Wants to Blu-Ray School Band Concerts

Dear Rich: I’d like to do multi-camera recordings of local high school band concerts and choir concerts.  I think I’m entering new territory by recording and possibly streaming the concerts. All proceeds from the selling of DVDs and Blu-ray discs go back to the school’s programs. I won’t be making any money off these endeavors. What kind of permissions do I need to secure? Do I need to contact the publisher for each piece that is performed? The correct legal answer is that yes, you would need to contact the publisher for each piece and get a sync license (we talk about it here), as well as permission from the school band performers and conductors (to avoid right of publicity claims). Since sync licenses are so difficult to obtain, we believe you can probably protect yourself just as well by getting a mechanical license instead of sync license. (Mechanicals are used only for audio recordings, syncs are for audiovisual recordings.) That would deflect any disgruntled publishers ... though we doubt any would want the negative publicity resulting from a brouhaha with a high school band.
Practically speaking ... If you are only selling the disks locally to members of the community, you can probably forego most of the permissions mentioned above. (It's what often happens when a tree falls in the intellectual property forest.) It may help to have something in writing (emails are fine) between you and the school that indicates you have their permission for your endeavor. If you intend to sell to a broader audience, you will probably need to get the permissions discussed above (and described in detail in the Getting Permission book.)

Can We Get Out of Record Deal?

Dear Rich: I am in a band and last year we signed a distribution and publishing agreement which has turned into an absolute mess. I used to sing in the band but subsequently have found myself less our singer and more our copyright lawyer. I am better at singing. Our agreement made us solely responsible for paying for and producing the master recordings - we did. The label's responsibility was in providing marketing, booking, and distribution - they didn't. As a result we told them they were in breach of contract and gave them a 60 day notice letter wherein they had 60 days to remedy their non-performance or be in breach and the contract would be terminated. The confusing part is that they then proceeded to put our recording up for sale through physical and digital means. We told them to stop selling based on the fact that no separate "Exclusive Co-Publishing Agreement" was ever reached. Below is an excerpt from our agreement outlining the publishing deal (names changed, Sub=band, Company=label): 

 You hereby agree to grant and assign to Company affiliated publishing company, Mr Publisher (ASCAP) a division of Mr Publisher Media Group LLC a 50% copyright and performing rights interest less collection fees and 100% administration rights in and to each musical composition written, owned or acquired by you during the term of this recording agreement ("Compositions"). In connection therewith, you agree to enter into a separate Exclusive Co-Publishing Agreement with Mr Publisher (ASCAP), the terms of which shall be negotiated in good faith, but which shall include the right of Mr Publisher (ASCAP) to administer the Compositions throughout the world and may elect to charge an administration fee of (ten 10%). Should Company and Sub decide to terminate this agreement all rights of copyright will revert back to Sub unless Company can prove substantial progress in its tenure of administering compositions. 

Since we are splitting the copyright does that mean they are able to continue selling our music without our permission? Are we able to register our masters with the copyright office on our own given they have a 50% stake? So confused... Whenever the Dear Rich Staff gets a long letter that includes excerpts from a contract, our first thought is usually, "Get thee to an attorney." We think that's the proper course of action in this case. Here's why:
The cure letter. If your basis for claiming breach of contract was a failure to market, book and distribute the band, then by providing the "cure" letter you gave the company 60 days to correct those omissions. If the label failed to market, book and distribute within 60 days of your letter, the agreement is terminated. Putting the music up for digital and physical sale isn't enough to cure. The label needs to demonstrate an effort to market and book the band, too (and correct any other omissions mentioned in your cure letter). If not cured, the label is in breach and your grant (assignment) of publishing rights would be terminated as well. In other words, terminating the record deal for breach would allow you to retain all of your publishing rights and there would be no reason to execute a written publishing agreement.
Get out of it! So, you should stay focused on ending the contract  which, by the way, seems a bit lopsided (welcome to the music business). As we understand it, you pay to produce the album and you give up half of your publishing. The label doesn't seem to be taking any risk. After all posting a recording is easy, and creating physical CDs can be done without much of a financial commitment. So, unless the label has an impressive track record with other artists, you'd do best to pool your money, hire a lawyer and make sure the agreement is fully terminated quickly. The annoyingly difficult part is getting the label to take down the music it has posted for sale. In conjunction with getting an attorney, you should also register your music at the Copyright Office and with a performing rights society. And of course, another reason to check with an attorney is that we could be completely wrong about all of this. A second opinion will help.
Hiring a lawyer. If paying for a lawyer is a challenge, find out if there's a volunteer lawyer for the arts service near you.

Illustrating Book About Chinese Zodiacs

Dear Rich: I'm an artist and my friend is a writer. She wants me to illustrate her book on Chinese zodiac astrology. My art would be heavily displayed in the book. How do we work out my getting paid for my art? Do I charge her a flat fee or take a cut of the earnings? Consider the following questions before proposing anything to the writer.
Is the artwork supplementary or essential? If the artwork is an essential part of the purchasing decision -- as in a home decorating or children's picture book -- that would be more likely to justify a cut of the earnings. If the illustrations simply supplement the writing (as in most nonfiction books), flat fees are more common.
How much time will it take and what is your time worth? Estimate the number of hours per drawing. If you were billing an anonymous client for the same work, what would you charge? This would be your starting point in determining what you want to earn back (though of course there may a steep discount for your friend). The Graphic Artists Guild Handbook provides assistance with pricing.
How likely is it that the book will be distributed by a commercial publisher? If this work will be the subject of a book deal, the typical advance (assuming there is one) for a nonfiction book would be between $3,000 and $10,000 (though others indicate these advances are higher; we don't think that's an accurate reflection of today's marketplace). Royalties would be 5 to 10% of the book's income but would only be paid after the advance has been earned back. Nonfiction books usually have a sales life of 12 to 14 months. If a book deal is in the works, and you feel you are entitled to a cut of the earnings, you should seek to become a party to the publishing contract. Otherwise, you must rely on the writer to receive the income and then forward your payment.
What does your friend want to do? Because you're dealing with a friend -- not an anonymous client -- we'd like to see you work out an arrangement that doesn't jeopardize your personal relationship. You could propose a two-tiered system -- for example a reduced flat fee but an additional payment if a book deal is signed.
What about the rights? Are you transferring copyright ownership? Do you want to retain certain rights so that you can continue to use, sell or display the artwork. Determining rights may affect the price. For example, if you would like the right to sell limited edition prints, or to advertise those prints in the book, you might want to adjust your fees accordingly.

Rules for Reproducing Copyrighted Evidence

Dear Rich: I'm filing my first pro se case for copyright infringement. Is it fair use to make a copy of something to use as a evidence (or exhibit) in court. Courts typically consider it a fair use when copyrighted material is reproduced for a court proceeding. Here are some examples:

• The Second Circuit ruled that it was a fair use to reproduce a series of web essays as supporting evidence. 
• A New York district court reached a similar result when copyrighted videos were introduced as evidence. 
• A Michigan federal court also reached the same fair use conclusion when construction photos were introduced into evidence. 
• The Tenth Circuit excused copying of a copyrighted work for litigation purposes as a fair use in 2007. However, the Tenth Circuit refused, unlike the Ninth and Second Circuits, to establish a fixed rule that such uses, by their nature, are a fair use. Instead, each case should be judged on its merits.
• The Ninth Circuit has stated that the use of copyrighted material as evidence in judicial proceedings is fair use, so long as the users do not reproduce the work for its “intrinsic purpose.” 

What's an "intrinsic purpose?" It's a use that is for the same purpose as the copyright holder intended. For example, it was not a fair use when one party copied photos after it refused to pay the $15 per photo fees incurred by a trial evidence firm that had prepared the photos for litigation. In other words, the photos were prepared for the litigation and one party sought to avoid paying for their preparation.
PS. Good luck with your pro se case. (Here's the strategy that the lawyers on the other side will use against you.) 

Wants to Use Bruno for Hair Salon

Dear Rich: I have set up an upmarket ladies hair salon called Bruno's Kuafor, and used Sacha Baron Cohen's satirical character Bruno as the inspiration. We actually use one striking image of the character all over our marketing literature. The logo is our own. The whole theme works brilliantly, and I did have it in mind to contact him to help the promotion, or even give him some financial share or incentive. But we are in Istanbul, so we are a long way away, and we didn't get round to it. And now a friend wants to open a branch in New York. What can I get away with, what should I do, is this a good time to contact Mr. Cohen or his agent to license the image of his dead character, or indeed try and get Mr Cohen involved more directly? We love the image, it is one that was used widely to promote the film Bruno, we just lifted it off the internet. We're not sure about Turkish law, but under U.S. law, you will need permission from the company that owns the rights to the Bruno character, as well as from Sacha Baron Cohen, whose image is used to promote your salon. That's because the use of the character and the actor's image triggers violations of copyright law (using images from the film), trademark law (the character may have acquired trademark status), and the right of publicity (the right of a person to control the use of his or her image for commercial purposes). Obviously, the more successful you become, the more likely you will need permission ... which is a bit of a Catch 22 because by seeking permission, you're alerting the company as to your use. If you do decide to seek permission, we believe the place to start would be Four By Two Films, the production company owned by Cohen and responsible for his movies and TV shows.

Is Permission Needed to List Websites in Book?

Do I need to get permission to list websites in a published book? All the websites I wish to include are accessible through Google. Do I need to deal with each site for permission or do I need to deal with Google? You don't need to deal with either; no permission is required when providing the name or publicly-accessible URL (web address) for any website. You may only run into problems listing websites if you are encouraging illegal activity by knowingly listing or linking to sites that promote bad stuff -- for example, child porn sites, sources of illegal downloads, or sites that are exposing confidential information or invading privacy.

Can You Really Protect a Cartoon Character with Copyright?

Dear Rich: In response to your recent post on whether you can patent a cartoon character ... You can trademark a cartoon character. However, you can't actually copyright a character. You can copyright a story (either prose or illustrated) or an illustration featuring the character. A number of companies have discovered to their sorrow that unless stories featuring the characters have their copyrights renewed, those stories (even with trademarked characters) fall into the public domain. Examples of this are the first Superman novel, Adventures of Superman by George Lowther, the Fleisher Brothers' Superman, Betty Boop, and Popeye cartoons, and the Flash Gordon and Buck Rogers movie serials among many others. We think you are on the right track -- You can register text describing the character or an image of the character but you cannot simply register the copyright for a character. However, regardless of whether you can register the character per se, copyright law will protect the character separately from the underlying text or story from which it evolved. So, even when an underlying work falls into the public domain, the copyright for the character may not. For example, when several strips of the Superman comic fell into the public domain in a 1952 case, a court ruled that the character of Superman did not. On the other hand, if all of the works embodying an author's character have fallen into the public domain, for example -- The Grimm Brothers' Snow White character -- then the character is free for all to use. Things get confusing when there is a dispute as to whether all of the author's works are in the public domain as is the case with Sherlock Holmes.

Can Editor Include Samples in Portfolio?

Dear Rich: I am an editor and have a potential client who is asking me for before-and-after editing samples on certain topics. I’m not going to send anything from any client who has made me sign nondisclosure forms, but I do have a couple of book manuscripts that fit the bill. I can take a chapter and remove any obviously identifying info or metadata, but unfortunately anyone could Google a passage and figure out what the book is and who the author is. Do you think it’s professionally unethical to use the samples without getting the author’s permission? Or could it even be a violation of copyright? We can't comment on the ethical obligations of an editor -- that's between, you, your client and the ethics gods -- but we can respond to the legal issues.
Is it a violation of law? Copyright infringement occurs when a copyrighted work is reproduced without the permission of the copyright owner. So, technically you are infringing by forwarding chapters without permission. We doubt this will turn into an issue for you, however, because it seems unlikely that the copyright owner will learn of your use. And if the owner does learn of your use, the case for infringement is not especially strong because you limited distribution (and damages) and may even be able to qualify the copy as a fair use. You can further limit liability by requesting that the potential client not reproduce the samples and maintain their confidentiality. (That indicates your good faith in limiting reproduction.) That's not as powerful as having the potential client sign a confidentiality agreement (which we doubt you want to do).  However, if the potential client asks you to sign a confidentiality agreement, by all means, seek to make it mutual, so that the submissions will be confidential. And in the future, if you use editing agreements, you might want to include a provision that grants you a non exclusive license to reproduce segments of the editing work in your "portfolio" to be shown only to potential clients.

Needs LLC for Band

I greatly appreciate the downloadable forms that come with your Music Law book. However, would you have a sample LLC Agreement or can you point me to a good one to use for a band? We can't point you to an LLC for a musical group but hopefully the next edition of our book will include an LLC operating agreement for a band. Until then, you will need to copy (or adopt) the relevant provisions from the partnership agreements into the LLC agreement.  This article explains some of the differences between the two arrangements.
As you may already know, there's more to forming a band LLC than preparing the LLC operating agreement. Unlike a partnership, you need to file documentation with your state government. This article explains the steps to LLC-dom.

Sorry, You Can't Patent Cartoon Characters

Dear Rich: I would love to know more about patent drawing requirements. Well, first off my drawing in this case are cartoons characters which I would love to share around the internet but I am afraid that it will be easily stolen. Is it possible to patent cartoons for example, Mickey Mouse? If yes what should I do to achieve such actions and what documents are required? I'm interested in starting an online comic and my further plan is to sell some small merchandise into the market and therefore I will need such protection. We think you misunderstand the purpose of patent drawings. They're technical illustrations that explain how to make and use a patented innovation. So, they're not the right choice for protecting a cartoon character.*
How do most cartoonists protect their creations? Most cartoon characters are protected under copyright and trademark law (not patent law). Even though copyright is free and automatic, we still recommend copyright registration (online $35). Read more about copyright protection and registration for protecting cartoons and comic strips. You can also acquire trademark protection for your character. That provides exclusive rights to the character name, logo, and image on certain goods and services. Read more about trademark law, here. Keep in mind, no matter what laws protect your character, you can't prevent others from stealing it. These legal protections give you the basis - assuming you can afford it --  to chase, sue and recover from the wrongdoers.
* That Said Dept. Although there's no way you can obtain a utility patent for a cartoon character (utility patents only protect functional inventions), you can file a design patent, if, for example, your character is incorporated into the design of a lamp base. It's probably overkill in your situation because of the costs involved for filings (particularly if you are seeking expedited treatment). Copyright and trademark laws should provide equivalent or better protection.

Can I Let Amazon Search Inside Self-Published Book?

Dear Rich: I have recently self-published my first book and would like to allow Amazon to present it through their "Search Inside The Book" (SITB) feature. However, it's not clear to me whether I have the legal right to do so, as my book contains some quoted material to which others hold the copyright (material which is either used by permission or is fair use). From a legal viewpoint, would I be seen as granting Amazon permission to use material copyrighted by others? How do I determine whether I have the legal right to allow Amazon to present my book through their SITB program? If you have the legal  right to publish other people's material in your book -- whether by permission or via fair use -- you likely have the right to permit the "Search Inside the Book" features.
Amazon's POV. As you know, it's not possible to ask Amazon to exclude specific pages or materials from SITB books. The retail behemoth has the final say as to what's SITB-able (although opting out of the program is possible, even for self-publishers). We're not aware of any lawsuits testing the copyright aspects of SITB, and we assume that Jeff Bezos' legal staff views SITB  as the virtual equivalent of browsing in a bookstore (and therefore a fair use).
Your permission agreements. Technically, it may be a violation of your permission agreement to permit the digital display of SITB segments. However, we doubt that anyone will complain about the issue because it will probably be viewed as an accepted part of the book-selling process. However, if your permission agreement specifically prohibits this type of use, you're best off opting out.
Fair use. As for the segments for which you can prove fair use, you should be fine. That's because, if your fair use arguments succeed for the print or electronic versions of the book, they will likely succeed for the SITB virtual display.

Needs Actor Release

Dear Rich: We will be seeking funding on Kickstarter, Indie GoGo, Rocket Hub, etc. for a musical we want to film/record this summer. We have a licensing agreement with the composers; the story has been written to their music. We authored/copyrighted the play (book) although we've borrowed plot points/character profiles from Shakespeare--pretty sure that's okay. Our plan is to film the musical on stage. We will press a limited number of CD's/DVD's since we are only paying actors and crew a stipend for their participation. What type of releases would you recommend we will need from the actors?     When it comes to the permissions needed for making films, we usually consult our favorite reference, Clearance & Copyright: Everything You Need to Know for Film and Television. Assuming you're not using a Screen Actors Guild (SAG) contract, author Michael Donaldson recommends including a clause like the following in the actor's agreement:

Rights: Producer shall own all rights of every kind in the results and proceeds of Actor's services hereunder. Producer shall have the unlimited right throughout the universe and perpetuity to exhibit the motion picture in all media, now, or hereafter known. Actor's services are a work for hire.

By the way, Donaldson also recommends getting similar "work for hire" contractual assurances from the crew working on the film. Check out his book for more information.

Wants to Modify Copyright-Protected Home

Dear Rich: We're friends with the architect for our house -- built in 1992. It's kind of a unique house and has been featured in an architectural blog. The architect has mentioned a few times that she has the copyright for our house. She brings it up in a friendly way. But we wondered what that really means. She seems to be implying that we can't make any major changes without her permission. We're hesitant to bring up the fact that we're contemplating a major renovation. So before we talk to her, we wanted to know what the law says. The law says you're fine to make major renovations or revisions to copyright-protected architecture without the copyright owner's permission. Section 17 U.S.C. 120(b) states that: "Notwithstanding the provisions of section 106(2), the owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alterations to such building, and destroy or authorize the destruction of such building."

More Gray's Anatomy

Question #1: Dear Rich: I was trying to find out whether Gray's Anatomy is copyrighted as I wanted to published some of the images in a scientific publication, when I came across the posting in your blog. I live in Canada, and was wondering whether I could use these without obtaining permission. Otherwise, who would I contact for permission?

Question #2: Dear Rich: I am a visual artist from Germany, living in the U.S.A. A few years ago I inherited Gray's Anatomy, the 22d Edition. It has beautiful engravings, and I fell in love with one or the other, and combine them with my own work. I would like to use some of the engravings which are in public domain, but scan the ones from my book for a better resolution. I also would like to remove the text. So, my question, is, am I allowed to use the engravings on bartleby.com without getting in trouble? Although we've already answered a similar question, we'll summarize the rules one more time.

• The 20th edition is public domain in the U.S. because it was published prior to 1923. 
• It's likely that the 20th edition is public domain around the world. (That would not be the case if some illustrators of the 20th edition were not anonymous and lived past 1942. PS -All works by Henry Vandyke Carter are in the PD). 
• You can freely copy, scan or reproduce images that are in the public domain whether on Bartleby.com or wikimedia.org.
• The current owner of rights and publisher of the 40th edition is Elsevier. (Here's information about their rights and permissions policies.)

Can I Avoid Infringing By Making Book Public Domain?

Dear Rich: An author writes a book about a band – we’ll call it ROC STAR. The author sells the movie rights, to a studio. The studio makes a movie – which carries the same name as the book and the band – but from THEIR screenplay, which differs from the original book, in that they change the names of the characters. The original author – who apparently still owns the rights to the story, the title, and the name of the band – writes a sequel to the original book. A second author writes a book, inspired by the movie, and which is blatantly a ‘derivative work’. It is about six different characters who form a different band, which is discovered by the members of ROC STAR (the band from the original story). While it is a 100% original story, the second author does mention the original band by name, as well as the original characters, but by their names in the MOVIE. It also quotes a few lines of lyrics from a song ROC STAR performed in the movie, which of course is owned by the studio. Assuming the second author (of the derivative work) is considering publishing his story, what permissions will he need, and more importantly, who does he need to request them from? My final question would be, what are the ramifications - if any - of simply putting the story into the public domain (posting it and giving it away), should I decide not to jump through all the hoops I expect are going to be presented if I try to publish it. If you don't have the rights to all the material  -- you're creating an infringing derivative work -- you don't have the legal power to dedicate it to the public. Only the copyright owner (either the movie company or the initial author) can dedicate the work to the public domain.
Does your book infringe? Possibly. You probably remember when a Swedish author was prohibited from publishing a sequel to Catcher in the Rye (even though the lead character's name -- Holden Caulfield -- never appeared in the "sequel.") We could point to other cases as well but the takeaway is that any success you may achieve will be short-lived because it's likely that once the author or movie company learn of your work, they'll try to shut it down (and you probably can't afford to fight over it). On the other hand, if the book stays low on the radar -- for example, it's posted on a fanfiction type site -- the owners may consider it "non-threatening" and allow it to remain posted in obscurity.  Because your work overlaps with fanfic, you should check out the Chilling Effects FAQs  on the topic.

Railway Enthusiasts Disease

Dear Rich: I saw a humorous vintage metal enamel sign [not itself vintage or antique; a modern version/copy] with humorous references to 'railway enthusiasts disease'; it lists causes for the affliction and suggests silly remedies. Very amusing if you're keen on steam trains! Well, I help out at a steam railway and the question is could we create and sell a poster using similar phraseology to this? The wording might be similar but not the same; we might like to use the phrase 'railway enthusiasts disease' though. The sign itself does not bear a copyright notice.  We've found some examples: this t-shirt at the Thomas the Tank store, this one at the Ian Allan Bookshop, and this one at National Road Transport, and this enameled sign, and this one on eBay. We're not seeing any notice of copyright or a statement of license. That doesn't mean nobody claims ownership, but it feels like this content is in a category you could call free-range copyright. If owners exist, they don't enforce rights. It's also possible that the content is public domain, but determining that would take some digging into railroadiana.
Can I use the title? Even if the sign's content were protected, you can use the phrase "railway enthusiasts disease" without infringing. We don't see any evidence that it's being used as a trademark and short phrases are difficult to protect under copyright law.
P.S. As you've noticed, all of the examples are from British sites, so we're going to assume you're British as well. In that case, we issue our typical disclaimer: our answer is based on U.S. copyright law, which although derived from British law, is not the same.

What Good are Marks on the Supplemental Register?

My trademark application was rejected as being merely descriptive and I was told that the mark could be moved to the Supplemental Register. Should I do it? Yes, do it. When your mark describes the goods or services, and it lacks enough juice (secondary meaning) to be registered on the Principal Register, it's almost always worthwhile to register the mark  on the Supplemental Register (as we explain in this article). The Supplemental Register is a "waiting room" for weak or descriptive marks and your mark's presence there will serve as a presumptive "block" to anyone seeking to register a similar mark for similar goods. (Plus you can use the ® symbol.) After five years on the Supplemental Register, the mark becomes eligible for the Principal Register, provided that the owner can demonstrate that consumers associate the mark with the company (a presumption that's made after five years).