Thursday, March 28, 2013
By the numbers. A second concern is whether the deal makes financial sense. If the production company owns the studio, chances are good that the producers will be liberal about billing you for recording and producing costs -- expect charges of $10,000 to $20,000 for a complete album (and it could be much higher). You would have to recoup all of this income (and perhaps more) before you see a dime. If the company is shopping your recording to a label, then you will probably end up receiving even less because the production company will end up getting 12% to 20% of the net income from record sales from the label (and your 50% would come out of that). Nowadays, it's pretty tough to earn $10,000 or more on a recording. Professional musicians indicate that sales are down so dramatically, that they account for less than 6% of a musician's income. (BTW, the average professional musician in the U.S. earns about $34,000 a year before expenses.) So before you sign away rights, you may want to consider whether you can accomplish a cool recording on your own ... after all, many great recordings were made using homegrown studios.
"Yeah, yeah, but otherwise I can't make a record ..." Yes, we know that the production company is taking a risk devoting their time and energy to make a recording. So, we can understand their desire to acquire rights and make money. So if you're going ahead with the deal, we think you should look for some safeguards. Keep in mind, there are two sets of rights at work here -- song copyrights and sound recording copyrights. We can understand having to give up on sound recording copyrights but we'd like to see you retain as much of your songwriting copyright as possible. Read up on music law and copyright, or talk to an attorney, and see if you can set up a co-publishing arrangement. Can you get rights back to your songs based on time (say five years), lack of sales, or failure of the company to get a deal? Can you cap or control recording costs? Can you control any other deductions made before you get paid? We could come up with other questions but it's time for us to play some Words with Friends.
Related info: Ten Tips for Songwriters
Wednesday, March 27, 2013
Dear Rich: Am I free to use a trademark that is listed as "Dead" at the USPTO? That depends ... When the U.S. Patent and Trademark Office (USPTO) indicates that a trademark is dead, it means that the registration for the mark (or application for registration) was abandoned by the owner or canceled by the USPTO. The Live/Dead classifications refer to the USPTO's jurisdiction over the mark.
How do marks get 'dead'? There are various reasons why an applicant may abandon an application—for example, the applicant may believe that registration is unlikely, or perhaps the applicant decides to discontinue the product or service because of the marketplace. If a mark shows up as being abandoned during the application process, it often pays to dig deeper in the application file (use the UPSTO's TSDR database to read documents) to find out if the reason was due to an examiner objection. That may foretell what’s in store for your application. There is a different type of abandonment if a mark has been registered but then later abandoned or canceled. For example, a mark may be cancelled because the owner failed to file a Section 8 affidavit.
Dead doesn't mean "not in use." When a mark shows up as “dead," it’s possible that the mark is still being used, albeit in an unregistered status. As long as the mark is still in use, no one else can use it (in a way that would create the likelihood of customer confusion) without infringing it. (And keep in mind, many trademarks also "arise from the dead.") There are many ways to determine if a trademark is no longer being used. The simplest method is to call the company and ask if the product can be purchased. If the response is something like, “No, we haven’t sold that product in years,” then there is a chance that the trademark is truly abandoned. A presumption of abandonment arises after three years. If you can afford additional expenses, professional investigators can help you determine the extent of the company’s use. If you believe that a mark has been abandoned, even if it is showing up as live on the search report, you may file a Petition for Cancellation based upon abandonment with the Patent and Trademark Office.
Tuesday, March 26, 2013
Why you should take it down. We talked about the rights of mural artists in a previous entry and explained how mural artists are protected not just by copyright law, but also by some state art laws. Merely creating the mural doesn't mean that the complainer owns the copyright -- the mural may have been a work made for hire or the copyright may have been assigned. Chances are good, however, that if he's complaining, he's the owner -- why else hassle you? The copyright owner could file a DMCA complaint with Etsy (or Etsy's ISP) or could sue you (or both). If you can make this situation go away by just removing the offending photos, that would be the most efficient course of action.
Friday, March 22, 2013
Thursday, March 21, 2013
What can do you about the stolen presentation? You can write to the Internet Service Provider (ISP, or network service provider hosting the site) that has posted the infringing PowerPoint online and ask them to take it down. This can be accomplished using the DMCA procedures outlined in this video. That should deal with removing the illegal posting. Assuming it does, your colleague can also pursue the interloper with other federal copyright remedies.
Wednesday, March 20, 2013
Scenario #1: The American organization acquired copyright under work for hire rules. If the American organization commissioned the painting, it may be considered as a work for hire under the old copyright act (1909 Act). That act was a lot less friendly to independent contractors than the current law (1976 Act) and works were often ruled to be "made for hire" simply because they were created at the hiring party's "instance and expense." (Alternatively, there may have been a written agreement in which the artist transferred copyright to the organization.) In either of those cases, the American organization would have acquired copyright. If it was not timely renewed, it would have fallen into the public domain (assuming the painting was published with copyright notice and the work was registered).
Was the painting published? If the painting was never published, the copyright might still exist. Unpublished works that are "made for hire" are protected for 120 years from creation. A painting is published when copies are distributed to the public, or when the work is offered for sale to the general public, or when the painting is publicly displayed with no restriction on copying or photographing the work. There is no publication if the painting was never offered for sale and was displayed with restrictions on copying.
Scenario #2: Spanish painter retains copyright as a Spanish national. Under this scenario, the American organization did not acquire copyright under work made for hire rules -- perhaps because the arrangement did not meet legal requirements -- and the Spanish painter retained copyright. (BTW, it shouldn't matter where the work was completed.) As a Spanish national, the painter's rights would originate under Spanish copyright laws, and ultimately would receive protection in the U.S. as a result of copyright treaties, most notably the Berne Convention. Under this scenario, even if the painter's agents had registered the work in the U.S. and it had fallen into the public domain due to a failure to renew, the copyright could be restored under the GATT treaty and the Spanish artist would retain copyright most likely for a term of life plus 70 years.
Tuesday, March 19, 2013
What's a micro-entity? A micro-entity is any individual (or small business with less than 500 employees) that has earned less than $150,000 in gross income in the preceding calendar year, who has not been named as an inventor in more than four previously filed patent applications, and who has not committed to license or assign rights to the invention to an individual or entity earning more than $150,000. You can learn more about micro-entity qualifications by reviewing this article or these USPTO FAQs.
How do you get the fee break? Download Form 15A. Fill it out electronically and sign it electronically -- for example, "/ThomasAlvaEdison/." Then file the Certification (if there are co-inventors, each must complete and file a separate Certification) along with whatever patent application you are filing. In the EFS (electronic filing system used by the USPTO), you will find a dropdown for filing a Certification of Micro Entity Status. Select it and file it along with your provisional or nonprovisional application. Note, you must meet the financial requirement each year to continue to qualify (in 2012 it is gross income under $150,162). New financial requirements will be set each September.
Related article: How Do Co-Inventors Determine Micro-Entity Status?
Monday, March 18, 2013
Right you had a question. Legally, you're in the clear to create a book involving lubricants, handcuffs, and latex dwarf costumes, provided it's not based on or does not borrow from the Disney movie. You should probably include a disclaimer on the book stating that it is loosely based upon the original Grimm story and that is not affiliated with any entity that claims trademark rights to Snow White ... and of course avoid using the names popularized for the dwarves and which were created by Disney. Finally, you should avoid any visual reference to Disney characters, parody or not. Even if you do all this, that doesn't mean you won't get scary letters from Disney lawyers ... but your legal position should be fortified.
P.S. Here's a film that was made despite Disney trademark claims. Check out the director's response to a question about copyright and trademark.
Friday, March 15, 2013
- Why isn't Steamboat Willie in the public domain? Works published before 1923 are in the public domain. Steamboat Willie debuted in 1928 and was later renewed. It's true that there is still some dispute as to whether copyright in the film was lost due to an issue over "formalities," but nobody has used that evidence to challenge Disney in court. So the presumption is that Steamboat Willie has not fallen into the public domain. It's also true that the copyright extensions that have kept Steamboat Willie alive were partially funded by Disney lobbying efforts but that shouldn't surprise anyone. Many, if not most, laws are the result of lobbying efforts. Separate from Steamboat Willie films (and any other narrative content), the character of Mickey is protected under copyright and trademark law. When Steamboat Willie falls into the public domain, you are free to copy those videos. But you will not be free to create new Mickey video or artwork-- that is you can't create new examples of the character.
- Why not trademark everything? Because you can't. Assuming you're referring to registering the trademark with the U.S. Patent and Trademark Office, you must go through an examination procedure that's fairly rigorous. You must demonstrate that consumers associate your business with the mark on a specific class of goods. In addition, there are lots of rules and hurdles to overcome. For example, a single book cannot acquire trademark protection, only a series of books. Only characters that have achieved significant recognition make it into the pantheon of character trademarks.
- Why is copyright free and why are trademarks costly? The fee for registering ($35-$65 for a copyright v. $275 to $325 for a federal trademark registration) is higher for trademarks but by itself, that's not an accurate measure of the cost of protection. The fees merely reflect the level of government examination (little or no substantive examination at the Copyright Office versus a full exam for trademarks at the USPTO). That may be why the validity of a federally registered trademark is sometimes easier to defend than the validity of a copyright registration. In any case, these initial fees are the starting point for protection; the real cost is in the policing and enforcement. By those standards, the costs of hiring lawyers, writing letters and going to court, are fairly similar for copyrights and trademarks.
- Why don't we get rid of copyrights? Sometimes it feels like we have.
Thursday, March 14, 2013
|Female digger by Van Gogh|
Your book. Just so we're clear ... you plan to offer a book with new "digger lyrics" for existing songs. For example, you would state, "Sing these lyrics to Twinkle Twinkle Little Star" and then include your new lyrics but not the musical notation or original lyrics, right? You are definitely okay to do so with any songs published in the U.S. before 1923 or any that otherwise fall into the public domain for other reasons. We think you'll be okay with non-public domain songs, too, but we can't guarantee safe passage. That's because lyrics are separately copyrightable and if you're borrowing too much from the originals, you would create an infringing derivative. That said, we kind of doubt that the copyright owners are going to care enough to do something about this project so we're inclined to think you can proceed as planned.
Do intellectual property lawyers exist in every city? Probably, check one of the many Canadian legal directories (type "canada legal directory" into your search engine).
Wednesday, March 13, 2013
Will they take your house? We can't tell you what will happen if you post your app, but like Palpatine's army of clone warriors, the Lucasfilm legal staff is an efficient goal-seeking team. Their initial focus will be on closing down the app, not eviscerating your bank account. It is usually only after Lucasfilm lawyers have been rebuffed that they file a lawsuit. But of course, our information is all hearsay, and Lucasfilm is entitled to seek damages or an order seizing your servers. By the way, offering the app for free shouldn't make any difference as to whether your app is closed down.
Bottom line dept. Because apps like yours take a lot of time to prepare, and because yours is likely to be shut down, our advice would be to change the story line so that it's not based on the Star Wars movie series. Of course, you'd also lose the network of fanboys so we can see why you might want to disregard our advice and share your work with the Jedi world. In that case, may the force ... etc.
Related entry: Is Star Wars blog illegal?
For more on app legal issues: Protecting Your Mobile App
Invaluable New Invention: OSM
Tuesday, March 12, 2013
Monday, March 11, 2013
What about the Superman trademark? Besides copyright, Warner Brothers can hassle you if you're using trademarks to confuse fans into thinking that your book comes from or is endorsed by WB. One way to limit that claim is with appropriate disclaimers. In 1998, a publisher offered a Godzilla filmography book that included a brief disclaimer on the back cover. Toho, the company that owned rights to Godzilla, sued and won. According to the court, an appropriate disclaimer would have been: “The publication has not been prepared, approved, or licensed by any entity that created or produced the original Toho Godzilla films,” and the disclaimer would be printed on the front cover and spine of the book in a distinguishing color or typestyle. (Toho Inc. v. William Morrow (C.D. Cal. 1998).) In other words, to avoid trademark hassles, make your disclaimers clear and prominent.
The year copyright law changed. By the way, copyright law changed on January 1, 1978. Photos after that date are subject to the new law, the Copyright Act of 1976, and photos before that date are subject to the old one, the 1909 Act. That shouldn't make much difference unless the set photographers were independent contractors and not employees (this article explains the differences).
For Your FYI Dept. If you go ahead without permission, we'd suggest offering it as a print-on-demand title. That way, if challenged, you can halt production without destroying inventory (often a request in copyright infringement lawsuits).
Friday, March 8, 2013
A disgruntled subject of a documentary could sue for the reasons listed below ... although as we always advise, filing a lawsuit doesn't mean the star will prevail:
Defamation -- If everything in your documentary is true, there shouldn't be a problem with defamation. Movie stars are "harder" to defame because public figures are supposed to have thicker skins. Translation: the star would have to prove you acted maliciously.
Right of publicity -- Making a documentary wouldn't violate this right but if you were to sell T-shirts, with the star's picture, that might trigger a claim. You violate the right of publicity if your use of the star's image or name for advertising or endorsement purposes.
Invasion of privacy -- Because they are public figures, movie stars are considered to have less privacy than mere mortals. But their privacy can still be violated by intruding into places where they expect privacy -- for example by eavesdropping on phone conversations or peering into a home.
Breach of confidentiality -- If you have entered into a confidentiality agreement with the star and subsequently violated it (or if you were a former employee of the star), the star could sue over disclosure of confidential information.
Copyright infringement -- If you quote from the star's writings or include other works for which the star claims copyright, you can be sued if you did so without permission. Your use may qualify as a fair use ... that requires an analysis similar to the ones made in these cases.
Thursday, March 7, 2013
Right, you had a question. As for your last question -- the distinction between utility and design patents -- we talked about this in a recent post. Basically, if you're trying to protect something functional (like the massaging book bag on the left), seek a utility patent. If you're trying to protect appearances, like this combo vest/book bag, seek a design patent.
What forms are needed? Filing for a patent requires more than filling out forms and in most cases -- particularly for utility patents -- requires the assistance of an attorney. You can read more about design patents here, and more about utility patents here. You can find patent forms at the USPTO website.
The fees. An applicant for a utility or design patent pays some fees when filing, others during the examination process, and more when the patent issues. If you are filing a provisional patent application and you qualify as a small entity, there is a one-time fee of $125 (soon to be $130) and if you qualify as a micro-entity after March 19, the one-time fee is $65. You can find more patent fees at the USPTO website.
Wednesday, March 6, 2013
We can't really help. Because of the patent issued for Taggies, we really couldn't tell you whether you can get away with any of your plans but we have a feeling that if the Taggies Corporation learns of your proposed uses they'll ask you to stop no matter what you're doing. Of course, that's if they learn about your versions. If you avoid using the term, Taggies, you're unlikely to show up on their radar, particularly if you're just making the item for friends. Also, we know we have altered the grammar for much of your question and we hope that's okay -- our staff is a stickler for grammar and if anyone needs a grammar refresher we recommend this new book. (And we would also remind you -- in the gentlest of ways -- that there is no "w" in copyright.)
Tuesday, March 5, 2013
Monday, March 4, 2013
|Pat No. 4,151,613|
A protective device for the buttocks and hips
of a person for use in skateboarding
Friday, March 1, 2013
Patents. You could file for a utility patent if you have created something functional -- like this strange creeping doll. But you could not get a utility patent if the only thing that is novel about your plush doll is its appearance (though you could seek a design patent). After March 16, you cannot obtain patent protection if you have sold or publicly disclosed, or published information about your invention any time before you filed your patent application (except if the actual inventor-applicant created the publication and it was made up to one year before the filing date). Doll companies weigh the time and expense it takes to get a patent (two years and several thousand dollars) versus the short shelf-life of many dolls, and typically do not pursue patent protection unless there is novel technology or functionality. It's usually not a cost-effective strategy.
Trademarks. You can register a trademark for the name of the doll or you may be able to acquire trademark rights for the doll's appearance (if it is particularly distinctive), as well. Protecting trademark rights are part of every doll company's strategy. However. you can't obtain a trademark registration until you have begun selling the dolls (though you can file an application reserving your rights).
Copyright. You didn't mention copyright law which has been one of the most cost-effective types of protection for doll companies. (It certainly helped Cabbage Patch Kids and the Bratz.) Once you create the doll, you automatically receive a copyright. You can register that copyright relatively quickly (within a few months) and inexpensively ($35 to $65 depending on whether you choose paper or plastic).