Thursday, February 28, 2013

Can We Use Video of Deceased Musician?

Dear Rich: A musician friend recently gave a concert. (Let's call him the Musician.) He was a master of traditional folk music, so the tunes were either his distinctive arrangements of public domain music, or his original improvisations. The Musician was dying, this was his farewell concert, and he passed away about a month later. A friend of his (let's call her Ms. Go-Between) asked her friend to videotape the concert. No actual agreements were made with this fellow, and certainly nothing written. We assumed the Videographer was volunteering his services, as we all are. A group of us, friends of the Musician (including Ms. Go-Between), are actively fundraising to produce the Musician's legacy project: to bring out his unreleased recordings. Our online fundraising offers premiums for donations. When I started up this effort, Ms. Go-Between wanted to offer a DVD of the farewell concert as a premium. So we did that -- and it cannot be changed now as donors have started to claim these premiums. Ms. G-B also wants to use part of the video's audio recording on the future CDs. We're gearing up to do fulfillment of the premiums, in part using the DVD made by the Videographer, and now it gets sticky. It seems that he expects payment for each and every copy of the concert DVD we give away, Ms. G-B agreed. Videographer also claims full copyright on the DVD. It seems that at best there is a dual copyright on this video. One to the Musician's estate, as performer/creator of the material, and one to the Videographer who taped and produced the DVD -- is that right? If we pay him all or some of what he's asking, does he then fall into a work-for-hire category, and thus assign his copyright to the Musician's estate? If he does the right thing and gives it to us at cost (the original assumed agreement), does he then retain his copyright, and have some rights to the eventual music CDs, if his audio tape ends up being used in it? How much money is at stake here? If you are dealing with less than 100 orders, you might want to enlighten the videographer as to total sales of this disk (and that it is not expected to make him rich). You can agree to pay him a royalty based on the disks that are actually paid for by fans (thereby avoiding advancing funds on a speculative basis) You can also offer a lower royalty for rights to the audio recording because the videographer's claims are not as clear with that disk. Get the royalty agreement in writing and have the videographer assign all rights if possible. If the videographer won't assign copyright, get an exclusive license for all of the rights discussed above. A simple agreement describing this arrangement will be fine.
Unrealism. If the videographer is being unrealistic and won't agree to the terms described above, he should be made aware that he will be unable to distribute, stream, reproduce or otherwise exploit the video unless he obtains permission from whoever owns the rights to the musical compositions. That's because the video contains (1) an audio-visual copyright reflecting the videographer's authorship, and (2) a copyright in the original musical compositions, in this case owned by the musician's estate. Based on this second copyright -- as well as any claims that the musician's estate may have regarding right of publicity or similar claims -- the videographer can not duplicate, stream, or reproduce the video or audio without the permission of the respective copyright owners.In other words, he is not the sole copyright claimant to the video.
What about dispute resolution? You can also suggest that the parties proceed to mediation or arbitration at California Lawyers for the Arts. If that fails and you're certain that the videographer will never sue, you can always consider the risky strategy of distributing the disks without permission.
The music CD. Typically music CDs are considered to be "sound recordings" which copyright law defines as “works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.” Since your audio CD is derived from sounds accompanying a motion picture, we're not sure what to make of its status. We believe that it would either be considered a derivative work (derived from the video) or would be analogous to a sound recording. If it were a typical sound recording it would be jointly owned by the musician's estate, any other musicians who performed on the work, and possibly the videographer for fixing the sounds. The trouble with the videographer making claims to the sound recording only is that we're not sure that simply placing a microphone on stage, or hooking a direct feed from the P.A. to video camera constitutes sufficient originality to qualify for sound recording authorship. We doubt it, but we don't have enough information to be certain.

Wednesday, February 27, 2013

Can We Reproduce Covers of Magazines

Dear Rich: Quick question, which I'd be hugely grateful if you could answer. My company is launching a magazine on the subject of marketing. One of the news stories in the mag talks about how luxury print advertising is expected to increase this year. We've included a quote from a publisher who talks about how some of their household name magazines are experiencing good success. I'd like to know if it's OK to illustrate our editorial feature with some images of the front covers of the magazines referenced in the story.  There are a few questions that should be asked when someone reproduces a magazine cover:
1. Are you infringing the magazine's trademark?  In your case, no, because you are using it for editorial purposes (as we explained in this post).
2. If there is a person on the cover, are you violating that person's right of publicity? Not based on your use (give thanks to Joe Namath).
3. Are you violating the magazine's copyright by reproducing the cover without permission? Yes, reproduction without permission is infringement. However, you're likely to be excused as a fair use because you're commenting on the magazine and especially if the reproduction is a reduced or thumbnail size (as we discussed in a previous entry).
P.S. Considering the popular definition for "quick question," perhaps we should all reconsider its future use.

Tuesday, February 26, 2013

Can I Be A Disney Party Princess Impersonator?

Dear Rich: I want to be a princess party entertainer for kids. If I make a costume (not licensed) and NOT call the princess by its "Disney" name, can I charge for my party entertainment services? Is there a loophole on the whole copyright thing? What about celebrity impersonators? Can't I be the blue princess celebrity impersonator? (Dress blue and white, not licensed). Sorry, I'm not trying to get you in trouble with "The Mouse." We're not sure what you mean about being a celebrity impersonator princess ... is it something like this. As for a copyright loophole, we assume you're seeking a legal means of escaping liability for infringement. We doubt whether you would qualify for any of the existing methods -- for example, fair use, the first sale doctrine, etc. Under copyright law, Disney can go after anyone who reproduces or exploits a substantially similar version of one of their proprietary princesses. Even so, we believe most "liability evasion" occurs because Disney hasn't learned about the infringement or is so booked up with legal matters that it cannot act on princess rip-offs. As usual, the lower your profile -- don't book a show on Buena Vista Street in Burbank -- the better your odds of evading detection. Also, you might want to check out our past entry on Disney princesses

Monday, February 25, 2013

Should We Use Work for Hire Agreement in California?

Dear Rich: We work in HR in Los Angeles and we're confused about whether to use work made for hire agreements with independent contractors, particularly for website programmers. We got a memo that these agreements converts a programmer into an employee. If that's the rule how does our company acquire ownership from contract programmers who are commissioned to write code for us? Yes, California Labor Code section 3351.5(c) and California Unemployment Insurance Code Sec 686 and 621(d) both state that companies who commission workers under "work made for hire" agreements are considered "employers" under California law. In other words, if the state determines your company has "employer" status, the company may be required to obtain workers compensation insurance for the  programmers, or pay payroll taxes or in some cases, provide employment benefits. The California standards differ from those typically used by the federal government to establish employer-employee status. Although there are some advantages to obtaining code under "work made for hire" rules, your company can also acquire rights by having the programmers sign assignments of copyright (scroll down to "transfers").

Friday, February 22, 2013

Can I Use Louise Brooks Photo?

Dear Rich: I'd like to ask your advice on whether I'm able to use a photo I've seen on the internet of the 1920's actress Louise Brooks for my art work which I would then sell online and through shops on the high street? The photo in question is the one in this link (2nd photo in along the bottom). There is no named photographer attached to it so I assume that no one knows the photographer??? I've seen the same picture on other sites in a better quality so other's have made improvements via photoshop or other software I'm guessing. Any help would be appreciated. We used Google's "Search by Image" feature and found over 600 reproductions of the Louise Brooks image, which either means that the the owner of copyright isn't policing the use -- in which case you're probably fine -- or that the work is in the public domain. Although works published before 1923 are in the public domain, the photograph in question most likely was published after that date as Brooks' film career did not really get going until 1925 when she was signed to a movie contract and began her "degrading enslavement." The photograph also may have fallen into the pubic domain if the copyright was not renewed -- for example, only seven percent of all book copyrights were renewed. Regardless of the PD status, so many reproductions have been published -- and so many of them are by poster merchants -- we assume that you won't be pursued for your reproduction.

Thursday, February 21, 2013

Trying to Clear Pre-1923 Artwork for Film

Dear Rich: I work in the film industry and often experience frustration and confusion around the use of art work supposedly in the public domain. When I am trying to clear a piece of pre-1923 work (let's say published in the U.S. for practical purposes) I am often told that the rule is 70 years after the death of the artist (or sometimes 100 years). Many works published before 1923 have authors and illustrators that died significantly later. Does the "work for hire" or commissioned work by a corporate entity rule come into play here? In other words, because the piece was commissioned (or written by an employee) does that make the creator's copyright subject to the pre-1923 law? Any work first published in the U.S. before 1923 is in the public domain regardless of the lifespan of the author or authors, and regardless whether it was made by an employee or contractor under work for hire principles. Only works published after 1977, or unpublished works, (or unpublished works that were later published) are contingent upon author lifespans. When in doubt, check this handy public domain chart, or download a copy of Steve Fishman's excellent public domain book.

Wednesday, February 20, 2013

Someone Copied My Workforce Diversity Model!

Dear Rich: I am the author of several management books about workforce diversity. In two of these, I used an original model to define what I meant  by "dimensions of diversity." Over the past 20 years, my model has become very popular in training programs held at universities, in companies and by public organizations. I recently discovered that an unknown competitor is featuring my model (a derivative, slightly altered version) on her business website and is misrepresenting my original work in her criticisms of it. I would like to deny her the right to reproduce the model - as she seems to me to be attempting to benefit at my expense. She did not ask for permission and I would like to forcefully deny her that now. Do I have any rights here? You can assert your rights but we can't guarantee you'll succeed. Your competitor could argue that your model -- which appears to be a circle within a circle, each circle containing 10 diversity factors -- may be closer to an idea, and copyright doesn't protect ideas, only their expression.
E=MC2 does not equal copyright. We know it took some creative effort to visualize and compile your model but copyright does not protect works because of the labor invested -- referred to as "sweat of the brow" -- or because they contain ground-breaking ideas, methods, or systems. What's required is sufficient textual or visual expression to justify protection. That's not to say, you can't protect your model. Many companies claim copyright in workplace posters and related graphics. But in those cases, the owner be acquiring what is known as a "thin copyright" -- one that would only stop exact or close duplications. In other words, the more modifications that are made to your model, the less likely it may infringe.
So, what should you do? We'd suggest seeking copyright registration for your model. Having a registration doesn't guarantee you'll succeed against infringers but it creates a presumption you have a valid copyright and often, that's all that's needed to stop interlopers. Enclose a copy of the registration and demand the removal of the material. If it's at a website, you may also be able to take advantage of the DMCA takedown rules (scroll down for a how-to). Your competitor may have a few defenses available -- for example, you mention that the competitor is criticizing your model; criticism is a common basis for fair use.

Tuesday, February 19, 2013

Kickstarter Homer Simpson

Dear Rich: I am working on a Kickstarter music project and realized my cardboard "life" size Homer Simpson is in the back round of the entire video and that could be a copyright issue?! I also speak to it once comedically, but I never refer to it by name. Otherwise, it simply remains in the back round. Would this be a copyright issue? Most likely you don't need to worry about retribution ... but if you check the big legal scoreboard in the sky, you've got two strikes against you: copyright infringement (for reproducing the image of Homer) and trademark infringement (because you're using Homer to endorse your commercial venture). And you're also violating Kickstarter's terms of use (which states you cannot submit content that infringes any trademark or copyright). We're going to guess that neither Rupert Murdoch or Kickstarter will notice your use, but if they do and request a takedown of the video, we'd suggest that you comply. We've written Homer-related posts before (including one on using Homer's medical records).

Friday, February 15, 2013

Can a Corporation Transfer Right to File Lawsuit to an Individual?

Dear Rich: Can an individual buy or take over a corporation's rights to file suit? If yes, does it change the situation or collection rights? The reason for the question: A corporation needs to be represented by an attorney in order to file a suit but an individual does not and can represent itself in court. Many times the attorneys fees are so costly that they offset any potential gains from the lawsuit and in some case the legal fees and costs exceed the amount of the suit. This causes small businesses to walk away from lawsuits simply because they cannot afford to fight the case. Unfortunately there are companies out there that realize this and use this to cheat smaller companies out of their due. This is especially prevalent in the construction industry. We're drifting a little bit from our bailiwick (intellectual property) but we'll answer it because the issue may arise in lawsuits involving licenses, trademarks, trade secrets or unfair business practices.
What's your jurisdiction? The rule that a corporation must be represented by an attorney is jurisdiction-specific -- that is, it's not a universal rule. For example, in California and New York, the rule does not apply for small claims court but does apply for other civil lawsuits. So, your first step is to determine whether your state (or the particular court in your state) permits corporations to represent themselves without an attorney, and if so, in what instances. Sometimes lawsuits are permitted if the corporation is represented by a director, officer, or employee of the corporation.
Can the "right to sue" be sold? There are many legitimate ways to transfer a right to sue someone. If the right to sue arose out of a contract, those contract rights may be assigned (unless the agreement prohibits or eliminates assignments). Similarly, if the lawsuit is over a debt or an existing judgment, that may be assigned, as well. Many jurisdictions prohibit "champerty," the funding of, or investment in lawsuits and "champertous connivances," (scroll down to P. 165) are rare.

Thursday, February 14, 2013

Can Artist Copyright Art and Text Together?

Dear Rich: I've designed a greeting card line which includes illustrations as well as illustrated/hand lettered text. Illustrated/hand lettered text will also appear on the card's interior. I will soon be submitting my scanned art as a collection to the copyright office. Can this illustrated text be copyrighted with my main artwork? Would it be a problem because, even though they are illustrated words and phrases, they are still words and phrases? Thank you for helping clarify this gray area of copyright protection. Yes, you can copyright a combination of words and text, even if the text by itself is not copyrightable. Even a phrase as unprotectible as "Remember Me," can be registered in connection with an image. The artist cannot stop others from using the phrase by itself, but the artist can stop others from using the same combination of imagery and text.

Wednesday, February 13, 2013

Who Owns Non Profit Website Content?

Dear Rich: Our small non-profit executive director created our website and much of the content (other content, logos, all photos etc, was provided to her by myself). Upon her stepping down as Executive Director, she deleted the website and all of its content. Apparently she feels that since she created it, it is hers. Because she created it as Executive Director and the website was a job responsibility of hers, wouldn’t the intellectual property and the website belong to the organization? There are no paid “employees” of the non-profit, but she did have an official title and is on the non-profit legal paperwork, checking account, etc. We are trying to recover the content because it is a big hit to the non-profit to lose all of our web content, it’s formatting, links, material, etc. Note, we have tried to have moderator access to the website from the start, but she has always been possessive and protective of it – now we apparently know why. Before addressing your legal issues, are you aware that you may be able to recreate the website using the Internet Archive's wayback machine? Your tech advisors may be able to copy the HTML (source) code by right clicking on the archived page, and then use that code to recreate the essential page elements.
If she was an employee ... If the executive director was an employee of the nonprofit, and if the website was created within the course of her employment, then the nonprofit owns all the content including the appearance and design. That's a basic principle of copyright known as an employee work made for hire. However, having an official title of executive director and managing the checking account don't necessarily make her an employee. Use the government standards for judging whether she can be categorized as an employee or contractor.
If she wasn't an employee ... The nonprofit might still own all rights to the website if there is a contract or other paperwork setting out the executive director's obligations and transferring ownership to the nonprofit. Also check the nonprofit's bylaws in the event they address the ownership issue. Even if there is no paperwork and you conclude the director was an independent contractor, not an employee, there's a good chance that the nonprofit acquired a nonexclusive implied license to use the materials provided by the executive director. Finally, it's possible that the elements contributed by the director are not copyrightable by her --  perhaps because they are based on other material or because they lack sufficient originality to qualify for copyright protection.

Tuesday, February 12, 2013

Does Our Website Need a DMCA Agent?

Dear Rich: We have a website for families to upload pictures and events dealing with heritage and ancestry. We have a new investor who wants us to designate an agent to register with the Copyright Office for DMCA notices. We've been in business for three years without any problems. Is there a benefit to registering an agent? Your investor is probably concerned about liability resulting from user generated content. The Digital Millenium Copyright Act shields your site from liability if you follow certain requirements and meet certain qualifications (including designating an agent for receipt of notices). Assuming that your website qualifies as an online service provider (it probably does), the protection applies only for user generated content – that is the material is made available by a person other than your company and it's posted without your modification. Also your company can’t profit directly from the uploaded material -- so the safe harbor won't apply if your company makes money selling reproductions or gets a payment for downloads of user content. Although we think that designating an agent is a good idea, on a practical level, it’s been our experience that DMCA notices are rarely sent to the designated agent but instead are sent to email addresses designated for such purposes by the company. So we'd recommend that you post a link on the bottom of the homepage for such purposes. If your company complies with the takedown request, the matter is usually closed.
Designating an agent. You can use the Copyright Office form to designate an agent and you can read more about agents at the Copyright Office site. For more on the DMCA, check out this Nolo article, this Citizen Media article, and this previous DMCA post. .

Monday, February 11, 2013

How Do Co-Inventors Determine Micro-Entity Status?

Dear Rich: The micro-entity fees in the new patent act were supposed to go into effect two years ago but I can't find them at the USPTO? Have they gone into effect? Why not? And when/if they go into effect how do co-inventors qualify? When Congress passed patent reform, one of the crumbs thrown to independent inventors was a discounted fee structure. Instead of 50% off the patent fees for small entity status (a company with under 500 employees), the USPTO was supposed to offer a discount of 75% to inventors who met certain requirements known as micro-entities (see our article comparing small entity and micro-entity status). The micro-entity provision of the law was effective as of September 16, 2011 but (according to the Federal Register) the new fees are not expected to be implemented until March 19, 2013 (about the same time the new first-to-file rules go into effect).
How do you determine micro-entity status for multiple inventors? The rules apply individually to each joint-inventor. So, no joint inventor can have been named as an inventor on more than four applications, and no joint inventor can have a gross income (as defined by the IRS) exceeding three times the median household income for the preceding calendar year (currently $150,162).

Thursday, February 7, 2013

Is Book Author Attribution Required?

Dear Rich: I signed a book publishing deal for a textbook. Now the publisher has used portions of my book in another book without crediting me. I've been paid for the use but the new book doesn't mention me as the author of the four chapters I wrote. I don't see anything in my contract dealing with the issue. (There is a provision in which I give the publisher the right to use my name and likeness.) Does a publisher have an obligation to credit the author? Absent a contract provision requiring attribution, a U.S. publisher generally doesn't have an obligation to provide credit to the author. In other countries, for example, Canada, Britain, and France, an author is empowered with moral rights (droits moral) which require that the author be credited, or alternatively that the author not be credited with a work that the author did not create. But moral rights have not been directly embraced in the U.S. though some authors have relied on unfair competition laws and similar false attribution theories to fill that gap. In the event you enter into a new book contract, attempt to negotiate a provision requiring attribution for all reproductions. Alternatively, avoid provisions in which you waive all moral rights.

Wednesday, February 6, 2013

Trademarks: Does Punctuation Matter?

Dear Rich: I hope you are having a great day.  I am thinking about trademarking a phrase. Does the punctuation matter? Can I trademark just the wording and then add whatever punctuation I want later as my business grows/ changes (similar to changing the font and color over the years) or does the punctuation I have always have to be with the phrase for it to be considered mine? I don't know what punctuation I would like -- I prefer the flexibility as my business grows. What is the best way to protect my phrase and have flexibility? We've written about trademarks and punctuation before, so we don't need to post duplicate content and get dinged by Google. We'd add that if your mark is successful, we're not sure why you would want to change the punctuation (markings like ? and !). Your actions might confuse consumers and weaken your mark. Maybe that's why Yahoo hangs on to the exclamation point. (Here's our favorite P-mark.)

Tuesday, February 5, 2013

Wants to Publish a Book of Campfire Songs

Dear Rich: I am interested in helping publish a songbook of campfire songs for use by traditional campfire groups (scouts, Indian princesses, and the like).  While some of these songs are in the public domain, others are not.  I understand that the performance of the songs by those groups may be a public performance (hat tip to the 1995-96 ASCAP/American Camping Association/Girl Scout flare up), but am more concerned about securing rights to publish the sheet music within the song book.  The book will be sold by a non-profit entity, but otherwise looks/feels like a commercial use. Is there a clearing house through which these sorts of rights may be secured?  My review of the ASCAP page indicates that they are more concerned with the public performance (or at least I cannot find a reference to sheet music publication).  Is there somewhere else I should be looking? Yes, you need to contact the music publishers (companies that own or administer the copyrights for songs) and seek permission directly. There may be agents who can acquire these rights for a fee (search for "music licensing agents") but there don't appear to be any clearance houses or licensing organizations that deal specifically with granting sheet music rights.
What good is ASCAP? ASCAP and BMI (ASCAP's main competitor) can't help you with getting the rights for reprinting sheet music. Those organizations are performance rights societies and grant rights for playing music live or broadcasting it over radio or TV. However, BMI and ASCAP, and their sibling organization, the Harry Fox Agency, (which grants rights for so-called mechanical licenses) are good for a related purpose -- they can provide you with the name, address and contact information for the music publisher who owns the rights. You can then contact the music publisher directly. Publishers differ as to their policies for sheet music reproduction. They often grant sheet music rights for a royalty (typically 10 to 15%) or for a flat fee if it is a limited reproduction (for example, 2,000 books). Of course, mention the nonprofit aspect of the effort (in the hopes that you can get a better deal), and be prepared to be flexible in your choice of campfire songs because in some cases, you may find the publisher non-responsive, or seeking fees beyond your budget.
Using Public Domain songs. We're all for the use of public domain campfire songs. In some cases, however, beware that individuals attempt to claim copyright on PD songs. We've written about the practice in a previous post and offer some suggestions on how to deal with that issue.

Monday, February 4, 2013

Siblings Are Copyright Co-Owners

children of copyright owner
Dear Rich: If two siblings inherit the copyrights to a work written by one of their parents, can each sibling independently grant permission to use the copyrighted material without asking the other, or must both agree? They have not established a partnership or any other legal entity to handle the copyrights. As co-owners of the copyright, the siblings have a legal status known as “tenants in common.” Each sibling has an independent right to use or nonexclusively license the work—provided that the sibling accounts to the other sibling (co‑owner) for any profits.  However, all co-owners must consent to an assignment of the work (a permanent transfer of copyright ownership) or to an exclusive license (an agreement granting rights solely to one person). For example, if a publishing company wanted an exclusive license to sell the work (that is, the publisher is the only company that can sell the work), the publisher must obtain the consent of both owners. In addition, someone must obtain the consent of both siblings if the siblings have an agreement requiring joint consent. Finally, outside the U.S. some countries refuse to recognize even nonexclusive licenses when granted by one co-owner (so that may put a dent on a worldwide license).