Friday, September 30, 2011

Wants to Dramatize Works of Persecuted Russian

Dear Rich: I have written a play in which I use the works of a Russian writer (in my translation)named Daniil Kharms (1905-1942). He wrote very short absurdist works, one-paragraph stories and the like, so I actually include several works in their entirety in the playscript. None of these works were published during his lifetime. (During his lifetime he only published two poems, plus many works for children, none of which I'm using.) I want to send the script for the play around to theaters without any questions about permissions hanging over it. I've looked at the Library of Congress website but question the value of ordering a search for so many short works. Kharms lived and died in Russia. (He died in a Leningrad prison during the siege of Leningrad. A friend hid and preserved his manuscripts.) He had no children; his wife died abroad in the late 1990s or early 2000s. There are various collections of his stories in English translation dating from the 1960s to the 1990s (on the copyright page of which, copyright notice is given for the translations; but not for the originals). There were two different Russian collections of Kharms's stories published in Germany in 1974 and 1978. In Russia itself, most or all of these works were not published until the late 1980s under Gorbachev. There is a "Complete Collected Works" in Russian which came out in 1998. Thanks for introducing us to the work of Mr. Kharms. We've reviewed the copyright notices for a few of the Kharms translations and can confirm that the copyright claims are only made to the translations and that there is no mention of a Kharms copyright or a license from anyone claiming to be the Kharms estate. For example, this copyright page from a British collection (Click Search Inside This Book and choose the copyright page) attributes authorship to Kharms, but that's all, apparently. For these reasons, we believe that currently Kharms' work qualifies as an orphan work, technically protected under U.S. Copyright but not enforced because the owner of rights can not be located. (That would explain the freedom with which translations have appeared.)
U.S. Public Domain. Hang on because things can get complex when analyzing the public domain. Here are few things to consider.

  • Unpublished works. On January 1, 2013, all unpublished works (whenever or wherever created) by authors who died in 1942 will fall into the public domain in the U.S. So, anything by Kharms that hasn't been published will be PD. 
  • Works Published Before January 1, 1978. The Russian collection of work published in Germany in 1974 would be protected for 95 years under U.S. Copyright provided that it had a valid copyright notice. 
  • Works Published After January 1, 1978. The Russian collection of work published in Germany in 1978 receives the same term of copyright as if published in the U.S. -- that is, life of the author plus 70 years. So, that also would be public domain in 2013.
Copyright Office Records. It's quite easy to search the Copyright Office Records and we recommend that you do so (choose to search by name and type in "Kharms Daniil"). Our search seems to confirm that there is no copyright claim by Kharms' successors (assuming he has any). By searching the records, you will see that there have been dramatizations and translations, none of which attribute copyright to Kharms, and none of which claim copyright over the original work (only over the translations and modifications).

Thursday, September 29, 2011

Using Pop Songs in Videos

My daughter (age 16) and her friends regularly make films and incorporate songs. How hard is it to get releases from established artists like the Rolling Stones, Hoobestank, Katy Perry etc,, particularly if the films are already done? It would be relatively difficult to obtain permission to use recorded pop songs on your daughter’s videos. There are two copyrights at issue and each requires permission. As we've discussed before, you would need a sync right from the music publishers (owners of the composition) and what's sometimes called a master use license from the record companies (owners of the sound recordings). We doubt whether it would be worth the time to go about attempting to do this, and even if you could get in contact, the fees would likely be prohibitive.
A different approach. Let’s start with another question: What does your daughter plan to do with these videos? If she wants to share them with friends and have limited private showings, there probably wouldn’t be an issue especially because the copyright owners would never learn of the use. If she intends to place the videos on YouTube, one of three things could happen: (1) nothing, (2) the song owner would issue a DMCA notice, in which case the video would be removed by YouTube (unless you fought over the issue based on a fair use claim -- see below), or (3) YouTube would flag the video, send you an email stating that it thinks you're using unauthorized music and then run ads along with the video (which is what happened when the Dear Rich Staff posted a video with one of its favorite 80’s pop songs). By the way, the person you can thank for the latter alternative is probably Stephanie Lenz who posted a 29-second YouTube video of her kids dancing to “Let’s Go Crazy” by Prince and then, by challenging the DMCA notice -- because the label failed to consider fair use -- she made it more difficult for labels to send out DMCA notices.

DISCOUNT AT LIMELIGHT. The folks at Limelight, the mechanical licensing utility, are offering a 15% discount on mechanical licenses. If you want to check it out, the company has a special discount code: THANKSRICH15. The 15% discount is good through the end of October, 2011 (and no, FTC, we don't get compensated.)

Wednesday, September 28, 2011

Paying More, Not Less, for Patent Filing

Dear Rich: I waited until after the new patent law passed to file a provisional patent application I wanted the new micro-entity fees to go into effect. But when I went to pay, yesterday, I wasn’t given a choice for micro-entity, only small entity. I ended up paying more to file than before the law was passed.  Your timeline for the patent law says that the micro entity fees go into effect immediately. What’s going on? Welcome to patent ‘reform.’ Our timeline is correct. Section 10 of  the Leahy-Smith America Invents Act establishes that the new micro entity fees will go into effect immediately upon enactment (September 16, 2011). Alas, patent filers who sought to take advantage of the reduced micro entity fees -- for example, the fee for filing a provisional patent application would be approximately $62 – were out of luck. The USPTO issued a press release explaining the delay and provided no date for implementation (although some sources claim that the USPTO will not make micro entity fees available until 2013).
Why did you pay more? The law also establishes that a 15% fee increase goes into effect 10 days after enactment (September 26, 2011). Apparently, the USPTO had no problem implementing fee increases and a new fee schedule was rolled out on time. As a result, independent inventors like yourself are actually paying $15 more to file a provisional patent application than before the law was "reformed."
P.S. Wondering what qualifies as a micro entity and how it differs from a small entity? Here's an explanation

Tuesday, September 27, 2011

Can't Find Copyright Owner: What Do You Do?

Dear Rich: If one has tried and failed to locate the copyright holder of an image or if they no longer are in business or are unknown to the author (myself), is it sufficient to use a disclaimer such as "All reasonable attempts have been made to contact the copyright holders of all images," and perhaps "You are invited to contact ____ if your image was used without identification or acknowledgment." We recently watched an excellent Vidal Sassoon documentary and at the end was a similar statement – something to the effect of “For those photographers whose images we used without permission, we tried to find you and couldn’t and thank you for your wonderful contributions.” Orphan works. What you're dealing with is an “orphan work” --- one that is still protected under copyright but whose owner is missing in action and there's nobody to contact for permission. (There was an attempt to legislate rights for orphan works a few years ago but sadly that failed.) A disclaimer like this won’t relieve you of a claim for infringement but it could go a long way towards limiting your damages if (1) somebody appears out of the woodwork to chase you, and (2) you can demonstrate you made a reasonable good faith to search for the owner. A typical good faith search would include an Internet search and a search of the Copyright Office records.

Monday, September 26, 2011

Can Rangoli Be Protected By Copyright?

Dear Rich: I am working on a children's book that explains how to do a type of folk art known as Rangoli. Rangoli is very popular and is made by millions of people all throughout India. The nature of this type of art, which has been practiced for many years, is that there are extreme similarities in the designs that people create, and designs are also passed on so that they are perpetually duplicated. As I research this topic, I find that people claim to have a copyright to designs they post on their websites even though some of them are clearly duplicates with the only difference being a slight change – either in the design or the color scheme, or possibly none at all. So, my questions are: (1) Can people claim a copyright to those designs that were clearly derived from other people’s work? What happens if there are designs in my book that fall in this same category? (2) What happens if, in the creative process, you inadvertently duplicate a design someone made of which you are completely unaware? Is there anything that can protect you in this instance? (3) How can anyone truly claim a copyright to art that has been duplicated by so many people for so many years? How do I protect myself? Rangoli artists often share elements -- for example, lotus flowers and leaves, swans and parrots, and certain human imagery. Many times these elements are copied and re-arranged and other times, an artist may create unique elements by hand, without copying. When elements are original, the copyright can be claimed by the artist. When elements are in the public domain -- taken from much older works -- a derivative copyright can be claimed as to the manner in which the elements are re-arranged and as to new elements that are added. But the less modification that is made to public domain elements, the thinner (and less enforceable) the copyright. In other words, the degree of originality matters when seeking to enforce rights over a traditional Rangoli work.
If you copy. If you reproduce someone's original work, or derivative designs over which people claim copyright, then the owner may pursue you in court. That's provided that the owner can register the work, convince a court that it is protectible, and that your use does not constitute fair use. That may be an uphill battle for some Rangoli creators, and not so difficult for some others.
Inadvertent duplication. As for Question #2, if you inadvertently duplicate a Rangoli work -- that is, you create it independently without copying --  then you would not be liable for copyright infringement.  As long as you can prove you didn't copy and you created something independently, there is no infringement.
Bottom line. We think there are so many centuries of Rangoli art available, and so you should be able to safely include older public domain Ragnoli works. If you want to reproduce a work and you're unsure of whether it's protected, our suggestion is to keep the image as small as possible as the trend lately has been to permit thumbnail usage of artwork as a fair use. Finally, avoid copying and reproducing large groups of Rangoli from websites. That's because some Rangoli collections may qualify as a compilation copyright which protects the choice and order of the collection but not the individual works.

Friday, September 23, 2011

Rights to Perform Show Tunes

Dear Rich: I represent some members of a theater musicians organization. My question is about transcribing theater numbers from a CD, and performing them in public. Do we have to pay any copyright fees to anyone? Do we have to pay the  Tams-Witmark people who own the rights to the music? Actually, the Tams-Witmark company doesn't own the musical performance rights to musicals; they control what are known as "grand rights," which refer to the permissions necessary to stage an opera, play with music, or a work of musical theater. So, you need to consult Tams-Witmark if you are putting on the show, but not if you are only performing songs from a show -- for example, playing songs from The Wiz, Wicked or West Side Story.
BMI and ASCAP. Performance rights organizations such as BMI and ASCAP collect for such performances by charging venues with an annual blanket fee. So the venue ends up paying for it, not the musicians. The business of transcribing the music may technically require permission, but it is unlikely anyone will chase you for writing out the chord changes and melody of a song unless you attempt to sell these transcriptions.
The Name's Laguardia. Can you believe that there was once a hit broadway show about Fiorello LaGuardia and it won the Tony and Pulitzer Prize? The Dear Rich Staff remembers it fondly (probably because we had the lead in one high school performance).

Thursday, September 22, 2011

Can You Be Sued Over What's in Your Digital Music Locker?

Dear Rich: Can a music service like Amazon's Cloud delete tunes that I upload? Cloud services or "music locker" services can (and are obligated) to delete infringing copies of music if requested to do so by a copyright owner. At least that's the position taken recently by the district court in Capitol Records v. MP3Tunes LLC.
Backstory. MP3Tunes offered a cloud based service in which people could purchase songs and place them in their digital music lockers, or they could upload songs they owned, or they could search for versions of the songs they owned online (including unauthorized versions).
MP3Tunes received DMCA notices from record labels and removed user links to the infringing songs but the company failed to delete the infringing copies from the user's music locker.
Here comes da' judge. The district court ruled against MP3Tunes for failing to remove the infringing content from user's music lockers, although that ruling was considered a "hollow victory" for the labels because the judge refused to grant the label's request to remove "MP3Tunes' safe harbor exemption. As long as MP3Tunes removed links to infringing material and deleted infringing content as requested by the copyright owner, the company could take advantage of the DMCA's so-called safe harbor.
Rock Me Amadeus. We hope you're not downloading unauthorized Falco recordings. We got in a nostalgic mood the other day and Spotified some great Falco tunes. Funny thing, Falco doesn't sound nostalgic at all. So sad he's gone. (And don't forget one of our favorite-ist Falco lyrics.)

Wednesday, September 21, 2011

When Inventors Hire Employees

Dear Rich: I patented a car accessory and outsourced the manufacturing. Now I'm getting ready to distribute it and I'm considering hiring a cousin to manage distribution. What kinds of concerns should I have about hiring someone? Our suggestions have to do with paperwork and taxes. If you're providing any confidential or proprietary information -- or alternatively, if your cousin is creating any proprietary information -- you'll want to have an appropriate independent contractor agreement. (You can read the details about inventors and employees here.)  As for taxes, here is an article explaining what's needed when inventors hire employees. (And here's more information on inventors and taxes.) Also, we hope you and your cousin are a good match because one thing they say about hiring relatives is that they're easy to hire and tough to fire.

Tuesday, September 20, 2011

Can I Sample Johnny Cash Beat?

Dear Rich: So, I have a friend that sampled a beat with Johnny Cash. It's a hip hop beat and I asked if I could use it to rap to. I asked him about legalities which apparently he knows nothing about. He mentioned another guy was rapping to it also and making money and just to give him some credit and he'd be fine. I don't know how hard it is to get some kind of "cleared" status on the song, but my question is if there was a problem who would get it in trouble, the beat maker, or the singer? If the copyright owners learned of your use, both of you. Record labels and music publishers usually take the attitude, "Sue everyone. We'll sort it out later." If substantial revenue was generated by the unauthorized use, the person who earned that revenue would of course be the most "promising" target.
What are you doing wrong? Start with the premise that both of you are infringing: the beat maker made an unauthorized derivative sound recording and may have infringed the underlying composition. The singer would be providing an authorized performance and (if duplicating copies), unauthorized reproductions. Of course, whether anyone hears your sample, recognizes it, and bothers to pursue you is another matter. If you're simply using it to perform locally, or handing out some privately-pressed CDs, we think it's unlikely to cause a problem. But once it reaches a national stage and things go viral, things would likely change. (As you can imagine, it's tough for an independent artist to get sample clearance.) We've written an article explaining when clearance is needed, and another article explaining how to get sample clearance. We've also talked about sampling law in previous posts: check out the basic rules and some recent cases. Our Music Law book also describes the ins and outs of sample clearance with all the required forms and contracts.
He walked the line. BTW, Johnny Cash has been the subject of authorized hip hop remixes and unauthorized releases, as well.

Monday, September 19, 2011

Copyright in Back Translations

Dear Rich: The company I work for deals extensively in having radio program scripts translated into other languages, for instance, from English to Mandarin. On occasion, we commission a blind back-translation for quality control checking with the English originals. The process of the original translation is a new act of copyright for which we use appropriate work-for-hire or copyright assignments. What I'd like to know is if a back-translation constitutes a separate act of copyright and should therefore require the same procedures as the original translation did. We'll spare you the hours of academic discussion that your back-translations question could trigger and suggest that you use similar procedures for all translations. We assume you have two concerns: (1) making sure you obtain all rights from translators and (2) protecting your translations from infringement. Here's the 411.
Obtaining all rights from translators. You mention that you use work for hire or copyright assignments. We'll guess you're using assignments with contractors, and work-for-hire arrangements for employees. Just so you know, there is a difference. With an assignment, the translator could reclaim rights after 35 years. That's not possible with a work made for hire. Also, the commissioned work-for-hire rules specifically include translations as one of the enumerated categories for independent contractors. Finally, a work-for-hire arrangement allows the hiring party (your company) to be named as author, not the individual translator. Your company should take advantage of these rules and use work for hire agreements when commissioning translations. (You can always include an either/or provision, as we discussed in a previous post.)
Protecting your translations. Translating a copyrighted work requires permission. The resulting translation is entitled to a separate copyright as a derivative work and the translator is the author of the work. Translators routinely assign these rights back to the content owner. (There is more information here and here.) As you probably know, the owner of a translation copyright who wants to register it, has to disclaim the source material.

Friday, September 16, 2011

HiJacked and Automatic Photography

Dear Rich: You have no doubt heard about the copyright dispute over the self-portrait taken by a black macaque and photographer David Slater. In a discussion of this story at the Online Photographer it was claimed that copyright law forbids the assignment of copyright to a person in the case of photos that are taken automatically. This would seem to invalidate the copyright of most of the famous strobe photos of Harold Edgerton, for example - though MIT currently claims copyright on his photographs. So what's the scoop on copyright and automatically-taken photographs? Although the photos that you mention all have something in common -- a human did not press the shutter -- their copyright status actually varies depending on factors that we'll discuss below.
Artwork created by animals. We've followed the careers of various animal artists trained to create paintings and music (Ruby R.I.P.) and we believe that these works cannot be protected under U.S. copyright law. (P.S. for those seeking to invest in elephant art, watch out for the fakes!) According to the U.S. Copyright Office rules, only a human may create a 'work of authorship.' Those same rules prohibit registration of works owing their form solely to forces of nature and without human intervention -- such as driftwood. Although Copyright Office rules don't have the force of law -- the Copyright Act itself does not make these same anti-animal, anti-nature artist pronouncements -- these Copyright Office regulations are commonly accepted by the courts. For that reason, we believe that it would be difficult to (1) acquire a registration in the United States for the macaque self-portraits, and (2) for Slater's so-called assignees to maintain a lawsuit against an alleged infringer.
Photos in which a human did not press the shutter. There's a big difference between a photo taken by an animal and an "automatic," programmed, or computer-generated photo. For example, a photo taken with a timer can be copyrighted by the person who set up the camera and the timer. Similarly, a photo triggered by magnetic fields, or triggered by stroboscopic flashes, can also be copyrighted by the party who programmed the camera. By way of analogy, author Stephen Fishman points out in his "amazing treatise" on the public domain that the Copyright Office has registered hundreds of computer generated musical compositions and even a literary work written by a computer in the style of author Jacqueline Suzanne. In this manner if Slater had set up his camera to capture the "Cindy Sherman of Monkeys" and the shutter was programmed to capture the macaque each time it moved, Slater would arguably maintain copyright even though he was not present when the macaque said 'Cheese.'

Thursday, September 15, 2011

Dear Rich Staff Live at CLA!

The Dear Rich Staff will be appearing live at the California Lawyers for the Arts on Wednesday, September 21st at 7p.m. More details here.

Wednesday, September 14, 2011

Can Package Insert Get Copyright?

Dear Rich: I just wonder whether a package insert for drugs is copyrightable in the U.S.? I understand that the package insert has a standard form and should include specific information, both of which are usually required by the FDA or law. Moreover, all the descriptions in the package insert are about factual issues, say scientific research results, ways to take medicines, etc, and most of them can only be described in wording of very limited choice. In this case, can we also put some wording like "copyright reserved" in the package insert and claim copyright over the package insert? Package inserts can be protected under copyright law (as this article points out -- check out the "Warnings and Instructions" section). However, you may have trouble protecting the legally mandated requirements of the insert if, as you note, there are limited ways to express the statement. When that's the case, the merger doctrine kicks into effect and others can get away with copying.
What about adding 'copyright reserved'? You can add any wording you like about copyright being reserved -- that may scare off some interlopers -- but that doesn't necessarily mean that a court will enforce your claim to copyright. It will all come down to whether you've demonstrated sufficient creativity and can justify your exclusive rights to the work.

Tuesday, September 13, 2011

'Sup With Compulsory Music Licensing?

Dear Rich: I was wondering if you could shed some light on compulsory licensing as it applies to music. I guess what I want to know is why the creators of nondramatic musical compositions aren't granted the absolute control over their work that other creators seem to have. It seems a strange kind of a loophole to me, but as I'm not a lawyer perhaps there is some obvious point that I'm missing. For readers not familiar with copyright jargon, a "nondramatic musical composition" refers to just about every song ever written except To Dream the Impossible Dream (and other songs from theatrical or operatic productions). A "compulsory license" is an arrangement in which permission is not required before using someone else's copyrighted work, provided that a fee is paid.
Section 115A. Under Section 115A of the Copyright Act, a music publisher must permit you to record any song that has previously been recorded and released to the public. In other words, if the songwriters never recorded their song, or if it was played on TV or in a movie but never released on a sound recording or sold as an authorized download, you cannot use the compulsory license. Also, you cannot use the compulsory license if you change the basic melody or fundamental character of the song. For example, a singer cannot alter a song’s lyrics without permission. That said, many people change elements of songs without a problem (as we mentioned in this previous entry). Finally, this license does not include the right to sync a song with a visual such as a video; it's only for the sale of recordings on CD or by download. You can learn more about how to obtain a compulsory license online (or in our Music Law book.)
License or loophole?  There are others who feel the way you do but the Dear Rich Staff is not among them. We've written songs and we've recorded cover songs in our life and having a simple compulsory license program, especially like the ones at Harry Fox and Limelight, allows responsible musicians to pay for the right to record other people's music. It also makes it much easier to get paid for songs. It's possible that in the old days, the compulsory license may have been the way for a cover artist like Pat Boone or Elvis to have a hit from someone else's songwriting. But we believe that a hit is a hit, and songwriting -- whether the writer covers the song or someone else does it -- is usually the most lucrative aspect of the music business.

Saturday, September 10, 2011

Patent "Reform": A Done Deal

Modifications to the patent law were finally passed by Congress this week -- the Leahy-Smith America Invents Act. Although referred to as “patent reform,” commentators have noted that the Act does little to “reform” the problems associated with the patent system—notably, an underfunded PTO, inadequate examination procedures, and burdensome litigation. In the end, the Act contained quite a bit of special interest policy-making that favors large companies over independent inventors. The major change of the Act is that the U.S. switches to a first-to-file system in March 2013, 18 months after enactment. You'll find a summary of the Act's provisions here and here is a timeline detailing when the changes in the Act go into effect.

Friday, September 9, 2011

Can "Punks in Chunks" Quote Go on T-Shirt

Dear Rich: If I took the phrase" I eliminate punks cut em up in chunks, you were souped, you heard me then your ego shrunk" from an artist song and put it on t-shirts does that constitute copyright infringement? Maybe, but probably not. Generally, short phrases are not protected under copyright law (we can't say for sure whether this phrase qualifies as"short"). In addition, as this article points out, copyright holders sometimes have more leeway when going after people who use the phrase on merchandise. In any case, we think the probability of the song owner (L.L. Cool J) coming after you is slim. You are more likely to run into problems if you include images of the rapper or imply that L.L. Cool J endorses the shirt. In that case, you would be stepping on LL's right of publicity and as you may know, L.L. has always been a savvy merchandise marketer.

Thursday, September 8, 2011

Should Startup Seek Business Method Patent?

Dear Rich: I'd like some pointers on which book(s) or blogs I could read that address patenting business methods. Also I'd like to hear your take on this, is it something a startup should invest in before commencing any development of the idea (in form of software). The Dear Rich Staff previously posted an article about business method patents that may help and we recently had a blog entry on the subject. David Pressman's Patent It Yourself also discusses BMPs in some detail.
Should you talk to a lawyer? We think that if you're a startup, you owe it to your investors to have a patent attorney review your business method to determine two things: (1) whether it's commercial (especially whether it is likely to be commercial in 2-3 years which is how long it will take to get the patent), and (2) whether it's patentable. We can't help you with whether it's commercial but as for whether it's patentable there are a few things to consider:

  • Filing Deadlines. There are time limits for filing -- currently, you can't file if you published or sold the method more than a year before filing; 
  • Time and money. It takes time and money to get a patent.  Assuming the USPTO grants your patent (and the failure rate is about 50%), it takes 2-3 years during which time you can't stop others. And it can be expensive!
  • Endangered species. Business method patents are running into more and more challenges and may be much harder to obtain if the America Invents Act is passed this month (as expected). 
All that said, many startups were built on software and business method patents, so we urge you to get professional advice.

Wednesday, September 7, 2011

I Have Grey Aliens Copyright: Can I Get Trademark, too?

Dear Rich: I have two copyrights on alien dolls that I make, and would like to trademark the term, "grey aliens." Is this too much of a general term or since I have copyrights, would it be possible to get the trademark? The copyrights do not state the word "grey" in their content but, drawings sent for the copyrights do state that there are color changes. We think your aliens are very stylish. (We hope earthlings appear as stylish to extra terrestrials!)
The Greys! We assume you're aware that the term "grey alien" or "greys" is commonly used to describe extra terrestrials (though there is some dispute whether grey aliens are actually grey). So, we think you may be correct that this may be too much of a general -- or generic --  term to qualify for a trademark for your dolls (and no, your copyrights won't help).
The Examiner's Response. If you seek to register the trademark, a trademark examiner might consider the term to be merely descriptive (generic). That is, the term "grey aliens" is used to represent a type or class of doll product and does not distinguish your dolls from others in that class. If that is the case, you'll receive a substantive rejection for your application and you'll need to convince the examiner that consumers identify the name with you and not with a class or type of product. Alternatively, an examiner might consider your mark to be weak (or descriptive) in which case you would need to demonstrate more than five years of sales or other evidence of consumer associations. It's also possible that your application might fly through the USPTO without objection (that occasionally happens). One suggestion to improve your chances is to consider personalizing the term, for example, "The Grey Family" or naming the aliens, for example, "Dorian" or "Jennifer" (and don't forget the alien dog doll, "The Grey Hound").

Tuesday, September 6, 2011

Will Publishing Love Letters Invade Privacy?

Dear Rich: My question concerns the intersection of copyright permission and a release for invasion of privacy. I’ve written a memoir that quotes lines from a former girlfriend’s love letter to me. To get permission to do this, I am using a text permission agreement taken from your book Getting Permission. But, assuming the permission is forthcoming, it occurs to me that publishing her letter, even with a copyright clearance, also invades her privacy. Do I also need a release for this, or is the copyright permission alone sufficient to protect me? Ah, love letters ... Do people still put pen to paper any more? It's hard to believe that the mailbox was once a place where you could find intimate correspondence. We are reminded of the words of W.H. Auden: "And none will hear the postman's knock/Without a quickening of the heart./For who can bear to feel himself forgotten?"
Right, you had a question. Your copyright permission -- assuming it mentions the intended use in your memoir -- should protect you from claims of invasion of privacy. Invasion of privacy is typically either the public disclosure of private facts or it's an unwarranted intrusion into someone's private affairs. So, if your former girlfriend is consenting to publication, it would be difficult for her to later claim that her privacy is being invaded. There is one possible exception to her implied release of claims, and that is if you use false information -- for example, you deliberately misquote the letters -- in order to place your girlfriend in a bad light. In that case, she may have a claim for "false light" invasion of privacy or for defamation. In any case, it would be hard to shield yourself from these latter claims. We imagine that a former girlfriend would be hesitant to sign a bullet-proof "I won't sue about anything" release unless she had the ability to review the memoir ahead of publication.

Thursday, September 1, 2011

Can NDA be Governed By Two States?

Dear Rich: I’m working on a Non-Disclosure/Trade Secret Agreement for an employee that we have in California. Our main office is in Kansas City, Missouri. Is this wording legally appropriate?
Governing Law and Jurisdictions: This Agreement will be governed and interpreted according to the substantive laws of the State of Missouri and the State of California. Parties hereby expressly consent to the exclusive jurisdiction of the state and federal courts located within Platte County, in the State of Missouri, USA with respect to the interpretation and enforcement of the provisions of this Agreement. 
Can the laws of 2 states govern an agreement? If not o.k., could you please make a verbiage recommendation? We're hesitant to suggest specific verbiage for your contract ... that might cross the imaginary line between providing legal information and providing legal advice. But we can help you avoid ambiguities in your agreement.
Jurisdiction provision. You've combined two provisions (governing law and jurisdiction) which is not uncommon. The jurisdiction provision (also known as "forum selection") requires that any lawsuits arising from the agreement will be filed in Missouri. In normal circumstances, a California citizen may not be obligated to defend a lawsuit in Missouri (but the jurisdiction provision is intended to give consent in advance). Keep in mind that jurisdiction provisions are not uniformly enforced. For example, Idaho and Montana won't enforce them at all while other states require that the parties have some contact with the state beyond the contract provision.
Governing Law. This provision (also known as "choice of law") allows the parties to choose which state's laws will be used to interpret the agreement. If two states are named there will likely be some ambiguity, and ambiguity may be interpreted against the drafter (your company). It's true that this may not be a major issue for your NDA because both Missouri and California have adopted trade secret laws based on the Uniform Trade Secrets Act. Still, there are some substantive issues on which the two states differ and your clause may create unneeded confusion. As a general rule, we believe California law is more likely to favor employee rights than Missouri -- for example, California has strict rules prohibiting noncompetes. Because you are forcing any cases to be filed in Missouri, it would be less ambiguous to use only Missouri law.  Finally, although you are probably aware, NDAs are only enforceable to protect company trade secrets. We've posted some examples of NDAs at this site.