Copyright

Dear Rich:  I have been writing a column for a local newspaper for the past few months, for which I am not receiving any payment. I want to preserve my copyright in the columns, all of which run under my byline with a distinctive title, but both the printed and online versions carry footnoted language stating that the newspaper owns the copyright. I asked for a written agreement to correct this, but their standard agreement is complicated and asks me to give up rights without establishing my ownership. Since I'm unpaid, I'd rather just go without a written agreement but worry about letting their copyright footer remain. I'm about to launch a blog or Facebook page relating to the column, and want to make my ownership of the column and its title clear.  If you're not an employee of the newspaper and you don't have a written agreement detailing who owns copyright -- either a work made for hire agreement or an assignment -- then you own the copyright in your column, no matter what the notice says. The newspaper must have necessary paperwork to claim ownership and apparently they don't. That doesn't prevent the newspaper from reproducing your column. You've consented to that and the newspaper has an implied license (created by your behavior) to use the material. Could the newspaper argue that you never objected to the notice and therefore, that failure to act prevents you from now claiming copyright? That wouldn't fly because the rules about transferring ownership would trump any such claims. The newspaper needs something in writing.
What about the copyright notice? We haven't seen the notice or its placement in relation to your column but here a few things to consider about notice.

  • Copyright notice is not required to protect a work. Or perhaps we should put it another way: the absence or presence of notice won't harm your ability to claim copyright ownership; 
  • Improper copyright notice may affect the owner's ability to seek maximum damages against someone who claims to be an "innocent infringer."   The newspaper possesses your permission to reproduce the column. So, the newspaper's use of the notice may reflect its claim as to those limited rights -- for example, the newspaper's claim as to its exclusive right of first publication of the column; and 
  • Finally, it's possible that placing a copyright notice may mean that the newspaper is seeking to put the world on notice that it claims a collective works copyright in everything on that newspaper page or in that issue. For example, at many websites, the copyright notice in the footer of the web page is not necessarily claiming ownership on everything on that page, but it is claiming rights in the collection and selection of material (while the individual authors may claim rights in individual contributions).
What does "owning copyright" mean? Okay, so assuming you own copyright in the column, you have the right to reproduce and create derivatives. For example, you could put out a book of your columns or reproduce them at your blog. It also may give you the right to prevent the newspaper from reproducing the material at a secondary site, in print form, or from licensing your column to others.
Crystal ball dept. Can we ask why you are writing the column without payment? We assume its because you get something out of the publication? If what you get is very important, you may want to rethink the whole copyright issue. Yes, it's important to own copyright if you have plans in the future. But if not, you should ask if you really need to own the copyright. You could, for example, grant the newspaper copyright and retain the right to do certain things with the column without having to ask for permission or having to pay the newspaper -- just an idea. Also keep in mind, that in return for some consideration, you can always grant copyright to the newspaper after the fact. Assignments do not have to be contemporaneous with the creation of the work (while some courts have held that work made for hire agreements must precede the creation of the work.)

Friday, April 1, 2011

Can We Turn Boston Red Sox into Zombies?

Dear Rich: I have come up with a couple of designs that depict the Red Sox baseball team as zombies, and before I start trying to sell them online, there are several points regarding Fair Use as parody that I am concerned about. First, is the use of the team's name at all permissable? My design's currently show the name "Red Sox" in a generic font, but the word "Red" is covered by the word "Undead", changing the term to "Undead Sox". The "Red" is still discernable. Is it necessary for me to remove the "Red" entirely? Second, I use modified versions of two logos. The Red Sox's Hanging Sox logo -- my version is an original drawing that includes a dismembered zombie foot in on of the socks, with several toes poking through a hole in the end of the sock. Also, the MLB logo has been modified to replace the baseball player silhouette with a zombie. Thus, both logos have been modifed from the original so that they are unique but clearly reference the original. Is that protected as parody under fair use laws? Third, I use a modified version of the MLB name. In my artwork, it is altered to read Major League Zombies or MLZ. Again, is this permitted as parody? Short answer dept. If your concept is successful, you'll probably get sued by the MLB. If you can afford to defend the lawsuit, you might win; then again, you might not.
Trademark parodies. What you need to keep in mind is that you're dealing with trademark parodies, not copyright parodies so the copyright concept of "fair use" isn't really relevant (and we're not going to address trademark fair use which is an entirely different animal.) Here's a previous post on the subject and here's a good explanation of the trademark parody rules. Keep in mind that to create a true trademark parody, you must convey contradictory messages: you want people to think of the MLB, but you also want people to see your use as a parody that's not connected with the MLB (Chilling Effects elaborates on that distinction here -- scroll down for the explanation).
Why will you get sued? Famous companies typically sue over parodies under a trademark theory known as dilution. When you dilute, people think less of the mark because you've tarnished its famous reputation. Even if a company believes you have a good free speech defense, the company may proceed with the lawsuit because it has more money to spend on the lawsuit and is more likely to force you into a settlement. If we were to analogize to the world of zombies, the MLB lawyers will want to devour your grey matter.