Friday, May 31, 2013

Dragnet: PD or not PD?

[See our update on this entry
Dear Rich: Who owns the rights to the Dragnet TV series from the 1950's? I understand it was owned by the Jack Webb estate after he passed away in 1982. I am trying to find out if the original prints or negatives of these shows are available to be put on DVD or Blu-ray. I know that the copyright for some shows has run out but the copies available are old 16mm TV prints, I am interested in the 35mm originals. Some (or all) of the 1950's series episodes of Dragnet appear to be in the public domain, probably because of a failure to renew the copyright. According to our friends at Wikipedia, "Most, if not all, episodes of this [1951] series have become public domain, and fifty-two episodes have been released by many DVD labels." The public domain status is reinforced by the fact that 64 episodes of the 1951 series are available at the Internet Archive. Because there were 276 episodes in the 1951 series, its not clear why the remaining episodes aren't available. Either: (1) they're not in the public domain, (2) Mark VII Limited (the production company that owns the shows) has never released them for distribution, or (3) copies of the episodes don't exist anymore. (BTW, the 1967 series is under copyright.) (Previously, we wrote about the public domain status of the Dragnet theme song and radio show. )

Thursday, May 30, 2013

Wants to Protect Sneaker Design?

Dear Rich: I wanted to know if you can copyright a sneaker design. I have a few designs that I would like to protect, and is it legal to use the style of Converse Sneaker but with your own designs sort of like what Ed Hardy did with their designs? If you're talking about a two-dimensional design printed on a sneaker -- for example, somebody screens a photograph or artistic design on the fabric of the shoe -- you can protect the artwork under copyright law. To fortify your claim, you could register it with the Copyright Office and chase anyone who infringes it, whether it's reprinted on sneakers, sheets, or bed pans. By the way, we believe Converse licensed the images from Ed Hardy. Anyone who reproduces the Converse style (such that it imitates or conjures up the Converse brand) without permission is likely to hear from Nike (the owners of the Converse brand).
When copyright isn't enough ...  Copyright canot protect useful objects, so if by "design," you're talking about the design of the sneaker, itself -- toe patterns, side stripes, stitching, tips, number and placement of ringlets, appearance of the tongue, color of the laces, etc. --  then you want to consider the protection afforded by design patents. That's the approach taken by shoe makers such as Nike, Reebok,  AVIA, Asics, LA Gear, Rockport, Sketchers, Wolverine, Keds, Louis Vuitton, Timberland, Berluti, and Kangaroos.

Tuesday, May 28, 2013

What's the Right Patent Royalty?

Dear Rich: I have a patent pending product line. The patent was filed in January, 2011. A company has approached me and showed interest in licensing the technology. I had them sign an NDA. I shared all the info, production sheets, gave them actual samples, provided them with copies of my marketing material, approved their production sample. They want to use my three trademarks, as I am considered an expert in this particular technology. All of a sudden they are telling me that they want to produce the product, use my trademarks, but pay the royalty only once the patent is issued. I know that royalties are up to 8%. I like your approach of a tiered royalty. Although my products are still patent pending, and they want to use three of my trademarks, I feel a 5% royalty is what I should ask for. What do you think? Choosing the right royalty is a business decision, not a legal one, so we leave that one up to you. As for the rest of it, here's some info that may point you in the right direction.
The trademark licenses. When a company wants to license trademarks and patents, it's not unreasonable to set separate royalty rates for the trademarks. That way, if the trademark goodwill outlives the life of the patent -- for example, as with a product such as Scotchgard -- the trademark owner will still receive revenues, despite the lack of patent protection.
Two tiers.  In previous entries and in our licensing book, we have suggested a two-tiered royalty for patent-pending products: one rate if the invention acquires patent protection; the other rate if the USPTO won't issue a patent. This often works when a product's success is tied to a first-to-market strategy.
Will your NDA protect you?  If the company wants a single royalty -- they're saying that they will only license the product if the patent is granted -- then you need to re-group.  If the product doesn't get a patent and it still has commercial potential, can the company go ahead with production and cut you out of the picture? Will your NDA protect you if, during the patent process, your patent is published as typically happens after 18 month -- and it's no longer a trade secret? Does your NDA prohibit the company from selling your product if it doesn't enter into a licensing deal? These are issues where an attorney's analysis may prove helpful.

Wednesday, May 22, 2013

Bird Feeder: Patent or Copyright?

Dear Rich: I have a design for a bird feeder which hasn't been made by anyone else yet. I want to pitch the idea to a company but don't want them to steal my idea. Is a copyright on the design good enough to stop them, or should I apply for a patent? Copyright won't protect useful objects, so we don't think that would be the best choice (unless you want to stop others from copying your bird feeder's imagery). Instead, consider one of the following methods of protection:
Design patents. Inventors use design patents to protect the appearance or design of a functional object. Some examples of bird feeder design patents are this one and this one. Read more about design patents.
Utility patents. Inventors use utility patents to protect bird feeders with unique functional features -- for example, this squirrel-repelling feeder or this squirrel-repelling feeder or this squirrel-repelling feeder (whoa that's a lot of repelled squirrels). Read more about utility patents. (Also you can preserve your place in line at that Patent Office without filing a full patent application by filing a provisional patent application.
Trade secret. Some inventors seek to protect their rights when submitting ideas by using nondisclosure agreements (NDAs), thereby preserving trade secrets. The problem for inventors is that often the evaluating company won't sign the NDA because of concerns that they'll be precluded from developing similar ideas. Read more about NDAs and trade secrets.

Tuesday, May 21, 2013

Is Inventor's Lab Subject to Zoning Laws?

Dear Rich: I am an inventor who has received two patents and am waiting for a third. My inventions are all electrical and I do my inventing in a separate structure I built on my property. The structure was built to code and I got all the needed permits. Recently, there was an accident in my work area and a small fire occurred. The fire department came but I had already put the fire out with an extinguisher. However, a neighbor wasn't happy when she learned that I use the structure, which is near her home, for electrical experiments and she's claiming that the structure is not zoned for business use. Things are hard enough for independent inventors. Can you suggest any ways to get around this problem? You would be subject to local zoning laws (especially if inventing is a business for you, not a hobby.)
Get in the zone.  The purpose of zoning rules is to help maintain the peace and quiet of residential neighborhoods. To find out where your community falls on the issue, read your local zoning ordinance. You can obtain a copy from your city or county clerk’s office or your public library. Zoning ordinances are worded in many different ways to limit businesses in residential areas. Some are extremely vague, allowing “customary home-based occupations.” Others allow homeowners to use their houses for a broad but, unfortunately, not very specific list of business purposes -- for example, “professions and domestic occupations, crafts and services.” Still others contain a detailed list of approved occupations, such as “law, dentistry, medicine, music lessons, photography, cabinetmaking.” Whether inventing falls within one of these categories is usually unclear -- meaning it may be difficult or impossible to know for sure whether your local zoning ordinance bars home inventing businesses. Most ordinances prohibit activities that cause excessive noise, pollution, waste, odors and similar conditions not appropriate in a residential neighborhood. The important factor in zoning disputes is usually not the rules themselves, but maintaining peace with your neighbors so that the rules don't become an issue.
Public nuisance and other law. Keep in mind that even if your community doesn’t have restrictive zoning laws concerning home businesses, it could take legal action against you if you make a nuisance of yourself -- that is, do something that may harm public health or safety; for example, creating excessive noise or offensive odors, or storing hazardous chemicals or waste ... or starting fires. In addition, your invention business may be limited if (1) there are restrictions in a lease (if you're renting), or (2) there are restrictions in your community's CC&R's (if you live in a gated community).

Monday, May 20, 2013

Bringing in a Musician After the Song is Written

Dear Rich: I have many songs that were written/recorded to a drum beat (loop) or with no music. I write the lyrics, arrangement and compose the vocal melody. My understanding of publishing splits is 50% lyrics and 50% music. If I bring in a musician after the fact to help write the music, what is the publishing split since the music was written to my melody and vocal arrangement? A publisher told me the vocal melody is considered part of music composition. Is this true? Some musicians/composers often ask for 25% publishing since the song was written when they got involved and some want 50%. Which is correct and/or fair? Also, what would their copyright share be? When I co-write with someone from scratch, we split everything 50%-50%. I like to keep the math easy and both of us happy. If you are bringing in musicians after the song is written, there is usually no reason to share songwriting revenues. You can, if you wish ... Many people in your position simply pay the musician a fee and have them assign any rights to you. However, if the musician is doing more -- for example, rewriting the melody -- or you just want to share songwriting revenues instead of paying for an assignment, read on.
Three things:
  • There's a difference between sharing co-writing copyright credit and sharing revenues. Only someone who has materially contributed to the writing of the composition is entitled to copyright co-ownership. On the other hand, you're free to share your songwriting revenues with anyone.
  • A lot depends on how you structure the music publishing. We can't go into the gruesome details here but you can learn more about music publishing (and see examples of royalty splits for a band) in our Music Law book (or check out Randy Wixen's The Plain and Simple Guide to Music Publishing).
  • There are no fixed rules for dividing songwriting revenue.  
What's Common? Music publishing originated in the days of Tin Pan Alley. Songs were sometimes co-written by a lyricist (words) and a composer (music) -- the formula for classic show tunes like The Sound of Music and for rock tunes such as Satisfaction. Sometimes, as in the case of the latter tune, the lyricist also contributes the vocal melody. Typically these teams split the revenue 50/50. The Tin Pan Alley model is still around and so are lots of other variations, some of which reward people who had nothing to do with writing the words and music. Nowadays contributions that result in the song's success are given songwriting royalties -- for example, a DJ whose beats become the secret sauce for a new club hit.  Whatever you decide, formalize the arrangement in writing, even if it's just a slip of paper that you both sign indicating songwriting splits.

Friday, May 17, 2013

Can I File Foreign Patent Application in English?

Dear Rich: I want to file for foreign patent rights using a PCT application. I'm planning on applying in a few countries. Can I file in English?  Some of our readers may not know that a PCT filing refers to a procedure administered under The Patent Cooperation Treaty. Using the PCT process, you can file a patent application in the U.S. and then file a single “international application” (the “PCT application”) with the PCT Department of the USPTO that establishes a filing date for all member countries. This filing does not result in a universal PCT patent; the inventor must eventually file separate or “national” applications in each PCT jurisdiction.
Translations needed. According to the PCT rulebook, a translation of the international application must be furnished if the foreign patent office requires it. (Some countries permit you to choose from more than one language.) What's translated? The translation must include the description (including the title of the invention), the claims, and any text in the drawings. Normally the abstract must also be translated. Most countries don't require that the request itself be translated. Any foreign patent office that requires a translation of the request is obliged to furnish to the applicant–free of charge–a copy of the request form in the foreign language.

Thursday, May 16, 2013

Doesn't Like His Patent Examiner

Dear Rich: I'm having a hard time with a patent examiner. I've tried to be reasonable but it seems like the examiner is just rejecting various claims because he can. What do I do if I'm stuck with a bum examiner? Most applicants or their attorneys bite the bullet and try to deal with the examiner as best they can. You can find advice on responding to unfavorable office actions in David Pressman's Patent It Yourself (Whatever you do, you don't fire off angry missives about the examiner's mental state because those can quickly go viral in the patent world.) If you get a final adverse ruling, you can appeal to the Patent Trial and Appeal Board (PTAB). You can browse past hearings or documents at the PTAB's site. If you're not happy with the PTAB's decision,  you can appeal to the Court of Appeals for the Federal Circuit located in Washington, D.C. By the way, a new site Reed Tech Patent Advisor advertises that, for a fee, it can provide you with a background analysis of any USPTO patent examiner including all kinds of info -- for example, the average time the examiner takes to issue a patent.

Wednesday, May 15, 2013

Do I Trademark My Documentary?

Dear Rich, I am filming a documentary. Should I trademark it? Should I brand my documentary? How do I do that? Just in case you don't understand what a trademark is, we provide some background here. We can save you some time --  a single book title or movie title cannot be registered at the U.S. Patent and Trademark office. You can, however, register a title that's part of a series, for example, the Up series. (Here's an article with some workarounds for acquiring trademark protection for single movie titles.)
Branding. We remember when "to brand" meant to burn the flesh of an animal to indicate ownership. Ouch! Nowadays, of course, it refers to all kinds of marketing stuff typically related to a product or service line. In addition to product branding, there's personal branding, faith branding, nation branding, and employer branding. We're going to assume that branding your documentary means that you want to expand your "product line" to as many happy customers as possible. We couldn't tell you how to do that and if we could, we'd probably be doing something else.

Tuesday, May 14, 2013

Actual Confusion Doesn't Prove Likelihood of Confusion

Dear Rich: In yesterday's question, the writer said that another company stole their trademark and that the writer got a complaint from a customer of that company. Since they have proof that customers are really confused, why do they need to prove the "likelihood" of confusion? Can't they stop the other company just by showing the actual confusion? You'd think so, wouldn't you? After all the standard for trademark infringement is likelihood of confusion. So, if you've got the real thing, why do you have to prove the "likelihood?"
Like a lot of things in trademark law, it's complicated. Although proof of actual confusion can be very convincing evidence, it is not always as convincing as it appears. As this article explains, the proof may be vague, anecdotal, and perhaps even untrustworthy. More importantly, it may not reflect how consumers actually interact with the marks in the marketplace. For this reason, proof of actual confusion is only one of the factors weighed in a trademark dispute

Monday, May 13, 2013

Site Wants to Stop Store With Similar Domain Name

Dear Rich: We have an online website store and an even though we're a small business we're pretty well-known amongst guitarists for selling  hard-to-find pedals and accessories. We've been in business for 12 years and have registered our trademark with the USPTO. A new company used the same domain name but added an "S" and they sell digital guitar samples and loops for download. We found out about them because we got a complaint from one of their customers. Can we use domain name arbitration to force them to stop using their domain name? Trademark owners are empowered to stop others from using similar names on similar goods. In this case, you sell pedals (hardware) and they sell loops (digital goods). In order to summon your trademark mojo, you'll need to make a convincing argument that customers are likely to associate you with both products -- that is, it wouldn't be unexpected that you would expand your product line to include samples and loops. An attorney might be able to help you make a convincing argument. You can then ask the other company to stop entirely. Or, short of their giving up the domain, you can try to reach an agreement to head off confusion -- for example, to include a mutual link back to the respective websites.  If they reject your requests and seem well-heeled and ready for litigation, think carefully before you start swinging. Litigation often costs way more than the amount you may lose from customer confusion.
As for domain name arbitration ... Your type of case where the two domains sell different products, is a tough case to win in arbitration. That’s because this system is set up to stop cybersquatters – those who acquire domains in bad faith. Typically that’s demonstrated when the domain is held captive or is used to divert customers. It's tougher to prevail when the domain is acquired for a legitimate business purpose that doesn’t compete with the trademark owner. You'll need to argue that the other site is acting in bad faith and deliberately creating confusion. Be warned, the arbitrators are not predictable. Although it's true that trademark owners win about 80% of the time, that’s a little misleading because a large number of these cases are defaults -- the other side doesn’t bother to respond. The fee to file for one-person arbitration is $1500.

Friday, May 10, 2013

Creating Fake U.S. Military Organization

Dear Rich: I am working on the third fictional book in a series about a fictional U.S. government counter terrorism organization. I am including considerable fictional events that occur on, and in connection with, an actual U.S. military installation, in which I use the actual name of the installation. I use fictional names for the military personnel at the location, but some of the positions are real, such as the commanding officer, MPs, etc. The stories are not based on any known actual people or events. Do I face any liability for the material in these stories/books which are published on Amazon CreateSpace and Amazon Kindle? Regardless where you publish your books, you won't face any liability. Unless you defame a real person or invade their privacy, or disclose government secrets or trade secrets in violation of an agreement, you shouldn't run into a problem. Good thing, too! Fake counter-terrorism enterprises -- whether they're Rainbow Six or Control -- are a mainstay of American fiction.

Thursday, May 9, 2013

Expansion for Board Game

Dear Rich: I read your post "Copyright and Trademark Issues for Expansion Pack for Game," and I have a related question. Rather than creating an expansion which I am trying to sell or market as a separate game from the original, I have created an expansion for a popular board game which is not separate. I am in contact with the company which owns the game, and they are interested in the full details of my expansion. I cannot find any information on how I should protect my ideas, given that they are an expansion to an existing game rather than a stand-alone game. You're in a bit of a Chinese Finger Trap. There's no way you can exploit your idea with the board game (unless you get permission from the board game owner) and there's no way you can exploit your idea by itself (you need the board game). So, we're glad that the board game owners are interested in seeing your idea. That gives us hope that they want to make a deal with you. But, alas, there's no way to guarantee that everything will proceed equitably.
Copyright protection?  Hopefully, you have something proprietary. But whether you can claim copyright in your contribution depends on how "separable" and protectable your work is from the board game. If copyright exists in the expansion, then you'll have a basis for proceeding against the owners if your creative work is hijacked. (You can seek to register your claim to copyright but would need to disclaim anything that pertains to the existing game.)
Secrecy? Ideally, you would get the game owners to sign a nondisclosure, or evaluation agreement. But many toy and game makers are hesitant to sign such agreements, or if they do sign, they often seek to exclude any ideas you have that are similar to ideas they are developing. Worse, they toss out secrecy agreements and ask you to sign a waiver agreement, waiving any obligations to maintain secrecy. In that case, you have to proceed with your own personal radar and determine whether the potential risk (losing your idea) is worth the potential reward (an acquisition or licensing payment for your idea). In general, case law about submitting ideas indicates that the best you can do to shore up your position when submitting an idea is:
  • maintain it with secrecy (due to the vagaries of trade secret law, the idea may qualify as secret),
  • don’t submit it until the company actively solicits the idea and it is clear that the arrangement is for compensation, and 
  • if possible, as mentioned above, use an evaluation (or option) agreement to maintain secrecy and to demonstrate solicitation.

Wednesday, May 8, 2013

The Prior Art Conundrum: Knock It or Not?

Dear Rich: I've just finished Patent It Yourself. The one point I'm struggling with comes in Chapter 8 (How to Draft the Specification).  I'm finding it difficult to reconcile two ideas: (1) "Don't say what the prior art can't do because this can make your invention or the problem you discovered seem obvious." (2) " should, as much as possible, try to "knock the prior art" here in order to make your invention look as good as possible." I appreciate the underlying conundrum (and that it's not of the author's making!), but this is currently my biggest concern. Since the 'non-obvious' requirement is likely to be a bigger hurdle than the 'usefulness' requirement, I'd appreciate an opinion on whether the greater risk here is in calling too much attention to the shortcomings of the prior art (making solutions seem more obvious) or not enough attention to them (making solutions seem less useful). PIY author David Pressman responds, "This is a good question. Here’s a better explanation that I had recently written in response to another person who had seen this dichotomy:
In the PRIOR-ART section don’t mention your invention or suggest any solutions. Never state that any prior art reference doesn’t teach a specific feature of your invention. When you knock the prior art, just state what's generally wrong with it from a novice's standpoint and don’t state that it doesn't have any specific novel feature of your invention. This is because (a) most people would not realize or consider that the lack of a specific feature is a disadvantage, and (b) it can make it seem like the lack of a specific feature was already known in the art and was not discovered by you, the inventor. For example, the right way to indicate this would be to write, "Smith’s system operates slowly." The wrong way would be to state, "Because Smith doesn’t eliminate the reaction waste products, this delays the refining process." 

Tuesday, May 7, 2013

Do I Register Book of Photos?

Dear Rich: I just created a small, self-published book of photographs to sell. I had previously registered with the Copyright Office all of the photographs in the book. Is there any reason for me to now register the book itself? Unless there's additional material such as text, illustrations, or a forward and you're concerned about someone stealing that, we can't see any reason to register the book of photos. As you may know, registration doesn't establish copyright (that's automatic), but it does provide you with additional benefits in the event that you're chasing an infringer. BTW, here's a video we prepared on how to register a group of photos.

Monday, May 6, 2013

My Partner Patented My Idea!

Dear Rich: While I was in school, I came up with an idea for a product that allows you to get your car back from valet with a text message. I wrote a business proposal and found a partner. My partner started the company and we developed the product. I never signed any employment agreement, we never did any sort of paperwork for ownership of the company (he was a family friend), and he applied for the patent with his name and the company name. All was fine until a disagreement between us led to me leaving the company. Now he refuses to acknowledge my claim to the company (though I have him acknowledging my co-ownership in an email), and his name is on the patent for my idea. Obviously I learned my lesson about getting everything in writing, but do I have any recourse as far as challenging or becoming a co-owner? We're not clear whether your patent was granted or whether you're referring to an application still in progress. We're also not patent lawyers so we can't comment on the novelty or nonobviousness of your text message/valet system. But few applications fly through the patent process, so if a patent has not been granted (and we're not referring to provisional patent applications), we'd suggest that you search the USPTO website to determine where, in the patent food chain, the patent is currently located and to verify that you are not listed as a co-inventor. You need to also assess accurately what your contribution was. The more specific and detailed your contribution the stronger your position. But if all you provided was the one-sentence idea as in the question, above, the weaker your claim to invention co-ownership.
Can you afford the fight? Assuming you have a strong claim, you're going to need a patent attorney in order to validate your claim to co-ownership. (You'll need a patent attorney because you will need someone familiar with the the patent process and with claims such as patent fraud.) It's possible (though not likely), that if you have a really strong financial claim, you can find an attorney who will work on contingency. Before you proceed, consider the financial outcome. You don't want to spend more money on lawyers than you'll earn from your patent.

Thursday, May 2, 2013

Wants To License Art for T-Shirt

Dear Rich: My sister and I have a start up apparel company (LLC). We are paying a graphic artist a flat fee to use a piece of his art to print on a t-shirt. The art piece will only be used for one release/collection and we agreed on a flat fee as we don't know if any of these tees will sell or how many we will end up printing. Is there a basic contract for this type of arrangement? There's a long form and short form T-shirt license in our book, Getting Permission. You can also download the short form agreement here.

Wednesday, May 1, 2013

Music Publishing: Admin v. Co-Publishing

Dear Rich: May I ask for some advice towards various factors that may affect income (including net receipts/at source deals) between administration and co-publishing deal? The biggest factor is the reputation and trustworthiness of the company you're dealing with. If the company doesn't have a rep for timely and accurate payments, it's not worth signing on the dotted line. The second most important factor is you. If you're a songwriter who can pave your own way as a performer and attract attention and deals, then an administration deal is all you need (and will probably be more profitable). If you're a songwriter who needs the muscle of an aggressive song publisher to get your tunes into TV, movies or the hands of other artists, a co-publishing deal (with the right publisher) will generate more income. In either case, the third most important factor is the length of the arrangement. The shorter the time period -- say five years if you can manage it -- the better for you as it allows you to either eject from a potentially unfortunate arrangement, or renew a profitable one. You're more likely to get a short deal with an admin agreement.
Differences ... As you're aware a music publisher is a company that owns and profits from song copyrights. Some music publishers serve solely as "administrators," making sure you're properly registered with performing right societies and collecting revenue. For these tasks of managing your songwriting business they collect a fee, for example, 5 to 25% of your revenues. A co-publishing deal requires that you give up more, including half of the copyright, in the hopes that you'll get more in return. The co-publisher earns 25% to 50% or more of the songwriting arrangement under a convoluted system that's discussed in more detail in our Music Law book. We talk about the differences in a previous entry.