Thursday, March 28, 2013

Musician Wonders About Royalty Split

Dear Rich: I (a young artist) have been given a production agreement from a production company. I will be their first 'artist' to develop and shop so it is all very new for us all. With regards to copyrights and grants of rights, what's 'normal' in such an agreement? They are proposing I give all copyrights of all recordings to them for a rights period of 'life of copyright.' What does this mean?! Surely we'd share copyrights and what if some of the songs were solely written (lyrics and music) by myself? Will they get the rights of that too? Like a lot of production agreements out there, they are saying a 50-50 split for net income after all costs (including recording) so based on this 50-50 split surely I get 50% of the rights? Unfortunately, the arrangement is not that unusual for the music business. Musicians commonly give up copyrights in return for a suitable payout. Our first concern is whether there's any track record for the production company. That is, is there any evidence that the producers can create successful recordings and more importantly whether they are reliable record keepers and will pay you the money you are owed? And if the recordings are unsuccessful, can you get the rights back?
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

Free to Use Dead or Cancelled Trademarks?

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

Mural Artist is Coming After Me

Dear Rich: I'm a budding photographer with a passion for graffiti and mural art. I photograph it whenever I travel and here at home in Philadelphia. Many of the images I've captured no longer exist, but some do. One of my photos, taken recently in the Mission District of San Francisco has generated some controversy. A man who claims to be the artist contacted me today to say that I am selling illegal reproductions of his copyrighted work. He wants me to remove them immediately. He claims to own "the intellectual and copyright rights to" the murals. I did some research before posting the images to my Etsy shop and came to the conclusion that the graffiti was public property, like the much photographed LOVE statue in Philly or the Eiffel Tower. I definitely want to do the right thing -- my main incentive for photographing the work is to preserve and protect it -- regardless, I'd really appreciate your advice. Assuming that the person claiming copyright can verify ownership, we think you should remove the photos. Your two examples of "public art" -- the Eiffel Tower in Paris and the LOVE sculpture in Philadelphia -- aren't really applicable to the mural situation. The Eiffel Tower is a public architectural monument that can't be protected under copyright law. As we mentioned in a previous entry, shooting and reselling publicly visible architecture is almost always permitted. As for the LOVE sculpture by artist Robert Indiana, that is not protected under copyright law because the Copyright Office apparently refused to register the work, claiming that the law does not protect single words. Typically, however, public murals and sculptures are protected by copyright law.
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

Needs App Co-Owner Agreement

Dear Rich: I am starting up a new business that designs educational apps. We have designed our first three apps and are close to submitting our first one to Apple and Android stores. Our designer is my business partner's husband and has worked for free so far. We want to write two contracts: One contract will designate how the monies will be distributed: we would like to use the following percentages: 30/30/30/10 for designer/partner/self/business account for the first two apps. Then if the first two apps earn enough, we would switch to paying the designer a flat fee as we have done for the programmers. We would also like to write up a contract that stipulates who owns the intellectual property rights to the images and what each party can do with them. Our thinking is that we will all own the rights, however, my company will own the sole rights in that we can decide what the designer may do with the images -- for example, he can use them for promotional purposes only for his business. We can use them in the app, our website and any other way we'd like. Is there a standard form for such types of contracts that we could use to modify for us? We're not sure if there is a "standard" form for the arrangements you describe but you could probably modify an innovation joint ownership agreement (assuming you will all be co-owners) -- for example, something similar to the  joint ownership agreement included in our licensing book. You could also draft something by yourself - something that simply sets out what you describe above -- for example that you are all co-owners and that you have different rights when it comes to the images contained in the app. You need to be specific that this agreement applies to the two apps, only, and you need to be clear about who owns the underlying images, and how you will divide and distribute the money (the app stores won't do that for you). As for the flat fee for future apps, you wouldn't need to include that in your current agreement. That could be the subject of a separate agreement. Also, as long as we're hyping our stuff, you might find it helpful to check out our O'Reilly guide for app developers.

Thursday, March 21, 2013

Someone Stole My PowerPoint!

Dear Rich: A colleague of mine is getting ready to submit an article for publication. While finalizing things, she came across her own PowerPoint presentation on the internet that she and some other staff had created together for educational purposes. When she found it, someone else had slightly altered the presentation (although not much) and attached their name to her work. My colleague had not copyrighted the work so we were wondering how to proceed. Your friend has a copyright on her PowerPoint regardless of whether she has done anything affirmative -- for example, registering with the Copyright Office. The government graced her with copyright once she completed her presentation and saved it to a server or hard drive. That's because in most countries, including the U.S. and Canada, all that is required for a work to acquire copyright protection is that it be "original" and "fixed." "Original" means that the presentation is original to your colleague and that it was not copied from another source. A work is "fixed" when it exists in some tangible manner such as saved onto a computer disk. You can register it and registration has some benefits.
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

Who Owns Rights to Spanish Painting?

Dear Rich: I am a documentary filmmaker working on a documentary about a Spanish artist. I want to use a painting he completed in 1962 that was commissioned by an American organization and delivered to them by the artist himself. If the copyright on this painting was not renewed, is it in the pubic domain? Remember, he is a Spanish artist. To complicate things, he may not have completed it until he was here in the United States. We consulted with public domain expert Steve Fishman and concluded that there are two possible scenarios:
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

Micro-Entity Fees Have Finally Arrived!

It took long enough to implement (18 months) but the new super-reduced micro-entity fee rules finally kicked in this morning. There are two paths to these reduced fees but in this entry we're only going to discuss the independent inventor path.
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

Wants to Make Sexy Snow White

Dear Rich: I am planning to publish a book on Snow White and the 7 Dwarves that will be, shall we say, salacious in nature. I read Disney created a trademark for Snow White in 2010 but that it won't apply to written works. Even if their trademark did apply to written works, could I still publish my book? Or would it be considered a parody of sorts? Or, should I simply change all the characters' names (of course, readers would know who I was referring to all along)? Would that protect me from Disney's wrath? If not, do you have any ideas how to protect myself? Disney sought to register a trademark for SNOW WHITE in 2008. The application was for the exclusive right to use the slumbering superstar's name in connection with movies. The USPTO approved the application in April, 2010, but Disney never completed the registration process and as far as we can tell, the registration remains in hibernation awaiting that awakening kiss from Disney's legal staff. That doesn't mean Disney is backing off its IP chivalry, it just means it hasn't completed the process. You are correct in that none of the registrations filed by Disney are for printed matter (although the company does own rights to Sleeping Beauty bed linen -- clever, huh?). By the way, for the whole story of Disney's plunder of the public domain, check out this letter to European IP HQ.)
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 Not Get Rid of Copyright When Trademarks Are So Much Better?

Dear Rich: I recently looked into whether Mickey Mouse or any of Walt Disney's old videos like Steamboat Willie were in the public domain. They were created in the late 1920's. I'm a little shocked to realize none of them are public domain. I don't understand the details, but what I understand is Mickey Mouse is a "trademark" of Disney, as are several of its characters. That makes me wonder, why don't we just get rid of copyrights altogether, and get these far superior "trademarks" that last forever on everything? What is stopping me, or anyone else from "trademarking" everything that I create? Why is copyrighting essentially "free", and trademarking very costly? Why isn't trademarking free? I'm not asking for a prescriptive rehashed response. I'm really looking for a critical poke at this entire system. Here at Dear Rich headquarters we're not into critical pokes, we're more in to  prescriptive rehashed responses that have some practical value. In this case, the best we can do is answer some of your questions.
  • 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

Wants to Publish "Digger" Cover Songs

Female digger by Van Gogh
Dear Rich: I saw your post about changed song lyrics and I had a question which takes a step in a different direction. I have sung lots of songs with my young son about diggers, one of his obsessions. They are set to popular tunes, with the lyrics all or mostly changed. I think it would make a good book for children. Would my lyrics changes be considered a parody, like Weird Al Yankovic, and thus be free to be printed? Or because I am not recording or performing these songs would these songs be exempt? Most of the tunes I am using are from before 1922, traditional children's tunes like Twinkle Twinkle Little Star which changes into Twinkle Twinkle Little Truck (... How I wonder if you're stuck etc) However I have several songs that are after 1922, for example -- "The Digger Game" (Digger Digger Bo Bigger, Banana Fanna Fo Figger... set to the tune of The Name Game) or "You Say Excavator, I Say Digger" (set to the tune of Let's Call The Whole Thing Off). If you do not have time to answer, would you recommend a lawyer? Do intellectual property lawyers exist in every city? We noticed that you live in Canada so we'll preface this by explaining that our answer is based on U.S. copyright law which is fairly similar to Canadian law, but not exactly. For example, Canada does not have fair use, it has "fair dealing," a slightly more restrictive concept that does not excuse parodies. Not that we're sure that your lyrics are parodies (some argue that a parody of a song makes fun of the underlying subject matter), and in any case not all such parodies are okay under fair use principles (Weird Al Yankovic pays for the right to rewrite the lyrics -- this article provides more details).
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

Can I Create a Stars Wars App?

Dear Rich: I am a Star Wars fan and in my spare time I have created a Win 8 app game which uses the Star Wars storyline. Now it is nearly finished but I have some doubts in publishing it to the Windows Store so everybody can play it. I don't ask any money for it so it's free to play for anyone who wishes to play it. It is a game where you can compete against other players. Do I risk to much if I publish it online ? If I do, will I get sued for many $$$ or will I first get some kind of notice so I have the time to take my server offline so you won't be able to play it anymore? Yes, Lucasfilm, the owners of all things Star Wars-ian, will  likely close down your app at warp speed (assuming you're going to sell your app through an app store, and assuming you can get your app past the app store screeners). Unlicensed Star Wars apps disappear quickly from app stores because it's fairly easy to find and shut down app infringements (for example, some of the apps in this article seem to have gone away). That also explains why the only legit Star Wars apps you can find are by Lucasfilm or a licensee such as Angry Birds, Legos, etc.
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

Can Site Sue For Downloading Photo?

Dear Rich: I'd like to follow up on the "Can I use Louise Brooks Photo?" question. Your answer was (basically) that it was likely public domain because it probably was not renewed, so the artist could use the image without (much) fear of repercussion from a copyright holder. But what about the site hosting the image from which the artist obtained the image? Would the artist have to worry about the site hosting the image claiming some sort of copyright? I know about Corel v. Bridgeman, but that doesn't stop many websites from claiming copyright to the PD photographs that they have scanned and posted. Does that have any validity, or could the artist freely download and use the photo? Does the ubiquity of the image impact this at all -- an image that's all over the place would be okay, while an image scanned onto one site be off limits? You can almost always download a public domain image without consequence. The only exceptions are if the work has been modified and a separate copyright exists in the derivative (the "moustache on the Mona Lisa" situation), or if you affirmatively consented to a site's terms and conditions (for example, you clicked "Yes to Accept"), and those terms and conditions prohibited downloading. The latter, by the way, is not a copyright violation, it's breach of a contract (a license agreement). Otherwise, you're free to download a public domain image. We've addressed this issue -- where somebody claims copyright over their copy of a public domain work -- in a previous post about Gray's Anatomy (not the TV show) and in another post about the Crystal Bridges Museum. In almost all cases, these claims over ownership over a public domain image are a mixture of wishful thinking and legal bluster.

Monday, March 11, 2013

Wants to Create Superman Coffee Table Book

Dear Rich: I am working on a Superman movie coffee table book that will be photo heavy and likely self-published. The photos come from my own collection, many of which were never seen by the public (and were not going to be used in publicity because they are production photos and not posed stills). I have run a website,, for many years. It is a favorite among fans, Superman director Richard Donner, the late Christopher Reeve, and many stars of the Superman movies. Warner Bros. has even bought photos from me for their DVD art. I am told that I have more photos than Warner’s does in their vaults! My question is, do I need to get permission from Warner Bros. to publish these ultra rare photos? I don’t need anything material wise from WB since it’s all in my archives. The photos were shot by various set photographers between early 1977 and the end of 1978. Somebody owns the copyright in the photos and we're guessing that it's Warner Brothers/DC Comics who acquired rights from whoever employed the set photographers. Even though WB paid you for access to your collection, they're probably the ones from whom you would need permission.
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

Wants to Make Documentary About Famous Movie Star

Dear Rich: I want to make a documentary film about a famous movie star who’s still living and active. I will use photos and clips of him and license them from Getty Images. I assume I can do this without obtaining ANY clearances from the movie star, correct? Under what conditions could the star sue me? I assume that as long as the documentary is true and not malicious, I’ll be OK. 
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

Has Idea for Book Bag Design

Dear Rich: I am 20 years old and I'm looking to get my idea patented. Which forms are needed for a book bag type design?  Are all the fees due at the same time the application is turned in or can I just pay the $125? And also, do I file a utility patent or just a design patent. I am still unclear to the distinctions. Young inventors are an inspiration. Did you know Louis Braille was 15 when he invented the reading system used by blind persons? And Chester Greenwood was 15 when he invented earmuffs. Frank Epperson was 11 when he invented the popsicle (originally called the Epsicle). And Charles Babbage was 19 when he invented the concept of a programmable computer!
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

Wants to Make Ric Rac Taggies

Dear Rich: I want to make a taggie for a friend and know people will see it and want one. I am aware of the legal issues on looped ribbon. Can I use textured ribbon and Ric Rac? I have ribbon which has "handmade with love" on it. Can I put the ribbon corner to corner diagonally? Is this allowed? I want to add texture to a normal square-shaped one and add a squeak to the shapes cut from a slice fabrique. Can you tell me if this is ok? Is it okay to use fleece? I need help so I am not breaching copywright issues. We're always excited to learn about popular crafts items, especially ones that we know nothing about ... Wait a sec ... we do know something about Taggies! We  wrote about them in a previous entry.
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.)

POST #1000!!!! 

Tuesday, March 5, 2013

Can We Make Cover Song Video?

Dear Rich: I'm in a band, that's just starting. We write songs, which we intend to release soon. We were wondering, though, if it would be alright to make some videos of us singing other artist's songs first, and post them online (not to be sold, though), using them as a sort of advertisement. I've tried researching that, and it seems that technically it's illegal, but we don't understand why so many people have done that very thing, and later been rewarded with recording contracts, (i.e. Justin Bieber, Cody Simpson, Christina Grimmie and Greyson Chance). If it's illegal, why does it seem to work for so many people?  First, we're happy you formed a band. It's a great way to make friends (and enemies) and it teaches young people a lot about important stuff like personal hygiene. We're not familiar with most of the artists you mentioned but that's probably why they're successful. In any case, you're correct that it is a violation of copyright law to make a cover-song video without permission. People do it and "get away with it" because websites such as YouTube have worked out arrangements with many song owners. Instead of requiring that the video be taken down, the song owners allow the video to stay up as long as advertisements are displayed and/or run in conjunction with the video. The song owner keeps the money from the ad revenue. In addition, you may find it difficult to embed your cover video outside of YouTube, or as you'll see if you click our cover song above, you'll get a message forcing you to watch the video on YouTube thereby enabling the ads (we love what happens at :54 seconds). We wrote about this phenomenon (sometimes triggered by a system called Content ID) in a previous blog entry. You can also learn more about cover songs and videos by reading this article at CDBaby.

Monday, March 4, 2013

Should I Patent My Clothing Idea?

Pat No. 4,151,613
A protective device for the buttocks and hips
 of a person for use in skateboarding
Dear Rich: There is sport-specific clothing, padded bike shorts, fishing vests, etc. I have an idea to use a specific aspect of one sport-specific clothing item and apply it to a different sport-specific clothing item. I think it would qualify for a design patent, since I would be merging two clothing aspects that have not been used together before. My question is whether it might qualify for a utility patent since the clothing item is "used" in the sport.  We understand your desire not to disclose your invention (and BTW -- after March 16, nondisclosures make even more sense). But because we don't know what your sports-related invention is, we can't really advise whether a utility or design patent is appropriate. The main guideline is that if your innovation does something (other than looking cool), you're in the world of utility patents. If your innovation primarily enhances the appearance, then you're in the world of design patents. That doesn't mean you'll qualify for the respective patents -- there's plenty of deets to deal with. But that's how you start your analysis.

Friday, March 1, 2013

Should She Trademark or Patent Doll?

Dear Rich: I created a new plush doll from an original design. The intent is to manufacture and offer the doll for sale. Should I apply for a trademark or a patent? We can't tell you whether you should file a patent or a trademark, but we'll give you some background on how those decisions are made by doll companies.
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).