Tuesday, January 31, 2012

What Do We Need to Cover a Song?

Dear Rich: Do we need permission by the original author/creator of a song to sell/distribute a song cover, or is it simply enough to credit the original creators on the release? What are the basics of licensing/clearing a cover song? Speaking of covers, we recently stumbled on Willie Nelson's version of The Warmth of the Sun. We wondered if this video was around when Willie was having his tax problems, because if it was, we don't see why the judge didn't dismiss all charges and grant Willie sovereign immunity. P.S. The song has a different meaning when you learn it was written the night that JFK died.
Right, you had a question. Check out our response to a similar question last September. And if you're still having trouble sleeping, check out all our other responses dealing with covers and compulsory licensing. (Type "compulsory license" or "cover song" into the "Search Dear Rich" box on the right.) Also, our book, Getting Permission, explains the procedures in detail.

Monday, January 30, 2012

Trademark Renewal Scams

Dear Rich: I have a trademark registered at the USPTO. I got a letter from a trademark renewal service in Washington, D.C. warning that my trademark has to be renewed right away. But according to your books, my trademark doesn't need to be renewed for another 9 months. Who's right? You know those people who are busy protecting your inheritance in Nigeria? Apparently they are also watching out for your trademark. We believe your letter is one of many trademark renewal scams. Typically, it starts with a pseudo-official letter from some company that sounds like it's affiliated with the government (scroll down for a list of possible offenders). They've mined your information from the USPTO database and the reason you're hearing from them so far in advance of the actual renewal date is that they want to pre-empt any mail you might get from a legitimate source such as your attorney.
Other scams. There are other trademark scams. For example, the Dear Rich staff got a letter a couple of weeks ago from this company offering to "publish" our registered trademark data on the Internet in return for $589 payment. Wait ... for the price of a Droid Bionic, the TMP crew will duplicate what the USPTO and Trademarkia already do for free. (Our favorite part of the letter --  a pathetic and ineffective attempt to avoid U.S. jurisdiction -- said, "It shall be pointed out that TM Publisher Corp. has its headquarters in Switzerland and the postal address in the USA serves the customers to handle payments ... ") BTW, one law firm has recently gone after an alleged TM scammer.
Two post-registration dates you need to know. Just so you know, if you miss two keys dates, your federal registration will be canceled.
  • Continued Use. Sometime during the fifth year after federal registration -- that is sometime between the fifth and sixth anniversary of federal registration -- you must file a "Declaration Of Continued Use Or Excusable Nonuse Under Section 8." The requirements are here. So if your mark was registered on July 1, 2007, sometime between July 1, 2012 and July 1, 2013, you must file the Section 8 declaration.
  • Renewal. File within six months prior to end of the tenth year of registration. 
If you miss either of the deadlines, there is a six-month grace period to correct the error, provided you pay additional fees.

Friday, January 27, 2012

Wants to Use Heinz Quote

Dear Rich: There is a very well-known quote by someone named Heinz von Bergen (often found online as "Heinz V. Bergen"), which reads as follows:"Information is the seed for an idea, and only grows when it's watered." I have searched far and wide on the Internet for some source that would clarify if this quote is in the public domain, and/or information on Heinz von Bergen himself. We don't mean to offend, but this quote sure sounds like the kind of thing Steve Carrell might spout on an episode of The Office.  Anyway, does information (which is a collection of facts) actually grow? (It seems to us that information exists and we discover or categorize it.)
Right, you had a question. Regardless of whether you can find any information on the originator of this quote --  and our hard working staff couldn't find much on Heinrich von Bergen, Heinz von Bergen, Heinrich v. Bergen, or Heinz v. Bergen -- you can use any short quote freely. As we've noted in the past (type "short phrase" or "quotes" into the Search Dear Rich Box, right) copyright doesn't protect short phrases.
PS Dept. If you're looking for "idea" quotes, what about this one as an alternative -- "A half-baked idea is okay as long as it's in the oven."

Thursday, January 26, 2012

Old Band Videos: No Releases

Dear Rich: We have extensive old video footage of bands (a lot of it is over 15 years old) that I have been dubbing and want to try and do something with online and try and make a little cash. The bands were aware we were filming and had the option to purchase the masters, but chose not to. Could these be considered our art as we shot them and physically possess them. Most of the bands are now defunct and it would probably be hard to track them down for a release form, as most of our dealings were verbal agreements. If we start to do new ones, I would get a release from the band, but even if they signed it, would we (video crew people) be able to upload and charge for others to view and or purchase them?  Just thinking about the legal hoops you will have to go through has made us turn up the caffeine drip. (We've set out the legal rules below.) May we suggest another  strategy? Forget everything we're about to say and just do what you want. Unless one of the former band members later became a lawyer (and it happens) or is willing to hire an attorney, chances are likely your posted videos will become just more flotsam on the sea of low level infringements that are either drowning or enhancing popular culture (the grand jury is still out on that one). In any case, based on the odds, you're likely to survive intact. If there is an objection you may have to take down the video (not unlikely), or you may even have to deal with a lawyer (possible, but unlikely). However, what is extremely unlikely is that DOJ helicopters will land on your front lawn, forcing you to retreat to your safe room with a shotgun. (And can anyone tell us what's to become of the copyright of the fabulous MegaUpload theme song?)
Right, you had a question. You probably own the copyright in the videos because you shot them. The band (or their publishing company) probably owns the copyright in the songs (unless they are cover songs). If you want to include copyrighted music in a video, you need what's called a sync license from whoever owns the song publishing. Getting releases would help as you plan to make money from the band's trademarks and the members' individual personas. (BTW, whoever owns or possesses the masters doesn't matter too much; what usually matters the most is who possesses the legal rights.) BTW2, we've answered similar questions before (just type "sync license" into the "Search Dear Rich" box on the right) ...  just sayin'.

Wednesday, January 25, 2012

Can We Require Positive Uses Only?

Dear Rich: We would like to add some "usage" language regarding an electronic (on a flash drive) media kit that will contain artwork, photos and logos. The language would let the media know that they can only use the downloadable items in a "positive, non-defamatory manner." Is there "boiler plate" language that I can use for this purpose? If your goal is to prevent people from using your copyrighted materials for anything other than "positive, non-defamatory" purposes, we think you need to rethink your goals. It's a little bit like a music company telling a  music reviewer she can reproduce an album cover ... but only if the review is favorable. We think situations like this create hurdles of enforceability.
Is it a warning or a contract? When you allow people to reproduce your content, you are granting a license. But in order to create a binding license -- one that permits you to step in and stop unauthorized uses -- you need to prove that you entered into an agreement. As we've mentioned before, the most effective end-user licenses (EULAs) require some type of actual agreement -- typically a click-to-accept checkbox or button. These mechanisms for "agreeing" come in many shades and as a general rule, the easier it is to demonstrate that the other party agreed to the terms and conditions, the easier it will be to enforce the agreement. On the other hand, some licenses -- such as Creative Commons licenses -- require less proof of consent. These are more like warnings that say, we will not sue you for copyright infringement if you do certain things (for example, provide attribution) but we will sue you if you don't.
Defamation and "positive" purposes.  If a user defames you or your company, you don't need a EULA to go after them. Defamation laws permit you to recover damages regardless of the licensing arrangement. Your biggest challenge is to be able to define positive uses. For example, which meaning of 'positive' are you referring to? Certainty, acceptance, and affirmation (as in "positive criticism"), or a use that implies moving forward in a direction of increasing progress? Does the use have to be 100% positive? What if it is 40% positive? Is it a subjective, arbitrary, or objective standard? Unless you can set forth a clear definition of the uses that are acceptably positive, you will have difficulty enforcing this vague contractual condition in court (and the ambiguity may even invalidate the agreement).
Fair use? Finally, always keep in mind that copyright laws permit limited unauthorized uses of copyrighted materials for purposes of commentary or criticism. Whether fair use trumps a license agreement, or whether the license agreement is valid are matters that would need to be decided by the courts. Depending on the size of your distribution network, you may want to prohibit all uses -- with the exception of the right of the user to load and view on the user's computer -- unless approved by you. That would allow you to have total control over reproductions.

Tuesday, January 24, 2012

Is the Warhol Banana Public Domain?

Dear Rich: I read that the Andy Warhol banana is in the public domain. Does that mean anyone can use it? The Dear Rich Staff is so old that we remember when our friend, Paul Dodd, bought the 1967 Velvet Underground album, The Velvet Underground and Nico. The cover featured a peel-able banana (underneath the yellow banana skin was a flesh colored banana). Alas, subsequent pressings weren't peel-able. The image was so popular that VU fans eventually referred to the recording as the "Banana Album."
PD or not PD? The Warhol image on the cover may now be in the public domain -- at least that's what the VU's founders hope. They recently sued the Warhol estate over the licensing rights to the image. The VU claims that the image is in the public domain because the album cover was printed in 1967 without copyright notice. Back in the old days (pre March 1989), a published work had to contain a valid copyright notice to receive protection under the copyright laws. (This requirement is no longer in force -- works first published after March 1, 1989 do not have to include a copyright notice to gain protection under the law.) The VU's founders are asking the court for a declaration that the banana imagery is PD which will make it easier for the band to argue that the image functions as the band's trademark and that they, not the estate, are entitled to licensing revenues. You can read the gruesome details of the lawsuit here.
Bottom Line Dept. We wouldn't presume Warhol's banana is public domain until a court rules on the matter. Even if it is public domain, it's unclear whether the VU can assert trademark claims and how far those claims will go -- for example, whether the VU can prevent use of the image on non-band related merchandise.

Monday, January 23, 2012

Ryan Gosling Memes: Infringing?

Dear Rich: I read your explanation about using paparazzi photos and it made sense. But then how do you explain the Ryan Gosling meme? I assume that most of the photos that are being used were taken by professional photographers, and I doubt if many of the web sites and Tumblr accounts that have been spreading them are paying for permission to use the images. How can you know when it is ok to use an image without getting permission? For those over-worked readers who are always late to the viral party (and perhaps still not familiar with Rebecca Black, Obama Girl, and LOLcats), the Ryan Gosling meme refers to the collection of Ryan Gosling photos that are modified with captions -- always a short statement attributed to Ryan that starts with "Hey Girl" and follows with some invitation to intimacy or a proclamation of love, devotion etc. The meme has split into various trails, including a feminist Ryan Gosling meme  and a Silicon Valley RG meme (that includes a rare patent law reference).
Hey Girl, Can You Copy Me? As for the legal rights connected with meme-ing, the Dear Rich Staff believes that if you're asking about permission to use Ryan Gosling photos, you're also probably wondering about how often you need to get your cholesterol checked. In other words, folks who meme usually don't care about no stinking badges. It's true that all of the Ryan Gosling photos are likely protected by copyright law, but for some reason we're not hearing of any copyright owners going after these folks (and Ryan, himself seems to condone the use as well -- so much for right of publicity claims). Of course, the Internet use is one thing -- and we can understand why copyright owners might be gun shy about going after a popular meme -- but the reproduction in a book does require permission (and is expensive -- scroll down to the Jan 14 blog entry). Although some copyright owners do have a breaking point, we think most of these fleeting Internet memes tend to fly under copyright radar.

Friday, January 20, 2012

Should I Reveal My Invention to Attorney?

Dear Rich: I have a series of inventions, but for right now my only focus is one and it is one of rather strong global consequence. Which is a big statement to make I know, but I also know what it means for global health. I am feeling trapped just by my ignorance of the best way to protect myself and even though I am going to an I.P. lawyer tomorrow the intimidation factor is quite strong. I know enough to inquire of the attorney's engineering background, patent experience and a full quote as well what payment arrangements would be expected and a reasonable expectation of a timeline. I do not really intend to reveal what it is I have as I am so afraid of losing the control of it, it's that attractive. The application is industrial in nature and affects every single exhaust source in the world. I realize you will read this most likely after my initial meeting but I intend to basically interview this lawyer, test the waters and listen closely. We're not sure what your question is, but we assume it has to do with whether you should (or when you should) make invention disclosures to an attorney. We know that many inventors see attorneys and manufacturers as wolves in corporate clothing and although we don't agree, we understand the paranoia. We're reminded of David Mamet's 1992 movie, The Water Engine, in which the creator of a machine that ran on water -- loosely based on the tale of these inventors -- was double crossed by crooked patent attorneys. The inventor had the last laugh (spoiler alert) when he prevented any commercialization of his invention and his patent drawings turned to dust in an attic.
Invention = disclosure. At some point every inventor who wants to commercialize an invention must make disclosures. These disclosures may be to the patent office, to business partners, to attorneys, or to manufacturers. Even if you seek to protect your invention under trade secrecy law, you will need to disclose it to others under the protection of a nondisclosure agreement.
Attorneys and disclosures. There is no reason you must disclose your invention at your preliminary meeting with your patent attorney. But if you retain this attorney, you will have to disclose your invention. Otherwise the attorney cannot properly assess its value and the protection it requires. Your communications with the attorney are privileged, meaning that unless you authorize publication, the attorney cannot disclose what you say. (BTW, USPTO rules establish confidentiality requirements for patent agents.) One situation in which you must make a public disclosure is if a patent application is filed. Unless you do not plan on filing foreign applications, your U.S. patent application will be published eighteen months after you file. Alternatively, if the patent is granted, it will also be published.
The trick with disclosures ... We believe that proper precautions should be taken when making invention disclosures. Maintain your information with secrecy and only disclose it under the protection of privilege, or nondisclosure agreements. But, perhaps more importantly, try to use personal radar to determine whether you can trust those to whom you have made disclosures. For example, prolific inventor Maurice Kanbar had a strong 35-year relationship with his patent attorney, Mike Ebert. In his book, Secrets from an Inventor’s Notebook,  Kanbar wrote:
“Most basically, you need to be able to communicate with your attorney. I can call Mike on the phone, describe my idea and detail its mechanics and Mike will ‘get it’ instantly and start writing it up. If an attorney has a different understanding of your invention, or if he or she doesn’t quickly get your drift, go elsewhere.”

Thursday, January 19, 2012

Voice-Over Release and Audiobook Permissions

Dear Rich: How can I get permission to record a book for audio production? Do I write to the publisher and author? If the author has signed a publishing contract (that is, the book is not self-published), chances are good that the publishing company has the audiobook rights. That's standard operating procedure for everyone except superstar authors. If you're an experienced audiobook producer,  the publisher will likely respond to your inquiries. But if you don't have much experience --  for example, you haven't got any of your productions at audible.com --  chances are slim that a publisher will negotiate with you. If the book is self-published -- for example, it's offered via Createspace -- the author retains the rights and it should be easier to contact and negotiate.
What's a novice audiobook producer supposed to do? One way to break into the audiobook production world and acquire experience is to record public domain books (and there are a few centuries of good material available to download). (We just finished listening to Leo T.'s Anna Karenina and wow, that was amazing!!) Another possibility is to sign up with the Audiobook Creation Exchange (ACX), sponsored by audible.com. That system pairs audiobook producers with established publishers and authors. We've prepared a free sample voice-over release to use with your narrators. You can read more about it, here.

Wednesday, January 18, 2012


Which is worse?
Join us in not using soap today!

SOPA (Stop Online Privacy Act) Soap (as in detergents)
Enables the Department of Justice (or private parties) to "blockade" so-called pirate sites outside U.S. jurisdiction by cutting them off from search engine results and AdSense revenue.
Enables freshwater fish to better absorb pesticides and phenols often causing twice the damage to wildlife.
Destroys the safe harbors of the DMCA.

Destroys the external mucus layers that protect fish from bacteria and parasites and causes severe damage to the fish gills.
Could make non-pirate sites (such as Yahoo, Flickr and Scribd) liable for infringement.
Could – in the case of antibacterial soaps that contain triclosan – cause hormonal/endocrine damage in humans.
May contribute to loss of jobs and diminished revenue in the tech sector.
May contribute to major phosphate pollution and toxic contamination of the Great Lakes and other waterways. (In 2010, 16 states banned phosphate sales causing many consumers in need of "sparkling" dishes to travel across state borders to buy "contraband.”)
Say No to SOAP and SOPA!
Our SOAP facts came from:

Tuesday, January 17, 2012

Getting Paid for Reporting Software Infringement

Dear Rich: Is it true you can get paid for reporting software infringement? I would love to report an ex-employer. Does it matter if I am in Ohio and the ex-employer is in Indiana?  Yes kids, here's another way to make money at home! Apparently, you can earn some serious bucks for reporting software infringement (provided the report results in a settlement or judgement). The Business Software Alliance will cut you in on payments it receives as result of your reports. You need to fill out a form and proceed through the BSA process. It doesn't matter where you are located as long as the employer is located in the U.S.

Monday, January 16, 2012

Won't Pay for Photos: Can We Demand Takedown?

Dear Rich: I am a professional photographer with question about transfer of copyright. Recently I did a job for a customer. As usual I provided them the images and sent them an invoice. The invoice clearly describes the permitted usage and terms for payment. The customer sent the images to a major retail chain to use on their website, which is apermitted use. Currently they are about 60 days late on payment and will not return e-mails or take my calls. Am I correct to assume that since they have failed to adhere to the terms of payment they do not have the right to allow the retailer to use the images? If so can I request that the retailer remove the images from the website? The amount that they owe me does not warrant legal action. I have the feeling that the only way to encourage them to pay is to inform them that I intend to ask the retailer to remove the images because the vendor has failed to pay for the images. Speaking of professional photographers, can we take a moment to digress about one of our favorite shutterbugs (and full disclosure -  a former client)? He's Bobby Neel Adams and he's great (we've got a print of the photo, above, in our office). It's from a strangely upbeat series of Adams photos of landmine victims called Broken Wings. We could go on and on but just check out his work.
Right, you had a question. You may consider this as bad news, but -- assuming you have entered into an enforceable contract with the customer -- it would be improper for you to ask the retailer to remove the photos. You could only do that if the use was unauthorized. In this case, the use apparently was authorized --  you just haven't been paid for it. If the contract was fraudulently induced and the contract was rescinded (as explained in this case), you could proceed as an infringement action. But it's usually much more difficult to prove fraudulent inducement (the other party never intended to pay you) than to prove contract breach (the other party delayed paying you). Typically, in situations such as yours (and in this case and this case), your remedy is to sue the customer for breach of contract. That may sound wrong to you. After all, if you haven't been paid how can they use your images? So what's a photographer to do?
Some options. The gang over at PhotoAttorney state that it's possible to insert language into a contract that would permit an infringement lawsuit if payment is not received. The language indicates that no rights can be exercised until payment is received and that any such uses will be considered willful infringements. (The crew at ASMP supports a similar position.) We think the provision could be improved by adding a statement to the effect that, "In the event that rights are granted prior to payment to photographer, this contract shall be automatically rescinded."  We can't guarantee the enforceability of the provision (because a court is the ultimate authority on whether a contract is rescinded), but it should come closer to meeting the standards explained in the cases cited above. BTW, you may want to check out our answer to a similar photo question.

Friday, January 13, 2012

But Wait ... There's More ...

We just noticed that Amazon is having a $16 special on Patent, Copyright and Trademark, our IP desk reference. That's probably because a new edition is coming out in a couple of months. Still, that's a pretty good deal. And speaking of good deals, Amazon Prime members can currently get a free Kindle version of our trade secret book, Protect Your Trade Secrets (as well as our new YA novel, I Didn't Kill Your Cat).

John Does, ISPs and File-Sharing Lawsuits

Dear Rich: What does it mean to get a notice from an ISP saying that you've been named as a John Doe in a copyright lawsuit? Does that mean you've been sued or not?  In court proceedings, the names John Doe or Jane Doe -- or John or Jane Roe --  are used as legal placeholders (scroll down) for various reasons. Sometimes they are used to protect the identity of the person bringing the lawsuit -- for example,  as in the landmark Supreme Court case, Roe v. Wade. In copyright litigation, Doe defendants are commonly used because the copyright owner wants to file the lawsuit but doesn't know the identity of all the parties. For example, if a record company wants to pursue various file-sharing infringers, they may only have the IP addresses of the computers but not the names of the people who own those computers. The copyright owner files the lawsuit naming "DOES 1 to 100," and then seeks the identities of the Doe defendants from the Internet Service Provider (ISP). The ISP then notifies the individual users and usually informs the user that the ISP will reveal the identity as required under the user agreement, or per a court order, or subpoena. In order to enforce the claim or judgment against you, the copyright owner will eventually have to swap your name in for one of the John Does. Until that happens, you're not "officially" in the lawsuit. But that doesn't mean you're off the hook. If you got a notice from your ISP, you should review this article, and consider consulting an attorney promptly. If you don't do anything, the copyright owner may obtain your identity, and then obtain a default judgment against you. That could be painful.

Thursday, January 12, 2012

Can I Reproduce Images From Gray's Anatomy?

[REVISED 1/13/2012 -- Please see comment posted below]
Dear Rich: I am trying to get through the murky waters regarding what constitutes public domain. I design patient education fliers for many different departments in a medium-sized hospital. We are having trouble getting permission from most medical illustration resources to create these materials with external illustration without going way over budget. The problem being we can't offset the cost of purchasing the usage rights for patient materials since we're not selling these images -- we're giving them out free as a much needed service. I have found a site called Bartleby.com and they have a huge number of wonderful illustrations from the original 1918 printing of Gray’s Anatomy of the Human Body that I can use for these materials. The pitfall is our research librarians aren't certain if we are allowed to utilize any of the online imagery since it's saying the company renewed the copyright in 2000. If I use the reproduced 1918 digitized illustrations from the Bartleby site am I violating any copyright? Or am I well within the public domain period to use these images without permission or attribution? First of all thanks so much for asking about Gray's Anatomy because that allows us to put the book title into our header which may fool alternate-spelling Internet searchers seeking information about the popular TV show (Grey's Anatomy). We're not sure if that's a deceptive business practice (class action attorneys take note), but we hope that it is. We need to do something to jumpstart our Blawgsearch rankings. Also, we hope you don't mind that we cut 212 words from your question. That gives us more space to blather on and hopefully will keep our bounce rate down.
Right, you had a question. Good news. Copy all you want from the 20th edition of Gray's Anatomy. You're free to copy it from Bartleby.com (we discuss their terms of use, below), or if you're uncomfortable with that, use any of the 1247 graphic plates from the book that have been digitized and posted at the Wikimedia site. When you click on any image there, you'll see an expanded reproduction and this tag on the bottom of the page.
This faithful reproduction of a lithograph plate from Gray's Anatomy, a two-dimensional work of art, is not copyrightable in the U.S. as per Bridgeman Art Library v. Corel Corp. ...
What's that mean? It means that the original image in the book is in the public domain in the U.S. and that slavish digitized reproductions (exact copies) are also in the public domain, per the Bridgeman case. Because you're only asking about print rights in the U.S., we don't address worldwide rights (and we are not sure that you can rely on Wikimedia's conclusions regarding worldwide use, as well. You'd be better off consulting Steve Fishman's Public Domain book.
What about the terms of use at Bartleby.com? Bartleby.com's terms of use claims, "All materials published and provided on the [site] are protected by copyright ..." That kind of wishful thinking is popular at a lot of sites that publish public domain works. It's true that the 21st through the 30th editions of Gray's Anatomy are protected, but the 20th edition published in 1918 --  the one featured at Bartleby.com -- is safely in the PD. Unless the site has done something original to the works, for example, added distinctive coloring and titles, there is no claim the site can make to the images.
P.S. Dept. We recently answered a similar question and provided more detail about the public domain.

Wednesday, January 11, 2012

Must Ex-Employee Disclose Post-Employment Inventions?

Dear Rich: Can an employer in California require an ex-employee to disclose all inventions created after the employment has ended. I've been asked to sign an agreement that requires me to disclose all inventions I create even for a year after I leave the company? The Dear Rich Staff is always fascinated by post-termination provisions. Yes, they are usually insidious, over-reaching, poorly drafted, and a desperate attempt to assert control by the legal-capitalist puppet-masters. But there's also an element of hopefulness to them. After all the employer sees some kind of future for you. So, when you get that call from the HR department and you start to see pink, remember that the employer who is about to end your career also has enough faith in you to pursue you for months after you've cleaned out your desk.
Right, you had a question. We can't say for sure whether your post-termination clause is enforceable but we can give you some background. California's Labor Code Secs. 2870-72 sets the rules for some invention disclosures. That law prohibits the employer from claiming rights to inventions you create on your own time with your own supplies and equipment. It also permits an employer to require employee disclosures of all inventions created during the course of employment. Unfortunately, it doesn't say anything about disclosures made after employment is terminated.
Two cases that shed a little light. In a 2006 case, STMicroelectronics v. Harari, a federal court indicated that California's disclosure requirements could be construed broadly for purposes of protecting an employer's trade secrets (although it didn't specifically address post-termination provisions.) In Yield Dynamics v. Tea Systems, a California Court of Appeal looked at a post-termination disclosure and ruled that an ex-employee had honored it. Again, the court didn't specifically address whether such clauses are always enforceable.
California policy. We think that a California court will consider it unenforceable if the provision is primarily being used as a means of preventing you from competing (that is, like a noncompetition clause). If a court considers it as a legitimate attempt by the employer to preserve company trade secrets, it is more likely to be enforced. The factors that are likely to tip the decision are the length of the provision (generally the longer, the less enforceable), the industry, or category of technology or invention involved (in some industries such as high-tech, trade secrets are short-lived), and the relative behavior of the parties (for example, it would be less enforceable if the employer customarily uses this provision to hassle ex-employees). We also think this is something you should make your new employer aware of as you want to avoid disclosing any newly acquired trade secrets. It's also the kind of thing you may want to consider hiring an attorney for an opinion.

Tuesday, January 10, 2012

Can I Copy Craigslist Ads?

Dear Rich: I am a book editor working on a collection of some fiction, some personal narratives, some nonfiction. I've asked one writer to rewrite a personal narrative because it included four lines from a fairly recent pop song (or get permission to use the lines though I warned her that there would probably be a pretty stiff fee and the publisher wouldn't pay it). She wants to submit a different narrative instead that quotes several Craigslist ads. Are those ads considered to be copyrighted? Would we contact Craigslist? Or try to contact the author of the post? We rarely use Craigslist (except to check houseboat prices and obscure audio equipment) but we have a fond spot in our heart for the site because we used to live in the Sunset District of San Francisco and we remember riding our bicycle by the tiny storefront office at 9th and Judah Streets many, many years ago and wondering what the heck is Craig’s List? Then – boom – it was a global phenomenon.
Right, you had a question. Craigslist doesn't claim the copyright on individual posts (see the Craigslist terms of use -- scroll down to Section 14, Proprietary Rights). Craigslist does claim a copyright (collective works) in the cumulative content on its site, but that’s primarily to stop others from scraping and reposting large chunks of its content.
So is there a copyright and if so, who owns it? Under copyright law, the author of the work (the Craigslist ad) claims copyright. But that presumes the posting is a copyrightable work and it's not always clear if that's true. We think the determination depends on the ad's length and the unique language used in the ad. As a general rule short phrases, or “stock” advertising terms are not protected under copyright. And under a principle known as the merger doctrine (or idea/expression doctrine), a want-ad writer can’t claim copyright if the ways to express an ad are limited -- say “Roommate Wanted: No Meat Eaters, Please.” Even if a want-ad can be protected under copyright, the reproduction in a book might be excused as a fair use (or as a de minimis, or “trivial” use of the material).
Conclusion Dept. As general rule, if you are simply quoting a few Craigslist ads in a personal narrative – and particularly if you are using those excerpts for purposes of commentary or criticism -- you can probably exercise your rights under fair use.
The music thing. Because you didn’t ask, we'll sidestep your comments about reproducing four lines from a pop song.  But if we were a betting blog, we’d bet that most such uses in a personal narrative would be excused as a fair use.

Monday, January 9, 2012

My Book Uses Paparazzi Photos

Dear Rich: Was lucky enough to be offered a book deal by a major trade publisher. The publisher intends to publish my book in both electronic and print format and sell it to all the major book retailers that still exist. The book is to include tons of paparazzi-esque celebrity photos and wanted to know how to go about this legally. Do I have to get permission to use each and every one from the photographer? Are there services that do this in batches? Are there any fair use of public domain instances I should be aware of? Because you mentioned the word "paparazzi," we must take a moment to honor Federico Fellini, whose film, La Dolce Vita (how did Anita Ekberg get that kitten to stay on her head?), introduced the character, Paparazzo, a photographer. That eventually led to the generic use of the term paparazzi, for annoying celebrity photographers.
Right, you had a question. As annoying as such photographers may be, they are still entitled to copyright for the photographs they take (though those copyrights are often sold to celebrity mags, licensing agencies, and TV shows). There are agents and photo reps who can acquire rights for you -- for example, the American Society of Picture Professionals can set you up with a photo researcher. But the costs for such experts may be cost prohibitive. You may find it easier to use licensing services such as PRPhotos.com. For example, we sought to license an image of Brad Pitt for use inside the first edition of a book and could have acquired the license for $200 (see below).
Again, that may seem prohibitive for many but we're afraid that's typical for licensing photos for print purposes.
Fair use and public domain. As for fair use and public domain issues, we don't think you're likely to have much luck with either claims. Fair use is a defense which means you and the publisher have been dragged into a dispute. That's not a good position for an author, particularly if your contract has established that you'll indemnify the publisher. As for the public domain, it's unlikely celebrity photos are in the public domain unless: (1) the photographer donated it to the public domain, (2) the photo was taken by a federal employee within the scope of employment (think of Nixon shaking hands with Elvis), or (3) the photo was published before 1923 (Will Rogers, anyone?).
Creative commons. You may want to look for celebrity photos that are offered under Creative Commons licenses. Finding these photos requires some search engine chops but it can be done. Note that many celeb photos are illegally posted on the web and the interloper labels them as Creative Commons, so unfortunately, you can't always count on the labeling; you need to go to the source, for example, the photographer's Flickr site.

Friday, January 6, 2012

Can I Use Ex-Employer's Customer List?

Dear Rich: Simple question: Can my ex-employer stop me from using the customer list I developed when I worked for him? Sorry, but it's not that simple. You should check out this article to determine whether your customer list qualifies as a trade secret.  If it doesn't, it's unlikely that it can be protected by state trade secret law or an NDA you may have signed. On the other hand, state laws vary and most states honor noncompete agreements (not California) which may affect your ability to compete against your ex-employer by soliciting his clients. So, if you signed paperwork with your ex-boss, now's the time time to review it (or have an attorney review it).

Thursday, January 5, 2012

Somebody Took My Dot-Org

Dear Rich: A company has copied our domain name but used it with a dot-org, not dot-com like we do. I thought you had to be a nonprofit organization to get a dot-org domain name. Can anybody be a dot-org? The Dear Rich Staff is sorry to hear that you are no longer the master of your domain ... and yes, anybody can be  a dot-org.
The skinny on TLDS. When top level domain names (TLDs) such as .com, .org, .gov, .net, and .edu were created by the Internet Corporation for Assigned Names and Numbers (ICANN), the intention was that each TLD would cater to a specific type of domain name holder. For example, .org was intended for nonprofits, and .net for network related entities. But only some TLDs are really restricted--for example, .edu for educational institutions, .gov for government agencies,  and .mil for military agencies. To get one of these you must qualify. But that’s not the case with .org, .net, and .com. all of which can be obtained freely by just about anyone, for any purpose.
What can you do about the interloper? If someone has taken your company’s trademark and is using it in bad faith to compete against your business as a .org, you can either sue for cybersquatting in U.S. federal court (very expensive), or you can request ICANN arbitration (approximately $1500 if you use only one arbitrator). We discussed cybersquatting in a recent post.
P.S. Coming Soon: Custom TLDs. ICANN has announced that companies can – commencing January 12, 2012 -- buy custom TLDS. For example, Nike can buy exclusive rights to .NIKE and Apple can buy .APPLE. Supposedly these custom domains will sell for $185,000, so it's for serious players only.

Wednesday, January 4, 2012

Can We Use Cars in CD Cover Art or Movie?

Dear Rich: On music CDs and in the movies I see images of different kinds of cars, and I wonder if the artist has had to pay any royalty to the car manufacturer. For example, the Beatle's Abbey Road album has a white Volkswagen Beetle right behind George Harrison. Does this imply endorsement of Beatle's music by Volkswagen Motor Company? And remember Walt Disney's use of a Volkswagen in the movie, The Love Bug. There are many classic old Fords and Chevys seen in movies all the time. Also, there is a musical group called REO Speedwagon. Using a car's image or trademark may (or may not) trigger problems on a CD cover or in a movie ... it depends on a few factors.
The Abbey Road Cover. The image of a VW on the Abbey Road cover (above) is unlikely to trigger any trademark issues because the usage is primarily editorial -- that is, it's an incidental use and no particular attention is drawn to the car. Of course, at the time, fans saw hidden meanings in the presence of the car (Beetle =  Beatle) but it turns out the car was simply a vehicle owned by someone in a nearby flat. (BTW, the license of the car was stolen soon after the album came out). If consumers were likely to be confused into thinking that Volkswagen (or any other car manufacturer whose vehicle appears on the street) endorsed the Beatles (or vice versa), the car company never saw fit to take action. After all, if the world's most popular band at the time is including your product on a popular album, that's not something you're likely to complain about. (In general, it was a less litigious world back in 1970.) BTW, an editorial use of a trademark -- for example, a picture of a Ford truck in a documentary about trucks -- is not infringing.
Herbie and VW Marks. As for Herbie and the Love Bug movies, Disney removed the name and logos (scroll down) from Herbie in the first movie in the series. Apparently the company was concerned about claims of trademark infringement. But several years later when the sequel appeared (Herbie Rides Again) in 1974, VW sales were down and the VW company insisted that Disney put the trademarks and names back. (The names and marks stayed on Herbie for the subsequent four Love Bug sequels.)
REO Speedwagon. The band, REO Speedwagon, was able to get away with using the name and logo of the REO Speed Wagon company probably because the auto company had likely abandoned any claims to the mark when it ceased production in 1936 (or some time in the later 1940s -- we're not sure) or perhaps when the later owners of the REO Motor Company declared bankruptcy in the early 1970s. An abandoned mark is free for anyone to use, although ceasing production of an automobile is not always a clear sign as to the status of the mark.
As a general rule, you want to avoid making people think the car company is affiliated or endorses your product or service -- for example, calling your band Miata -- or diluting a famous mark by tarnishing its reputation in a commercial context. However, we also note that there's plenty of leeway in these standards as the Caterpillar company found out when they tried unsuccessfully to prevent the use of their villainous tractors in a George of the Jungle movie.

Tuesday, January 3, 2012

Will Disclosure Docs Help Under First-to-File?

Dear Rich: Once the change is made to “First Inventor to File” under the America Invents Act, will the USPTO still accept filings of invention disclosure documents, as these would still be relevant and useful in derivation proceedings? Hey, welcome back everybody. It's 2012 and we're starting our fifth year of helping creative types answer pressing intellectual property questions. Sure, we never get selected for any "Best of" blog lists, and our Google Analytics are embarrassing, but hey, that's what happens when you're down in the trenches answering questions about Disney princess costumes, Miami Heat logos, and the copyrightability of reuben sandwich recipes. We're not sure how many zillions in dollars we've saved our readers in legal fees (or if we've actually saved anybody any money). But the important thing is that we think we're doing something worthwhile and so we continue on, paving a course that's punctuated by moments of unobscured clarity and unsuspected profundity. Did we say, "Welcome Back?"
Right, you had a question. Yes, disclosure documents might be helpful in the soon-to-come "derivation hearings" -- a process whereby the true creator of an invention is determined. However, if you are referring to the government's official Disclosure Document Program, that's been discontinued and so would not be available when first-to-file (and derivation hearings) kicks in on March 16, 2013. Patent it Yourself author David Pressman agrees with you that a record of conception and testing will be vital in a derivation proceeding, but in the absence of disclosure document filings, inventors will have to keep their own records. By the way, we've posted a series of articles on invention ownership issues at our Patents and Business site.