Monday, September 30, 2013

Should I Use Kickstarter for My Invention?

Dear Rich: My co-inventor and I need money to finish prototyping our invention. Is there any drawback to using to finance the invention's development? Kickstarter has some impressive stats and many inventors have used Kickstarter to launch their inventions. Thomas Smafield of Chicago raised $16,000 to manufacture his circular bike tool invention (named Repair Rebel); inventors of the CloudFTP device (that lets you wirelessly share any USB storage with iPad and iPhone) raised over $260,000; and the people who created the Ouya game console raised $8.5 million from 63,416 backers.
Drawbacks. But along with success stories, there are drawbacks, the most notable of which are that 56% of projects don't fund (Kickstarter is an all-or-nothing enterprise and if you don't achieve your goal, you don't get any money) and 75% of Kickstarter projects don't deliver on time (making for many unhappy patrons). In addition, a successful Kickstarter project does not mean you have created a commercial product. Kickstarter's co-founder Yancey Strickler told Reuters, “Of all the products launched on Kickstarter, very, very few would be a good investment. ... However, if the bar is lower—to simply, do I want this to exist?—suddenly over half the things have a life.”
Disclosure. Another concern is disclosure. If you have a potentially patentable invention and disclose the patentable features before you file, you may find it impossible to obtain a patent. With a rare exception, public disclosure prior to filing under the new patent law, will kill patent chances. Even if you are not patenting your innovation, you are making it publicly known which may encourage imitators ... something you may not be ready for just yet.
Manufacturing v. Licensing. Finally, inventors usually must decide whether they will manufacture the invention themselves (a risky and expensive route made slightly less risky by Kickstarter), or seek a license from a manufacturer (less revenue but also much less hassle). Kickstarter, with its crowdsourcing funding, makes that decision for you and converts you into a manufacturer.

Friday, September 27, 2013

Someone Stole My Scrambled Paragraphs!

Dear Rich: I spent several weeks preparing a free, non-commercial educational blog for middle school students in NY City with many "scrambled paragraphs." What I did was to take an original paragraph from a web page and I then scrambled it to turn it into an educational tool (often altering the text to make the paragraphs work). I also cited the source for each paragraph. The blog helps students practice 'scrambled paragraphs' for the SHSAT test. There was no free resource of such materials online so I created one. I estimate it took tens and tens of hours, altogether. Inexplicably, and out of the blue, last week a guy wrote to me and said, basically, to paraphrase: "My daughter has benefitted from your paragraphs, so I decided to take all of them from your site and create my own website using them. My site is better." Most of the paragraphs that are on his site are mine. He later seems to have thrown other paragraphs (of dubious quality) on his site. So basically, this site will hurt kids more than help them. His argument is that *I* have stolen the paragraphs and he now has the right to steal them. I felt my use constituted fair usage because 1) I am not making a penny from this, 2) The authors are not losing a penny (I am actively promoting their sites), and 3) I 'transformed' the original material into something socially useful. Can you please give me feedback? This is an unfortunate situation and one for which we don't see any reasonable resolution. In the dream world in which we sometimes live (and envision world peace and an end to global warming), we wish that the two of you could have collaborated using his programming skills and your talent for scrambling and both shared the rewards. But that's not going to happen so here is the scorecard.
Thin copyright. We knows it's aggravating to see your work pilfered but unfortunately, a court is likely to determine that you have a compilation copyright (a thin copyright) in the order of the sentences, not the content. And even though it took a lot of work, copyright doesn't protect what's called "sweat of the brow." So your copyright claim is not strong, and your adversary's attorney would make the most of it. Attributing the paragraphs doesn't help your claim to copyright ownership and neither does the fact that you're not profiting and it's for educational purposes (though that might help you in a fair use defense in the unlikely event any of your sources chase you). The end result of your hypothetical court case is that lawyers would do well while their clients went broke. We sense that your adversary knows you won't sue and is brazenly ripping you off because ... well, because that's what people do these days (maybe he should watch this).
What can you do? If you're looking for a stronger basis to bring someone into court, you could consider making people join your site before using it. As part of "joining," they must click to agree to your user agreement which should state that no portion of the site may be copied. A breach of this agreement would prove easier to enforce, (should you choose to go to court) than the wishy-washy law of copyright.

Thursday, September 26, 2013

Wants to Protect Magnetic Jewelry

Dear Rich:  I'm looking to launch a jewelry line with modular magnetic pieces, where the owner can switch between different colors and designs for the same piece of jewelry. What I want to protect is not just one piece, but the entire magnetic mechanism at play. Does that qualify as "functional" and merit a design patent? Alternatively, if I file a copyright, could I then only pursue someone if they use that mechanism AND their jewelry is a copy of mine, or could I pursue as long as the mechanism is the same (even if their jewelry looks different)? Your copyright on your jewelry would not extend to any of its functional (magnetic mechanism) features. (Ditto if you were to obtain a trademark registration for the trade dress or brand name of jewelry.) The ways to protect functional features of your jewelry are as a utility patent (not a design patent) or to maintain the process as a trade secret (which seems like a challenge).
Utility patents. There are several patents for inventions involving magnets and jewelry. Here's a 2012 patent (Patent No. 8,209,824) for a magnetic clasp. Here's a 2003 patent (Patent No. 6,594,87) that provides for magnetic arrangement of jewelry elements. If you want to pursue a utility patent, your first step is to review the prior art for patents such as these and determine whether (1) your invention infringes any valid patents, and if not whether (2) your invention is novel and nonobvious. The second step is to determine whether your invention is commercial -- are the potential profits worth the potential patent costs? Also, keep in mind that a patent will take approximately two years to obtain and during that pendency period you can't stop those who copy the invention.

Wednesday, September 25, 2013

Did eBay Steal our T-Shirt Guide?

@dearrichblog Dear Rich - can you weigh in on eBay plagiarizing our guides (see our blog for details)? What can we do? Has eBay changed enough of the text to avoid infringing on our material? Does the fact that we original wrote the first two guides on eBay mean that eBays own the content posted? eBay doesn't own the content you post but the current eBay user agreement states that "When providing us with content or posting content using eBay's Services, you grant us a non-exclusive, worldwide, perpetual, irrevocable, royalty-free, sublicensable (through multiple tiers) right to exercise any and all copyright, publicity, trademarks, database rights and intellectual property rights you have in the content, in any media known now or in the future."
That seems to give eBay a nonexclusive right to copy and post materials that you post on the site. That makes sense because eBay doesn't want to get your permission every time it reposts or features content and photos for listings, ads and promotions. However, we're not sure that extends to the right to modify or copy guides. Unfortunately, the user agreement is ambiguous enough for eBay to argue that it has the right to do what it's doing. (Of course this is all premised on the fact that you joined eBay and consented to the user agreement.)
A bigger problem. We think you may have a bigger hurdle than the user agreement. When there are a limited number of ways to express something -- for example how to search eBay for a brand of t-shirt -- copyright law permits a liberal amount of copying (this rule is known as the "merger doctrine"). At the same time, you have no proprietary right to use the brands -- Screen Stars, Hanes, Sportswear, Logo 7, Artex, Trench, Brockum, Giant and Gem -- mentioned in your guide. Yes, their reappearance in the eBay guide proves that somebody had their fingers on your work ... but even if it's plagiarism, that doesn't mean it's copyright infringement (as we discussed in a recent entry).

Tuesday, September 24, 2013

Who Owns Lighting Invention?

Dear Rich: I am an engineer employed by a large corporation that owns multiple businesses and often buys new businesses and sells them off depending on market conditions, etc. Over the past couple of years, I had been designing and experimenting with electrical circuits related to commercial lighting. Until recently my employer was not in this business but then recently purchased a lighting company. I was working on this stuff before my employer purchased the lighting company, and also, I do not work on lighting designs for my employer—the lighting business is in another state. I also have no contact with the lighting business whatsoever because I design electronics for the a different industry. When they hired me, I was asked to sign a bunch of documents, basically signing off all my patent and copyrights. One of the documents went as far as to say that I was not allowed to consult on my free time. A few years ago I asked our HR department for a copy of the documents I signed. The only thing they came up with was a statement saying that if I used my employer’s equipment to design something, they would claim the IP. They then asked me to resign a similar document. I never did this and they never pressed the issue. As a very general rule, if you developed the innovation (1) on your own time, (2) using your own tools, and (3) at the time of innovation, your employer wasn't engaged in the industry of the innovation (or likely to be), you will probably retain rights (4) in the absence of agreements to the contrary. Employee ownership of inventions is governed by state laws, most of which are influenced in varying degrees by whether you signed any documents agreeing to transfer ownership of inventions (known as pre-invention assignments), whether you used employer information, time, or tools in developing your innovation, whether you were hired to invent and whether the invention is related to the employer’s business or actual or “demonstrably anticipated” research or development.
Things to consider ... The fact that the HR department can't furnish you with agreements doesn't mean they don't exist. It's possible, for example, that general counsel or outside counsel have retained copies. If there is a legal dispute, chances are good that -- if the documents exist -- they'll be "found." Your written agreement trumps any other arrangement you may have with your employer. However, if the agreement goes too far -- for example, claims rights to all future innovations even when you're not working for the employer -- you may be able to challenge it (unfortunately, you'll have to do that in court). At the same time, you may complicate your situation if your innovation has some application within the employer's (non-lighting) industry, even if it's not a direct application. If there is any evidence that employer tools were involved in your innovation -- even in the absence of written agreement -- the employer might obtain an implied license known as a shop right. BTW, some states -- Delaware, North Carolina, Utah, California, Illinois, Kansas, Minnesota and Washington -- require that the employer furnish a copy of the law on pre-invention assignments to new employees.
The real world ... Your biggest concern may be if a company wants to license your innovation. That company will not want to enter into a license agreement if they believe there is a dispute as to your ownership, or alternatively, if they believe you may have used employer trade secrets in your innovation. You will most likely be asked to include an indemnity provision.
What's an inventor to do? We're sorry to have to tell you this ... but if you're interested in patenting, commercializing or licensing your innovations you will need the advice of an attorney. Unfortunately, there are too many unknown and wild cards to predict the outcome.

Friday, September 20, 2013

Will 3D Printing Nuke IP Law?

photo: S zillayali

@dearrichblog: As #3dprinting goes mainstream how will it effect copyrights and intellectual rights? We're stoked. This is our first question to arrive via our twitter feed. It's got us almost as charged-up as the soon-to-be Kiwi victory at the America's Cup.
What's 3D printing? A 3D printer is essentially a device that can take a blueprint-style software file (.stl) and produce a physical object. The materials used to create the object vary -- from paper and plastic to liquid polymers. You can see how one works here.
Right, you had a question. We don't usually answer policy style questions (even those with a Twitter pedigree) ... so we'll just provide a summary of where things are at. If you're serious about tracking the intersection of 3D printing and the law, you're best served by bookmarking this blog which follows and anticipates the legal issues associated with 3D printing.
3D and patent law. Some people believe that  3D printing will do to patent law what digital music, films and books did to copyright law, that is, to decentralize the distribution of manufactured products so that everyone becomes a manufacturer (and potential infringer). But it's likely that most of the items being replicated are not protected under patent law. As this article points out, most functional objects are NOT subject to patent protection and you are free to replicate (including those already in the patent public domain). Further, patents, whether design or utility, have the shortest shelf life of intellectual property. So, the waiting period to copy devices is shorter than to copy most songs. For example, you can now copy Stephanie Kwolek's Kevlar patent (from 1974) but you won't be able to freely copy Irving Berlin's song White Christmas until 2035. In other words, as this article states, there are far fewer inventions protected by patent law than there are works protected by copyright law.
What about copyrights and trademarks? We expect that copyright and trademark owners (particularly makers of toys and merchandise), will take it on the financial chin. It's not hard to imagine a world of homemade Barbie dolls or self-produced license plate holders, and our guess is that's the kind of crap ... uh, stuff ... that will get produced at home once 3D printers trickle down in price to the masses. Some futurists like Ray Kurzweil believe that manufacturing industries will weather this storm, others like Jaron Lanier, see the effect (if not corrected) as slowing economic growth. Of course, the still unanswered question is whether 3D printers will be able to produce 3D printers.

Thursday, September 19, 2013

What Good is "Patent Pending"?

Dear Rich: If I send in a patent application can I then put "patent pending" on my product? Do I have any protections against somebody stealing my idea during my wait to receive my patent. "Patent pending status" is achieved by filing either a regular patent application (RPA) or a provisional patent application (PPA). Placing the "Patent Pending" wording on your product puts the world on notice that the USPTO is in the process of examining your great idea (and hopefully will approve and issue a registration). If your application is rejected (or a year passes after your PPA is filed and you haven't filed an RPA), you should remove the "patent pending" tag. During this pendency period -- before the USPTO approves your application -- you cannot use patent law to stop others from making, using, or selling your invention. You must wait until the patent issues before you can chase infringers.
18 month rule. There is one twist: If your RPA is published (which usually occurs 18 months after filing the RPA) and the infringer is made aware of the publication, you can later sue (after the patent is issued) and collect damages for the period starting with the date of notification. In other words, you must write to an infringer and let them know that the patent is published and that you're coming after them once you get your registration.
Non-patent claims. Even though you cannot pursue the infringer under patent law, it's possible that you may have a claim that they copied your trademark or your copyrighted designs, or they used unlawful means to obtain your trade secrets.

Wednesday, September 18, 2013

How Much Do I Charge Publisher For Use of Tables?

Dear Rich: A large university textbook company has used my developmental therapy tables in two runs of of their prior publication (one psychology textbook) and has now requested renewed permission for a 10 year period to use these tables in any and all of their publications print and online. How much should I charge them per year as the permissions fee? We did not charge them anything initially but were given a copy of the book. There are no established rules for licensing fees. When two companies are competing for the same customers  -- for example, GettyImages and CorbisImages, the companies may price their products competitively. But if you are the only party with the available content, you need to decide how you value the deal, what's fair, and what the market will bear.
Why we can't tell you a number. If we suggest a number and you make a deal, you'll eventually think that you could have gotten more and you'll get mad at our hard working staff. (And if we suggest a number that's too high, you may lose the deal and dislike us even more). Most likely you'll be seeking something north of $250 per year, perhaps even four figures depending on the factors listed below:

  • Is the license exclusive or nonexclusive? If the agreement prohibits you from licensing the content to anyone else, your asking price would be higher.
  • How important are the tables? Keep in mind that many companies rely on calculators, tables and charts as a source of high-traffic content so the higher the importance to the licensor, the more you can seek.
  • How hard would it be to recreate your tables in a non-infringing manner? Keep in mind that raw data and facts can't be protected by copyright law, only your unique method of organizing and presenting the data. So, if it is fairly easy to recreate without infringing (or if someone else has created similar non-infringing content), you may have to divine the magic number that won't send the company back to the drawing board.
BTW Dept. Whatever you agree upon, see if you can get the whole license fee at once instead of payments per year. It's generally best to get it all at once than have to track it down each year. Also make sure that your license arrangement deals with attribution and credits appropriately (if that's what you wish).

Tuesday, September 17, 2013

Wants to Copy Virtual Clothing

Dear Rich: I purchased some virtual clothing in a virtual world in 2007 from a content creator who is now no longer in business; the items I purchased are no longer available for sale. I'd like to make copies of the virtual clothing I purchased, and give them away, for free, to friends. I know that it's too new to be in the public domain, but since it's out of print, and for a nonprofit purpose, would it be fair use? Your question triggered so many additional questions: Does virtual clothing get dirty? What if your virtual character has a clothing allergy? Is there a virtual Good Will where you can donate your abandoned virtual clothing?
Right, you had a question. Our initial inquiry is whether copying the virtual clothing is prohibited by intellectual property laws. We doubt very much whether the clothing is protected by utility or design patents (it's unlikely considering the cost and time involved). We also doubt whether you need to worry about trademark law unless (1) the clothing had a prominently placed and valid trademark and (2) the company had not abandoned its trademark by its nonuse (you say it's been out of commish for seven years).
What about copyright? Although clothing that real people wear cannot be protected by copyright, we don't know if this rule applies in the virtual world where "clothing" is comprised of programmed algorithms and two-dimensional imagery (both protectible under copyright). So, it's very possible that the creator could claim copyright in the virtual clothing.
Can you get away with giving it away? We're always hesitant to recommend fair use as a defense and in your case, we don't think it would work anyway. You're copying the complete work and distributing it without permission. You're not doing anything transformative and you're not commenting on the work. Neither of the factors you mention -- out of print status and lack of profit (or revenue) -- would have much effect when analyzing the four fair use factors (although the lack of revenue may attract a little consideration when weighing factor  four --  effect on the potential market).
Bottom Line Dept. We think the clothing may be protected under copyright law but as long as you're not selling the clothing, or distributing it so widely as to attract the owner's attention, you probably won't run into a problem giving copies to your friends.
BTW Dept. We're not talking about "virtual clothing" as that term is used in relation to virtual fitting rooms like this or this.

Monday, September 16, 2013

Tarot Cards Using Music Quotes

Dear Rich: I want to publish a classic rock-themed tarot deck and book set. This tarot product will break new ground in that it will be based on a “Behind the Music”-like backstory of a fictional band. (The only real thing being used are song lyrics, not the names or likenesses of real rock musicians.) For each of the 78 cards to be created a 2-6 line lyric excerpt has been chosen for the tarot card image, as part of a 2-3 page “treatment” of the card in the book. NO LYRICS WILL BE PRINTED ON THE CARDS; only in the book. The treatment includes reproduction of the card image, a description of the card imagery, its keywords and meanings in a reading, a fictional band storyline vignette associated with the card, associated spiritual/metaphysical concepts, and other items like classic rock trivia, quotes, music concept definitions, etc. The pairing of known lyrics with new imagery could be considered transformative, as those words paired with a metaphoric image may yield a new perspective on the lyric. I’m thinking this won’t exempt me from needing permission, right? The boon to the copyright holders is that my use will not compete with, nor ever take revenue away from them, but rather, my quoting of the lyrics and pairing them with my tarot card images, will expose more consumers to the complete work (song) and perhaps be inspired to purchase it! Thank you in advance for your guidance in this matter! 
  1. For this project, how best to first approach publishers with permission requests: email, form? How much detail on planned usage do you state in the email? 
  2.  How much detail should I provide on exactly how I plan to use each lyric? The Permissions form has no place for it—where do you specify what portion you plan to use and how? Would it help my case to include an overview of the project and mockup sample like I did for you? 
  3. Will it help to mention the above selling points (wider audience, more sales) above to entice publishers to grant permission? 
  4.  Do I have only one shot to convince them? Can I try a different tactic if they say no? 
  5.  Your Permissions form has a section for book publisher info and I don’t have that; I’m doing this “pre-authorization” to help sell the book proposal; I assume it’s ok to skip that? 
  6. Based on your knowledge of the music industry, just generally, of these 3 scenarios, does any one give me a better chance of getting approvals and/or reducing/eliminating fees: 1) I am planning to self-publish this set; 2) I am seeking a mass publisher; 3) I have a signed contract with a mass publisher. IOW, I am not averse to playing up “it’s just poor little ol’ me who doesn’t have loads of $$ looking to produce a tribute to rock musicians” if it would help my case! Or maybe they don’t want to deal with some “no one” who doesn’t have the backing of a major publisher? 
  7. Since most rock band names are trademarked, do I also need to get permission to cite the names for lyric excerpts and in a complete list of songs/lyrics used in an appendix? 
  8. I assume I should group multiple requests to the same publishing rep. in the same letter or email? 
  9. If 3 publishers are listed for a single song (like 3 band members), do I need to contact all 3 AND get ‘Yes’ from all 3 to be ok? 
  10. How long can I expect it take on average to hear back?
Yours may be the longest question(s) we've ever received. Sorry we had to edit it down to its current state, but like our friends, The Residents, used to say, "Editing is no sin." In general, we viewed your question like the Great Coral Reef, impressive for its overall size.
Right, you had a question(s). We believe that using three or four lines of lyrics probably qualifies as a fair use and may not merit all of the effort that you're considering especially if you self-publish. That will change if the book is licensed by a publisher and you have to indemnify. At that point, you can seek permission (and hopefully you can pay for it with your advance). Until then, it may be an unnecessary effort.
Dealing with music publishers. The form and method of communicating with publishers probably doesn't matter much -- email should work fine. Provide as much detail is necessary; "short-and-to-the-point" works best. Don't try to convince the publishers of the benefits to them. They probably don't care. They also probably won't care whether you're self-published or with a publisher because their licenses are usually geared to quotas (under 1,000 copies, etc.). Mostly, they want to know when they will get your money. Usually, they respond within a few days.
The songwriters and the band name. Hopefully, it won't matter how many songwriter/publishers there are. One publisher is usually designated as the administrator and that's the party from whom you would get permission. Also, you don't need permission for the use of the band's name in connection with the lyrics (but avoid putting any band names in the advertising). 

Friday, September 13, 2013

Wants To Use Lyrics in Academic Book

Dear Rich: In order to gain permission to use lyrics from a well-known song by a famous singer-songwriter for an academic book chapter about the historical origins of the lyrics, the music publishers are asking for a fee for 10 years, renewable if the book is reprinted. Although it is highly unlikely the book will exceed 1,000 sales, in which case the license will need to be renewed, I am worried the music publishers could pursue my descendants after my death for future fees, should the book be successful. My alternative is to refer the reader to the Internet where the lyrics are easily accessible. The book will be published in both the UK and the U.S. I would like to know (a) the legal position of doing this, and (b) any guidelines on the number of words I can publish for fair use in my article.  Referring readers to an Internet link is fine and does not violate copyright laws (unless you're referring readers to an illegal download). However,  it might not be an ideal long-term solution because many links go to hyperlink heaven, never to be replaced (and leaving your book outdated). A longer-term (less appealing) solution would be to ask the reader to search for the lyrics themselves ("type 'Suzanne' and 'lyrics' into your search engine"). In general, we think that using the Internet is not an ideal workaround if you want your readers to achieve satisfaction without leaving the text.
Will your descendants get cease and desist letters? Assuming you proceed with the music publisher permission, we don't think you'll need to worry about your descendants getting hassled. We could be wrong, but in our experience music publishers are not particularly diligent about following up, particularly when the permission is tied to distribution quotas. Music publishers tend to rely on the kindness of licensees --  that is they hope that licensees will be diligent and honest and report when they've exceeded the sales ceiling. When it comes to "small" permission deals, music publishers are primarily concerned with the initial payment.
Fair use/fair dealing. U.K. and U.S. copyright law differ over the issue of fair use (in the the U.K. the term fair dealing is used). Fair dealing is much more limited and according to our limited knowledge of British law, would not apply in your case. We think you have a reasonable fair use claim under U.S. law, but we don't want you to have to go to court to prove it. Therefore, if the permission payment is not exorbitant, we'd recommend --  for your sake, your publisher's best interest, and your reader's covenience -- that you pursue the license arrangement.

Thursday, September 12, 2013

How Many Seconds of Video Equals Fair Use?

(Warning: lots of scatological language) 
Dear Rich: I've created a 12-minute video that consists of short clips from 45 different movies. It's something like a cross between a supercut video and Christian Marclay's "The Clock" or Vicki Bennett's "Gesture Piece". From my long-time reading of Dear Rich, I assume that the video will probably (1) fly under the legal radar or (2) be flattering and harmless enough to not offend the copyright holders. But on the other hand I assume I'd have to rely on (3) a fair use defense if any copyright holder objected to my use of a clip. Is there any better news than that? Most clips in my video are up to 5 or 10 seconds, a couple are 30 seconds long.  Is there any kind sense of how long a clip might be before it triggers a legal issue? We're often asked that question, or its equivalent -- how many seconds of video qualify as a fair use? (And we're asked similar questions about music and books.) The answer is the same for all media; there is no fixed limit that is guaranteed to be safe. The analysis is always case-by-case and usually focuses on three factors:
  • how long? (shorter is always more likely to be permitted), 
  • how important? (the less important the clip is -- that is, the less it qualifies as the "heart" of the work -- the more likely it is to be permitted) and 
  • is it a transformative use? (the more transformative your use, the more likely it is to be permitted).
One way to assess this for yourself is to review some audiovisual cases in which portions of films were used without authorization. We've collected a few at this site. In general, you're correct that you're likely to get away with such uses as the movie studios apparently don't find these snippet collections as threatening to their bottom line. That is, they are more inclined to go after BitTorrent sites and those pirating complete movies.
BTW Dept.  Thanks for getting us to explore the endlessly entertaining world of supercuts. We wanted to include this DeNiro supercut, but it seemed too violent and language offensive for our audience so we opted for the above supercuts classic (which is just language offensive).

Wednesday, September 11, 2013

Wants to Use Music For Pitch Deck

Dear Rich: I have a 40 second animation that I would like to add music to. Its only purpose is as a lead in to a pitch deck for a media startup. It would have no "commercial use" per se. Can I use this much of a song for this purpose without it being considered infringement? Are there simple steps to take to avoid any taint of infringement? (I realize that it is highly unlikely that the artist would ever even know about its use, but I will be very protective of the IP in my company and don't want any appearance of infringement myself). Many versions of the song are on youtube, posted by individuals unrelated to the artist. We wish you good luck with your pitchdeck -- a short slide shows that summarizes a startup's business model (AIRBNB's pitchdeck is shown above). But avoiding any "taint of infringement" will be hard if you plan on syncing copyrighted music to an animation.
Sync licenses. To fully avoid liability, you would need a sync and master use license, which we believe will be difficult and expensive for you to obtain. (We discuss master use and sync licenses in a previous entry.) You're correct; the odds favor you. It's unlikely the music publisher that owns rights to the song  or the record label that owns rights to the sound recording will learn of your use (unless you're pitching a music-related startup). Those odds diminish if your animation/pitchdeck goes viral.
A "poor man's workaround"? You could pay for a corporate presentation performance license with BMI or ASCAP (whoever owns the rights). Though it won't satisfy the sync license requirement, it demonstrates your good will and may limit liability.
BTW Dept. (1) We don't agree that the music has no commercial use per se. Using music to excite investors seems like a commercial use to us. (2) The fact that others are posting the song at YouTube has no effect on your situation -- YouTube has its own methods of dealing with infringers.

Tuesday, September 10, 2013

What Trademark Class for Therapy Doll?

Dear Rich: Under which trademark class would a doll used for therapy (psychological) and available for any consumer to buy online, fall? The USPTO categorizes dolls used for therapy purposes in the "Medical Supplies" category, Class 10 -- for example, "role playing dolls for use in psychological testing and therapy." (As you may know, typically a doll as used by a child would fall within the "Games and Sporting Goods" category, Class 28.) Here's  more on the USPTO classification system. BTW, the manner in which you sell the doll -- in retail stores or online -- won't make a difference for purposes of determining trademark classification.

Monday, September 9, 2013

Is it Illegal to Use BitTorrent?

Dear Rich: Our college has rules regarding the use of the WiFi network and one of them is that we cannot participate in file-sharing and P2P networks, and specifically we can't use the college WiFi for BitTorrent. Is that legally correct for them to prohibit us from using BitTorrent, especially if we're not using it for illegal purposes? Although BitTorrent (or bittorrent as it is also known) has become synonymous with illegal file sharing, you're correct that there are legitimate non-infringing uses for the technology. Sites such as Vuze and Clear Bits try to keep BitTorrent use legit  -- offering public domain, open source and creative commons material. But these sites are in the minority and the vast multitudes of BitTorrent users are downloading mega-files such as videos of Oblivion and G.I. Joe: Retaliation (Here are the Top 10 pirated BT movies from last week).
What is Bit Torrent? BitTorrent is an Internet software protocol that is especially efficient for transferring large files such as music, movies, or video games (and smaller files such as eBooks, too). Unauthorized BitTorrent transfers are sometimes difficult for copyright owners to stop because the complete file is rarely stored in one piece; instead, the file is broken into identically sized pieces that are stored on different computers. The file is reassembled as the user makes a download. Users of BitTorrent sites are usually not anonymous, and IP addresses (the unique numerical address for each computer) can be tracked by copyright owners with access to tracking logs. 
Can your college prohibit BitTorrent usage? Your college is free to set standards for WiFi usage and there are many reasons why your school would want to prohibit BitTorrent. The sheer volume of use -- it is estimated that there are a quarter of billion monthly BitTorrent users -- combined with typical mega download file size could tax (or overwhelm) a WiFi provider's bandwidth. (Of course students have workarounds for torrent blocking.) In addition, a college may wish to avoid being liable for its users' activities, for example, if a college student is using his computer as a "client." By making the anti-BitTorrent provision part of the licensing agreement, the university retains the right to turn off the juice to errant users. 
Can you/they be legally liable? Yes, those who vicariously facilitate copyright infringement may be liable for copyright infringement. However, despite various legal attacks (including this 2013 case), and despite filing thousands of cases against individual users, the BitTorrent community has so far survived the onslaught of legal enforcement, partially because of jurisdictional issues --  the servers and companies can easily move to a new "cyber-friendly" country. Here's one attorney's tips for fighting a claim of illegal downloading using BitTorrent.

Wednesday, September 4, 2013

Wants to Use Beautiful South Songs in Play

Dear Rich: I am a teacher at a secondary school and I want to write a play where I would charge a fixed price for tickets to the general public as well as the families of the children at the school. I am writing original dialogue but wanted to use the music of The Beautiful South in the play. I want a small band to sing and play the music live as well as use recorded tracks of The Beautiful South themselves. Would I need to ask permission or pay a fee for doing this? Technically, what you're seeking is known as grand rights, which refer to the right to incorporate songs into a dramatic or other narrative non audio-visual performance. We talked about grand rights in a previous entry. BTW, the composition of the audience or the price of the tickets typically has no effect on the legal issue as to whether permission is needed.
If you wanted to make sure the school is exposed to zero legal liability, you would contact the publisher (Universal-Island Publishing) and obtain grand rights permission (and if the songs were written by someone other than The Beautiful South, you would need permission from them as well).  In order to reproduce The Beautiful South sound recordings -- for example, you wish to sell DVDs of the performance -- you would need the consent of the band's record label (previously Go Discs Ltd., a London-based label that went defunct).  We think that will be a time-consuming (and ultimately fruitless) endeavor.
A simpler solution? Unless you're planning on doing more than a secondary school performance -- for example, you hope to exploit your idea off-Broadway -- you could give up on pursuing grand rights and simply categorize the use of the material as a public performance. Hopefully your school already has a license with performing rights societies such as ASCAP and BMI. In that case, the  performances would be logged and paid for by the school. (It appears as if the Beautiful South is affiliated with ASCAP in the U.S. and PRS in the UK). If all this seems like way too much to deal with, you can simply proceed without permission and see if anybody objects. That low hassle approach involves more risk but may prove more sensible in light of your potential permission hurdles.