Is it Too Late for TM Registration?

Dear Rich: I made a computer game in early 2000, and never bothered to register a trademark for the title. It was a small online casual game, available for free worldwide, later released for mobile as well. Now I decided that better late than never, and I'm planning to start the TM application in U.S. The question which I'm unable to find an answer is: Is there any limit on the delay between first use and TM registration? And second, does it matter that in the intervening years, several similar games were released which used the same or similar names? It doesn't matter how much time has passed from when you began using the mark; what matters is whether you abandoned the mark during that period. If you have continuously used the mark -- for example, the game was always available in some download format for users -- then you probably haven't abandoned it.
What's abandonment? Abandonment occurs when the mark is no longer used in commerce and there is sufficient evidence that the owner intends to discontinue use of the mark -- for example, a company stops filling orders and tells vendors that the product is discontinued. Under the Lanham Act, a mark registered with the U.S. Patent and Trademark Office is presumed abandoned if it is not used for a continuous period of three years or more.
What about similarly named games? If other games have appeared with similar names, that could be a hassle. Have any of these other game-makers already registered the mark? (Here's an explanation on how to search trademark records). If someone else registered it, it's going to be a challenge to displace the registered mark, even if you can demonstrate that you were the first user (and have "priority"). At the same time, if you seek a federal registration, it's possible that one of these other users will seek to oppose your registration, or alternatively, will fight back if you seek to stop their use. Because your course may be tricky to navigate, a trademark attorney's advice can help.

Wants to Publish Poetry Contest Winners

ogden nash

Dear Rich: I am publishing an anthology in which I will include poems from my blog poetry contest. Several poets entered the contest and when I've tried to find them on the internet, to get permission, I can't find them. Since they willingly sent their poems to my blog, do I need their permission to put them in my anthology? I give them credit, of course, with their names and the reference to my blog contest. Or would it be better to delete the ones I can't contact? Publishing poems without express or implied permission is infringement unless you can claim fair use (which seems unlikely in your situation). However, we have a feeling you will be able to publish without perishing.
Are you sure the poets haven't consented? We haven't seen your contest solicitation but every writing contest we have seen provides some rules about rights, particularly if a selection is chosen as a winner or runner-up. Did your solicitation contain any statement that could arguably imply permission? Even if not, you may be able to argue that furnishing an entry implied that the winners expected to be published and consented by way of an implied license. We can't guarantee that argument will work in your case but it would succeed, for example, when a letter to the editor is published. (Implied licenses and related permission are discussed in this poetry-related entry.) (Certainly, your future contests should contain a statement that winning entries will be published.)
Should you publish? We can't tell you whether to go ahead without permission. As a general rule we would be more inclined to proceed without permission for an online, electronic anthology than for a print publication. That's because the online entry can be easily taken down if there is a complaint, while the print publication is irreversible. In any case, if you can't find the poets online, it's equally possible that the poets won't find your anthology, in which case, the risk is diminished substantially.

Compulsory License for Beck's "Song Reader" Album?

Dear Rich: Last year Beck Hansen released his 'album' Song Reader as sheet music and invited artists to record and share their versions (mostly via SoundCloud), but he did not sell a recorded album. I made a set of these songs and would like to distribute my 'versions' derived from his chords and lyrics, on iTunes. I don't understand what license I need, who to pay, or how to get it. The songs don't show up at Harry Fox, and I'm sure Limelight will take my money but I don't think that is the right path either. The sheet music has what looks like bogus publishing companies listed, but there is a Beck Hansen credit on each one. I just want to do the right thing. One of my SoundCloud followers worked on Song Reader and suggested I get in touch with Kobalt, they're 'contact us' folks sent me the generic mechanical form. I feel like this is different.  As we explained in a previous post, when an artist releases an audio recording, copyright law allows anyone else to thereafter release "cover" versions of that song without asking for permission, provided that a compulsory mechanical license fee is paid and certain rules are followed. According to Section 115, the compulsory license kicks in "When phonorecords of a nondramatic musical work have been distributed to the public in the United States under the authority of the copyright owner ..." Beck never released a sound recording (phonorecord) of the Song Reader and the compulsory license would not have been triggered by the release of the book.  
However ...  Keep in mind that the real key to a compulsory license is the phrase "under the authority of the copyright owner." If Beck (assuming he is the copyright owner) has authorized someone else to make and distribute recordings, he would trigger the compulsory license right. At least two artists, Amy Regan, and the Portland Cello Project, appear to have released authorized recordings. More importantly, when our staff spoke with Beck's publisher Kobalt Songs, (see screenshot, below), we were told that they grant Song Reader compulsory licenses. That would explain the presence of the Song Reader compositions at Limelight as well. So, a license from Limelight, or Kobalt, should secure your ability to sell your versions at iTunes.
P.S. As noted, Beck has set up a website for musicians to contribute their versions of Song Reader compositions.

screenshot from ASCAP site

Threatened Over Framing of Website

Dear Rich: Our company acquired some websites. It is all legacy content that we are dismantling. However, an individual has threatened us over a copyright issue relating to our framing of their site at one of these sites. It made me wonder about the validity of the claim since we haven’t actually done anything with the content except wrap it to look like it’s on our site. Is there a copyright or trademark claim for such a treatment? Framing -- the method by which a user views the contents of one website while it is framed by information from another site -- is a gray-ish area in intellectual property law. The issue first "came to a head" about fifteen years ago and experts agree that these types of claims remain complex with the outcomes hard to predict. (That may be why these cases tend to settle without court rulings.) In general, a framer is more likely to be found liable for copyright or trademark infringement if copyrighted material is modified without authorization or if customers are confused about the association between the two sites or the source of a product or service.
What about the case law? Websites that frame the content of other sites were initially perceived as stealing the other site’s content. One court found framing to be a copyright infringement because the process resulted in an unauthorized modification of the linked site. (Futuredontics Inc. v. Applied Anagramic Inc.) In another case, The Washington Post, CNN, and several other news companies sued a website, TotalNews, which framed their news content. Under the terms of a settlement agreement, TotalNews agreed to stop framing and agreed to use text-only links. Inlining and framing are often used together when displaying thumbnails of search engine results. The Ninth Circuit has ruled that such uses are fair use. There's more on the subject in this article and here's a summary of some international rulings.

Can I Get Licensee to Pay Patent Fees?

Dear Rich: I am currently waiting for an evaluation from Lambert and Lambert Inc., a well respected licensing company that works on contingency. However, they do not pay filing fees for patents and being on a limited budget I have been brainstorming on how to get past this hurdle. From provisionals, utility, design patents and the price of patent attorneys come a myriad of expenses that add up quickly. Hence I have been considering, if L&L are interested, to get the prospective company to sign a confidentiality agreement, in order to review the invention and if interested either pay for filing fees or forego the patent all together and simply go to market with it. So my questions are these, how hard is it to get a big company to sign such an agreement? You're correct that Lambert & Lambert enjoys credibility among independent inventor groups. Good luck with that; if they take on your case, it could be an indicator of your invention's potential commercial appeal. We're not familiar with the agreement that L&L presents to inventors so we can't address whether you are permitted to negotiate or discuss contract terms with potential licensees. In some cases, a licensing agent has control over the paperwork and negotiation, and the licensor (you) can only accept or reject the choice of licensee or the key terms of the deal.
That Said Dept. What you're seeking -- to have the licensee pay the patent fees -- is not unusual. In some exclusive licensing arrangements, the licensee pays for the patent application processing and fees. These expenses, including attorney fees, are then usually deducted from the inventor's future royalties (although that's a subject of negotiation -- the parties may split the cost, or the licensee may pay it all). Why would the licensee pay the patent costs? Because it's usually in an exclusive licensee's best interest to have patent rights. On the other hand, you want these costs to be reasonable (good luck with soaring patent attorney fees) and sometimes these patent fee provisions include a cap on your total patent expenses.
Confidentiality. It's in your best interest as an inventor to have disclosures about your invention made under the terms of a confidentiality arrangement. Back in the old days (prior to March 16, 2013), you had a year of sales or public disclosures, before you had to file a patent. That one-year window is now closed with one exception for inventor-made disclosures.

Wants to Sell Merchandise With Celebrity Images

great dictators cornhole boards from dear rich staff

Dear Rich: I have a question about the right of publicity. I want to start a website where I post artwork of a celebrity every day of the year, with the capacity to sell merchandise of the artwork. Is it legal for me to draw semi-abstract art of living and dead celebrities without their permission (not including their name on the artwork itself), and sell such merchandise? If so, is there an authoritative source I can point to in order for a printing company to allow me to do so? We think you can probably get away with selling the artwork even with the name of the celebrity (for example as limited edition prints) but we think you may run into a problem selling t-shirts, night lights, cornhole boards, coffins and other celeb-branded merchandise. (Celebs like to control branded merch, no matter how kooky.)
Artwork or merchandise? What's the diff?  Right of publicity laws prohibit you from commercially exploiting a person's name, image or persona. On the other hand, the first amendment grants you certain freedoms to express yourself with so-called informational or "communicative" uses -- for example, original artwork, articles, books, or documentaries. Although each state has its own laws and rulings, the trend has been to permit limited edition art prints. For example, in an Ohio case, an artist painted Tiger Woods at the Masters Tournament and later sold more than 5000 prints of the image superimposed with other great golfers. (Here are some details on the artwork). A federal court of appeals ruled that the sale did not violate Tiger's right of publicity. A related ruling regarding paintings of the University of Alabama's football team -- though it dealt more with trademarks than the right of publicity -- also was in favor of the artist. A similar result was reached in a case involving the use of football player Jim Brown's name and image in a sports video game (The court considered the game to be art, though "not Anna Karenina or Citizen Kane.") However when the image use is on merchandise, the cases tend to rule in the favor of celebrities. (The term "right of publicity" was first used in a case involving a ball player's image on baseball cards.)
No copyright infringement. Also, we're assuming that the artwork is not derived from copyrighted photographs (or that your artistic abstractions make the source photo unrecognizable). Otherwise, you may be opening yourself up to another set of problems.

Does Charity Need Permission to Use Photos?

Dear Rich: We are planning to put up a free website of a non-profit charity project to benefit victims of a tragedy. We have questions: 1. Do we need to ask permission if we are using pictures of those people hit by the tragedy from the published newspaper? 2. Do we need to ask permission if we add links to our website and these links lead you to the TV and radio network? 3. Do we need to ask permission if we are putting links to You Tube video? No permission needed for questions 2 and 3, but you would need permission from whoever owned the copyright in the newspaper photos (probably the photographer, a news syndicate, or the newspaper, itself).  Without that permission, the copyright owner could claim infringement. As noble as your charitable goals may be, it's unlikely that they will matter much in your defense. (On the other hand, nobody can predict whether the newspaper will sue a charitable organization over a purloined image.) As for the victims portrayed in the photos, in general you need permission from real people when using their image for a commercial purpose such as raising money. However, from a practical POV, we don't imagine this will be an issue for a  charity seeking to help victims of a tragedy.

Searching the Copyright Renewal Database

Dear Rich: A friend of mine's husband had a book published in 1962 (listed as copyright 1962). He later reprinted a new edition of it in 1975 himself. When he died the rights were assigned to his wife. In looking at reprinting it again, I find that the Hathi Trust at U. of Michigan is making it available on their website as being in the public domain. I assume this is because they did not see a renewal for a second 23 years on the govt. copyright renewal website and assumed it fell into public domain. The thing is, his wife feels sure he did renew the book for a second 23 years, which would bring it to 1977 and thus be extended. However she is not able to find any paperwork on it. So I suppose my question is how complete is the Copyright extension database as accessed on the web? I know its possible they are missing one or two records, but is it known if there are gaps in their records? And is there a better way to make sure it was/was not renewed other than the web search? You're correct that the work would have to have been renewed for protection to continue but as one reader pointed out, you're looking at the wrong year for renewal information. A work that's published with notice in 1962 would have to be renewed in 1990, and if it was renewed, would then receive another 47 years of protection.
Renewal information. You're correct that not all renewal information migrated to the online database. As the folks at the Stanford Library explain, some of the renewal information was slow to move from the Copyright Office print card catalog into the searchable database. (You can read more about the card catalog here.) Stanford sought to correct that with its alternative renewal search system for books. Check that out as well as Rutger's database, and the University of Pennsylvania's online attempt to organize copyright renewal records by year. The most thorough (and expensive) way to verify renewal information is to hire someone to perform a copyright search. You can hire the Copyright Office for $165 an hour, or you can hire a private company to perform the card catalogue search.

Wants to Get Doll Into Stores

Dear Rich: I have an idea for a doll. What is the first step that I need to take to bring her to life? I believe as you have said that I need to get her name registered by the USPTO for approximately $300. Is this before I actually get her made? What do I do to bring her into major stores? As for your first question, we're not sure how to bring your doll to life but we feel there are frightening implications associated with the process.
Trademarks? As for whether to seek trademark protection, we recently explained the advantages of various types of doll protection, including trademarks. We also wrote about the steps for doll protection in a 2011 entry though you can disregard the info about Copyright Form CO (R.I.P.). Finally, we've written about modifying existing dolls and selling them, in case that's your modus operandi.
How do you get your doll into stores? That depends on the store. If you're dealing with crafty type gift stores that don't require extensive promotion or fancy packaging, you simply need a prototype to convince the store buyer to buy your doll or take it on consignment. (This article explains the differences between retail, wholesale and consignment sales.) We suspect that by "major stores" you mean Toys R Us or Wal Mart. In that case, you've got a long road ahead. You'll need to license your doll design to a major toy company (which likely will require a third party such as a toy agent). You can read about the licensing process online or in our licensing book. If you don't license your doll, your only other option is to manufacture and package the doll, yourself ... a daunting and expensive task.

Wants to License Video Game Merchandise in India

Dear Rich: Over time India has been growing as a vital part of gaming industry. Kids, teens and adults as well are strongly connected to games now whether it is PS, PSP, Xbox or PC. Gaming has become an integral part of our daily schedule. As a passionate gamer, I always want to show my dedication towards a particular game by buying the special gaming merchandise even if it be a 'bandana.' But for us Indian gamers it is really not possible to buy any gaming merchandise as such. Well I just wanted to know if, is there any license or other way where I could make custom gaming merchandise and sell it to the huge potential target market here? The merchandise which we would produce will be of highest quality as we mean to stay in this gig for a really long time. If not profit sharing, we can obviously think of any other workaround to accomplish this. Any help will be highly appreciated. It's been our experience that unless you represent an existing merchandise company -- that is, a successful maker of t-shirts, hats, or similar "merch," video game companies (the "licensors") usually don't want to hear from you. They're generally not willing to take a chance and put their brand in the hands of a novice. If merchandising is your goal, you can acquire credibility by (1) affiliating with an existing Indian merchandise company, (2) starting your own company and building a track record (we know, we know ... that's easier said than done), or (3) finding fledgling video game start ups in India and entering into agreements before they become big.
How it's done ... Acquiring permission to sell merchandise that incorporates video game trademarks or copyrighted material requires that you locate the owner of rights, negotiate an agreement, and execute the agreement in writing. However, the agreement used in merchandise licensing is usually more complex than a typical permission agreement and contains additional responsibilities and boilerplate -- for example, each party may seek warranties and indemnity.
Payment. You probably won't have much choice how payments are structured as the licensors usually dictate the terms. Typically, the licensor is paid an advance plus a royalty based on a percentage of income from sales. The company selling the merchandise (you, the licensee) must meet certain obligations including payments, quality control, and enforcement of rights. If you fail to do so, the license can be terminated.
For more information. This licensing article explains some of the legal basics, and this article explains some of the business basics. And this is what could happen if you sell merch without authorization.