Friday, December 30, 2011
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.
Thursday, December 29, 2011
Many copyright experts believe that licenses imposing copyright-like restriction on how the public may use public domain materials should be legally unenforceable. This is because the federal copyright law preempts (overrides) state contract law and prevents people from using contracts to create their own private copyrights. Moreover, there are sound policy reasons for holding such license restrictions unenforceable—their widespread use diminishes the public’s access to the public domain. However, almost all courts have ignored the experts and enforced these licenses.What's a valid license? To have a valid license, you and the museum must assent to the terms and conditions, typically at the time when you enter. If the admission ticket contains no restrictive provisions and you never assented knowingly to such conditions, there probably is no license in place. For example, it's unlikely that an after-the-fact assertion of rights -- a sign on the way out of the museum that tells you that you cannot reproduce the imagery -- is legally enforceable as a contractual license.
What about the Crystal Bridges website? Each page of images at the Crystal Bridges website contains the statement:
Works of art in Crystal Bridges' collection are protected by copyright and may not be used without permission. For more information visit Rights and Reproductions.That sounds foreboding but we're not sure that statement creates a binding license. It reminds us more of a tip jar, left in view in the hopes that its presence will trigger a hoped-for result. The museum would have a much stronger argument that its terms and conditions are binding if the user had to assent to these terms and conditions -- that is, click a "Yes, I Agree" button to access the works. The fact that the site includes "copyrighted" photographs of public domain artworks also doesn't affect your ability to copy and reproduce that artwork. Courts have held that "slavish copying" of public domain works does not make the photographs protectible under copyright law. Although we're not a betting blog, if we had to bet, we'd place our money on the fact that currently public domain images at the site can be copied and reproduced without permission.
One last thing. Just because a painting was created before 1923 doesn't mean it's in the public domain. It must have been published before 1923. You may be surprised to learn that displaying a painting in a museum, for example, does not amount to publication. Publication (scroll down) refers to reproduction of the image, for example in a magazine, post card, or book. To learn more about these tricky public domain rules, check out Fishman's tome.
One other last thing. We're not encouraging you to get chased by the museum and we appreciate the fact that great art is being made available to the masses at no charge. But is it really free? The driving force behind these efforts to restrict reproduction is a desire to jack up gift shop sales and generate licensing revenue. We hope the museum rethinks its desire to reclaim and restrict rights to artwork that our government has designated to be freely available to the public.
Wednesday, December 28, 2011
How do you get permission? The copyright is likely held by the Ruth Heller Trust Fund but we think the place to start your request is with Grosset and Dunlap/Penguin Putnam Books for Young Readers, the publisher. They have an online permission system and a set of FAQs explaining the process and their online database indicates they control about a dozen Ruth Heller books. If the coloring book you are using is not covered, perhaps G&P can lead you to the proper source or to the trust.
Can you use it without permission? We think including one or two images (with proper attribution) would probably not trigger a cease and desist letter. Although the copyright pages of the coloring books don't specifically grant permission for uses like yours, a coloring book is an implied invitation to create a derivative work. It can also probably be argued that the sale of a coloring book implies a limited right to post and reproduce the resulting "colored-in" works. And for what it's worth, the company has not objected to the posting of colored-in versions of their imagery at Amazon. Again, we can't guarantee that the copyright owner won't object to your use, but it's difficult to imagine that they would.
Monday, December 26, 2011
How do other people get away with it? It's a matter of odds. The owners of valuable character properties usually put their resources into pursuing the bigger fish, and for the most part, that often bypasses individual sales at Etsy or eBay. So, unless the trademark owner is intending to make an example of a small fry infringer, a cease and desist letter may be sent, and that's sometimes the end of it.
What should you do? We wish it wasn't frustrating to get permission. Like, wouldn't it be great if you could pay "per impression" for reproductions of licensed characters. Of course, that may blow any standards of quality ... but hey, merchandise happens. Anyway, infringement is always a gamble and we'll leave the risk assessment to you.
Friday, December 23, 2011
Is it cybersquatting? Cybersquatting is when someone buys and sells a domain name with the bad faith intent to profit from another company's trademark. (We explain it in more detail, here.) For example, it would likely be cybersquatting if (1) the company set up a site that diverted your customers, (2) the company, in advertising the domain name for sale, mentioned that the potential buyer could trade off your previous traffic, or (3) the company set up a page with Google Ads listing you and your competitors. If the company contacted you, unsolicited, after buying the domain and offered to sell it back to you at a much higher price, that would likely be cybersquatting, too. It would not be cybersquatting if the company set up a non-competitive site for another company or if the company did nothing but set up a blank page. That's because there's no proof of bad faith intent. After all, it's not illegal to simply buy and sell domain names (without bad faith).
Should you proceed to ICANN? You are unlikely to get the domain name back by sending threatening letters. Most domain name dealers are not cowed by legal letters. They know you can only get the domain name back by (1) filing a federal cybersquatting lawsuit (probably way too expensive for you), or (2) by seeking domain name arbitration at ICANN. If you go the ICANN route, your filing expenses are, at minimum, $1500. It takes six months, requires a considerable amount of paperwork and documentation and may cost more if lawyers are involved. Remember, it's not enough to say that the company bought your domain name, you need to prove bad faith. And of course, there's no guarantee you'll prevail (although complaining parties prevail in 84% of the cases). Many people don't want the wait or the uncertainty of ICANN so they simply contact the new owners and pay for the domain name -- often forking over a sum between $2,000 and $3,000 because that's how much they would likely end up paying in time and money for an ICANN arbitration.
Thursday, December 22, 2011
Right, you had a question. The typical procedure for getting permission would be to contact the apparent owner of rights -- the Council of Europe -- and to ask for permission. Here's their contact information. Although the Council of Europe is a multinational organization -- a bit like the United Nations -- it can retain copyrights. For example, the Council of Europe is listed as copyright claimant for seven U.S. copyrights (although there is no registration for the poster). You can review their U.S. copyrights by searching at the Copyright Office. Click "Search the Catalog" and filter your search by "Name." If you can't get a response for your requests, document your attempts in the event that you decide to claim fair use. As we've indicated before, there are a line of cases that make thumbnail reproductions, whether in books or on the web, more likely to be excused as a fair use, especially when accompanied by commentary or criticism.
Wednesday, December 21, 2011
Dear Rich: We're a web startup (a pre-startup, actually). Can you explain the effect of the recent VEOH ruling regarding website infringement? Wow, a pre-startup! That sounds hopeful!
The case you're referring to -- UMG Recordings v. Shelter Capital, Partners -- has to do with the level of policing required by a website when users post infringing content. Veoh, a site that permits users to upload video content, was sued by Universal Music, after infringing videos were discovered on the site. Veoh had complied with all requests to remove content and had used software to seek out and identify infringing content, but some infringing music videos still made it on to the site.
DMCA as a shield. Universal argued that Veoh (our source for the kitty video) must have known of the "apparent" infringements and should not be able to use the Digital Millenium Copyright Act (scroll down) as a shield. The 9th Circuit Court of Appeals -- the first appeals court to rule on this issue -- held that the burden was on Universal to report the infringements to Veoh, stating,"Copyright holders know precisely what materials they own, and thus are better able to identify infringing copies than service providers like Veoh." The ruling doesn't shield websites from liability for infringement but it does permit websites to use the DMCA as a shield when the website has anti-infringement policies and has otherwise responded to all requests for takedowns.
Tuesday, December 20, 2011
What happens after publication. Whenever the information is published, that information can no longer be protected as a trade secret and will not be subject to an NDA. That doesn't necessarily make your NDA "null and void." If other nonpublished information has been included as part of the NDA, that should still be protected. For more on the subject, check out our NDA site.
Friday, December 16, 2011
Dear Rich: Every year, my neighbor blasts Christmas music (and some non-Christmas music) with a synchronized Christmas light show. As you can imagine he goes overboard and drives most of the neighbors crazy. We've asked him to turn it down (or off), complained to the authorities, and none of it does much good. We're thinking of suing him as a nuisance. One of the neighbors wondered if we could report him for playing copyrighted music without permission. Is that possible? To whom do we report it? That's the Christmas spirit! We can totally relate. We once visited a Dear Rich Staff member in the hospital at Christmas time and somebody down the hall was blasting 'Silent Night' on a toy piano (talk about an oxymoronic choice of material). What is a 'humbug,' anyway?
Right, you had a question. The neighborhood blasting of copyrighted music would likely qualify as a public performance (sidebar on right) under U.S. copyright law. In other words, it falls into the same category as playing music at a ballgame or at a bar, and requires permission. If it is done without permission, it would be considered an unauthorized use of the music -- that is, an infringement. The gatekeepers for almost all of these public performance rights are two organizations, BMI and ASCAP. They grant permissions on behalf of thousands of songwriters. They also enforce rights and sue organizations and individuals who publicly perform music without permission. You could report your neighbor to the appropriate organization although you would need to identify the copyrighted songs from the performing rights organization's repertoire -- for example, BMI has over 7,000 registered songs with the word "Christmas" in the title. The organization could then choose to enforce rights. That's where you might run into a problem. Following the strange flap over the Girl Scouts/Macarena debacle, performing rights societies might be gun-shy about going after a homeowner playing Christmas music in his cul-de-sac. We think you and your neighbors would be better served by handling this in the traditional American way -- small claims court.
Thursday, December 15, 2011
Your relationship with the receiving party is usually defined by the agreement that you are signing -- for example an employment, licensing or investment agreement. To an outsider, it may appear that you have a different relationship, such as a partnership or joint venture. It's possible that an unscrupulous business will try to capitalize on this appearance and make a third-party deal. That is, the receiving party may claim to be your partner to obtain a benefit from a distributor or sublicensee. To avoid liability for such a situation, most agreements include a provision like this one, disclaiming any relationship other than that defined in the agreement. We recommend that you include such a provision and take care to tailor it to the agreement. For example, if you are incorporating the NDA provision in an employment agreement, you would delete the reference to employees. If you are using it in a partnership agreement, take out the reference to partners, and so forth.
Wednesday, December 14, 2011
Tuesday, December 13, 2011
So what do you say? Knowing that disclaimers won't prevent a lawsuit, you might be able to limit damages in a lawsuit by stating something to the effect of "No copyright is claimed in [content copied] and to the extent that material may appear to be infringed, I assert that such alleged infringement is permissible under fair use principles in U.S. copyright laws. If you believe material has been used in an unauthorized manner, please contact the poster." Don't expect this to do much -- most copyright owners will bypass this and have it removed under a DMCA notice -- but it may set a more sympathetic tone for you as a defendant if you find yourself responding to a lawsuit.
Monday, December 12, 2011
The copyright case(s). Bikram and his competitors have been in and of courtrooms over the past ten years. One group of yoga practitioners sought relief after Bikram sent out a bunch of cease and desist letters in approximately 2002 and 2003. That battle ended in a settlement in 2005 but not before a court weighed in on a few important issues. The court determined that: individual yoga moves could not be protected; a compilation of moves might be protected if sufficient originality could be demonstrated; even if a copyright were granted for a collection of moves, it would be a "thin copyright" and would likely be limited to performing the moves in the exact sequence; and the performance of yoga moves did not necessarily amount to their publication. As for the use of heat as part of the sequence -- and who wouldn't want to be in a yoga room packed with half-naked sweaty people -- no protection can be granted for this "concept." In September of this year, Bikram started up again, this time going after YTTP for copyright and trademark infringement. Bikram has received several copyrights for books and other compilations. However, the Copyright Office announced last week that yoga moves are not eligible for copyright protection. Bikram's lawyers discounted that decision as meaningless because Bikram's copyright has already issued and is presumed valid. It's true that there is a presumption of validity associated with a copyright registration but it's a rebuttable presumption and courts periodically eighty-six registrations when the situation calls for it. This may prove to be one of those situations.
Can you use the trademark? Probably, the strongest claim that Bikram can make is for trademark rights -- specifically as to the use of the name, Bikram Yoga. Bikram hasn't made the mistake of Pilates and permitted the unlicensed use of his name. So, if he can demonstrate that the Bikram marks (and we're not sure what is claimed beyond the name) have been used, he may be able to succeed on trademark infringement claims.
Can it be patented? We don't think a collection of yoga moves is patentable, an opinion shared by other patent practitioners and by the patent office, although it is possible to obtain patents on yoga products, like the yoga gloves and shoes, shown above). (And of course let's not make the sad journalistic mistake of confusing copyrights and patents.)
Bottom Line Dept. If we were a betting blog, we would bet that Bikram will fail in his current copyright case though we doubt if that will deter the celebrity attraction that is associated with his "brand." The takeaway point, however, is that, until stopped by a published court ruling, the company is likely to continue to aggressively "protect" its turf.
Friday, December 9, 2011
Right, you had a question. Obviously your chances of obtaining permission are reduced if you inform the person from whom you're seeking permission that you intend to pan the artwork. So, our suggestion would be not to mention it. Like Admiral Hopper used to say, "It's easier to ask for forgiveness than it is to get permission." Though some may disagree with that approach, we feel it's fine in this situation. After all, academic criticism is valuable and is intended to provide benefits to the artist and the public. So, we see nothing wrong with simply stating that you are preparing an academic essay and need a high quality reproduction of the work for reproduction with your essay. If you cannot get permission and you are going to produce a printed publication, you may be able to reproduce thumbnails under fair use principles -- at least that's been the trend recently for books and websites. And of course, though it may be expensive, some artwork can be licensed with few questions asked through sources such as VAGA and ARSNY. (Columbia University has a site explaining the licensing principles of museums and galleries.) And while you're at it, we're curious what you think of this artwork?
Thursday, December 8, 2011
Right, you had a question. If you don't use any copyrighted materials owned by the Stones -- lyrics, photographs, etc., -- then you won't need to ask permission or deal with compensation. If you do use some limited excerpts or clips, you may be able to excuse that use under fair use principles. For example, under U.S copyright law, you can probably get away with thumbnail reproductions of album covers as a fair use. You're probably fine to use Rolling Stones logos and trademarks because your uses are strictly information/editorial and permissible under trademark law. However, we think you are best avoiding the use of of logos (such as the logo reproduced above) on the cover of the book as that may imply endorsement by the Stones.
Wednesday, December 7, 2011
Tuesday, December 6, 2011
(BTW, there's a lot of helpful patent business info at Nolo's new patents and business site.)
Monday, December 5, 2011
Right, you had a question. Yes, you can protect your doll under copyright law. You can file an application electronically or by using the Form CO (PDF). You would register it as a work of the visual arts. Circular 40 explain the rules.
Did the illustrator assign rights to you? According to your question, the illustrator created your doll. That might make the illustrator the copyright owner. If you and the illustrator jointly developed the doll, you may be co-authors. In any case, it's probably in your best interest to get an assignment of copyright from the illustrator. (This Artist's eGuide includes one).
What about trademarks? You can register your doll's name with the USPTO. But you don't get federal rights until you've started selling the doll (although you can reserve rights). If money is tight -- trademark registration costs approximately $300 -- you can wait until sales from the doll justify filing the application.
Friday, December 2, 2011
Right, you had a question. Yes, you can license without a patent. A lot of manufacturers don't want to mess with patents because they may believe that the key to success is getting to market first (and patents take years to obtain). Still, there are some obvious advantages to having a patent, in particular you have a monopoly on the invention and may be able to control derivative versions as well.
How do you describe what you're licensing? In your question you state that the invention is patent pending in the U.S. and Canada but then you ask whether you can license something that's not patent pending. So, we're not sure of the status of things. Either way -- patent pending or not -- is okay. In Chapter 8 of the book, we provide language for licensing a patent pending invention -- "The 'Property' refers to the invention(s) described in U.S. Patent Application No(s). _______, a copy of which is/are attached to this agreement." Following that we also provide language if the innovation is not patent-pending. In both cases, providing an accurate description of what you're licensing is most important.
Is it legally binding if I have no IP protection? It helps to be able to point to a patent or a trademark registration when licensing but not having a government registration doesn't preclude you from licensing an idea. The idea may involve trade secrets or know-how, or some other product of the mind, and the fact that a licensee is willing to pay for it indicates that it has property value. Ideas are commonly licensed in the toy and entertainment industry.
You're not licensing your patent, you're licensing your rights. If you make the deal and the patent doesn't issue, that shouldn't affect your arrangement unless the agreement specifically states that the license is contingent upon acquiring patent rights. For example, many license agreements set two standards of royalties: one if the patent issues; one if it doesn't. Because the licensee isn't interested in the patent, you shouldn't have language penalizing you if it doesn't get issued.
Yes, you can get sued if you infringe someone else's patent. Unless the manufacturer is willing to indemnify you (very rare), you can be sued for infringement. Usually, it's the other way around. The manufacturer wants you to indemnify them. Please read the section on Warranties and Indemnities in Chapter 12. If you must indemnify, we describe a system based on an incoming royalty fund in the book. See if you can get the licensee to accept that so you won't risk out-of-pocket payments.
P.S. We just redesigned a patent site that may provide some help for you.
Thursday, December 1, 2011
The caselaw. In a 1974 case, a text book publisher took a popular child psychology book and hired a series of freelance writers each to rewrite the chapters of the book so the result was all paraphrasing. The writers were instructed to maintain the same sequencing of topics and weighting of subject material. A court found such massive copying to be an infringement. Another court later stated, “We recognize that even in the absence of closely similar language, courts have found copyright infringement on the basis of “recognizable paraphrases.” The Second Circuit Court of Appeals stated that infringement occurs when “an alleged infringer borrow[s] virtually an entire work and attempts to avoid liability by doing little more than changing the verbatim language or slight details in the structure.” But wait, there's more: Another 1970 case held that extensive paraphrasing amounts to infringement including the rewording of legal agreements, and in 1972, a court would not excuse extensive paraphrasing when the defendant rewrote a book about guitar playing.
Bottom line dept. Courts examine paraphrasing on a case by case basis. Don't assume that changing the words automatically absolves you from liability.