Friday, May 30, 2014

Can We Get Out of Video Release?

photo:  http://www.pawsitivityservicedogs.com
Dear Rich: My 16 year old son has a service dog and over the years we've been contacted many times to do interviews about their relationship. We always oblige because it supports Canine Companions for Independence, the organization that provided this amazing dog. Recently, I was contacted by an independent associate producer who requested an interview. Although I asked about who they were and who they were associated with, she kept her answers vague and led me to believe that they were simply an independent documentary film crew who wanted to create this project and then try to get funding for it. The producer came and did the interview yesterday, did not photograph the dog in his working vest, nor did he ask to see the dog perform any of his 43 assistance commands. Researching him the next day, it seems he has a very religious agenda that he was not at all forthcoming about and now I worry that both my and my son's interviews will be used to support ideals we do not agree with. Unfortunately, I signed a release (the standard, we-own-everything-in-perpetuity kind.) Can I revoke/rescind or am I out of luck? That depends ... Your son's release. As a general rule, your son can void an agreement signed while under the age of consent (18 in most states) prior to reaching the age of consent. We explained these rules in a previous post. So, he should be able to announce that he disaffirms the agreement and that the company has no rights to his interview. If you or another adult has co-signed your son's agreement, that may make things more complicated. You may still be able to void your son's agreement but you should probably seek the advice of an attorney before proceeding.
Your release.  If a person is fraudulently induced to enter into an agreement, then the contract can also be voided, relieving the parties of their obligations. Fraud could be a lie or the concealment of the truth -- something misleading upon which you had a good reason to act. So, your right to terminate depends on the degree to which you were misled by the company. If you feel you were fraudulently induced to sign the release,  a lawyer's assistance would be helpful. The company may find these contract arguments more persusasive if presented by an attorney.
Practically ... We usually don't prescribe a lawyer's advice but halting the use of video footage -- especially before it's released --  sometimes requires a strong advocate. It may be worth the cost of a few hours of legal time to avoid an uncomfortable association.

Thursday, May 29, 2014

Will "TM" Protect Mark?

Dear Rich: I was wondering if you could clarify the legal use of "TM."So if a word say "ABCSOMEBRAND" is a registered trademark since 10 years and is active, in use and not abandoned, is it okay for an unrelated third party to use a "ABCSOMEBRAND" TM, with a service that is similar to the registered mark? For example Party A registered a mark, and Party B starts using this same mark with TM and is competing with Party A. If you use a mark similar to a registered mark, for similar services, you're probably infringing. Placing the "TM" bug next to the mark won't shield you from a lawsuit. The "TM" simply means that the owner believes that mark is proprietary; it has no legal significance.

Wednesday, May 28, 2014

Who Owns Sound Recording Copyright in Cover Version?

photo: Barry Mulling
Dear Rich: I have a follow up to my original question from December regarding a cover version of a Beck song. I just submitted my mechanical licensing paperwork to Kobalt (Beck's music publisher) for the Beck songs. Does a cover artist normally retain copyright to their recording/performance? The agreement says that Kobalt retains the copyright to all use of the song. Even though it is a cover, I thought I should still be able to copyright the 'recording' itself. When I challenged them on it they said no, Kobalt retains copyright to everything. Is this normal for a cover song? I felt like I should retain copyright to my arrangement and recording, outside of the song/lyrics/melody. Thankfully my next collection will have no covers! We think there's some confusion as to the two copyrights involved -- the musical composition copyright and the sound recording copyright. We're guessing that the Kobalt rep meant that Beck retains all rights to the musical composition copyright -- as well as to changes you make to the song -- but not to the sound recording copyright.
The cover song scenario. Typically, a performer who uses a compulsory license, retains all rights to the sound recording copyright (or the rights are retained by a record company or producer). Even when a performer seeks permission from the music publisher --  if for example, the lyrics are changed or a lower fee is negotiated -- the performer still usually retains the sound recording copyright. For example, if Weird Al parodied a song, he might have to give up his lyrics to the music publisher -- which is why the lyrics to "Eat It" are credited to Michael Jackson -- but not the rights to the sound recording. There would be a great disincentive to perform cover songs (Goodbye American Idol!) if the music publishers ended up owning the performances.
Your situation. Even if we're wrong and Kobalt is demanding the sound recording copyright, you can still retain rights. As you remember from our previous answer, we think some or all of the songs on Beck's Song Reader album are subject to compulsory license -- meaning that permission is not needed if you're willing to pay the fees and play by the compulsory license rules. (Limelight appears to be one of the licensing agents.) In that case, you can retain all rights.

Tuesday, May 27, 2014

Hospitals and Fair Use

Dear Rich: We are part of a team working on an article for nurses who work in professional staff development, trying to clarify when the doctrine of fair use would apply to our jobs. We have been referencing the 5th edition of your book, Getting Permission, and it stated that hospitals also are considered educational institutions under most educational fair use guidelines. This brought up some questions that we are having trouble answering. Where can we find more information about the hospital aspect and definition? Can you elaborate when use within a hospital would be considered fair use? Our understanding is that there must be an element of spontaneity involved (i.e., there is not sufficient time available to secure the appropriate copyright release). Is it only "teaching" hospitals (associated with a university) that are covered? What about for-profit hospitals, critical access hospitals without educators on-site, or clinics? Do educators within a hospital have to be in a classroom? Do staff development (inservices, etc.) count as classroom use? Additionally, we couldn't find "Educators" defined in Circular 21 from the U.S. Copyright Office, and are wondering if you have a definition that you've used in the past (we couldn't locate it easily in your book). As you may be aware, the educational guidelines are recommended principles, not federal laws. However, courts and the Copyright Office look to them for minimum standards for fair use in education -- that is, they're a starting point.
The guideline definitions. Educators are defined as:
"[F]aculty, teachers, instructors, curators, librarians, archivists, or professional staff who engage in instructional, research, or scholarly activities for educational purposes as their assigned responsibilities at educational institutions; independent scholars also are considered educators under this definition when they offer courses at educational institutions."
Similarly, "Educational purposes" are defined as:
"[N]on-commercial instruction or curriculum-based teaching by educators to students at nonprofit educational institutions, and research and scholarly activities, defined as planned non-commercial study or investigation directed toward making a contribution to a field of knowledge and non-commercial presentation of research findings at peer conferences, workshops, or seminars."
Establish your own standards? Keep in mind that the fair use statute is deliberately vague and the final determination can only come from a court. For that reason, we suggest that you look inward for fair use guidance and answers -- that is, create your own policy manual. Start by looking at the cases, synthesizing some rules, and considering practical realities -- for example, how litigious is the content owner? Hopefully, you can also get advice from your hospital's general counsel (or outside counsel). Your review is likely to reveal that fair use decisions fall within a risk-analysis spectrum. Spontaneity, for example, may figure into some educational exemptions, but may not be as important a factor as the transformative nature of your use.
P.S. Perhaps you can obtain more information from The Association of American Medical Colleges (AAMC), one of the associations that participated in formulating the 1998 fair use guidelines.

Friday, May 23, 2014

Can Content Owners Demand High License Fees?

Dear Rich: I am working as a researcher for an educational publishing company. We use different materials (text, photos and illustration) in our textbooks. And, as a researcher, I have to secure permission from the owners of those materials. Some copyright holders grant us permission, but for some it would take many months before they give their response. Sometimes, we would receive their messages months after the book is printed. I would like to ask, do they have the right to demand for us to pay high permission/licensing fees for the distribution of their work? Yes, content owners -- with the exception of those governed by compulsory licenses -- can demand whatever fees they want and they can respond to requests whenever they want (if at all). That's frustrating and explains why people in your position begin their quests as early as possible. It also explains why publishers have shifted the permission burden to their authors. And it also may explain why some content users believe it's better to seek forgiveness than permission (and then deal with the fallout, if any). The latter can be a risky strategy, of course, especially with large well-heeled content owners. But on the other hand, there is also the possibility that the use won't be discovered, or if it is, that you will end up paying a not-unreasonable license fee.

Thursday, May 22, 2014

Can I Use Poems in My Divorce Book?

Dear Rich: I have been writing book about my divorce experience. Over the last few years my family and friends have sent me inspirational quotes and poems (found on the internet) that have helped me through this difficult crisis. I would like to use/print some of the poems in the chapter entitled "Life, Self Esteem and Spiritual Affirmations" and want to give full credit to the author. I have the titles of the poems, the website, but not the author's name and want to follow the law regarding copyright. I have enclosed a few samples of the poems to clarify my questions regarding copyright and how to find the author and get permission to use their poem.  Sorry, but we don't open email attachments -- we're paranoid we'll catch something -- so we don't know to which poems you are referring. Regarding your questions:
  • Finding the author. Start by writing to the website that reproduced the poem to determine the author and title. You can typically find a way to contact the site by clicking the "Contact Us" button or writing to "info@[domain name]. If that doesn't work search whois.net for the owner of the site. If you can't get a contact, or if your contact isn't responding, we'd suggest placing a large chunk of the poem's text into Google (or whatever search enging you're using). That may turn up alternate sightings that will give you the author and/or title. Once you have that, you should be able to track the poem to find the source for permission.
  • Copyright. Copyright law requires permission unless: (1) the work is in the public domain; or (2) you are using so little of the poem -- for example, one or two lines -- that it qualifies as a fair use. Practically, you are probably not going to need permission unless a publisher expresses interest. If your book is self-published, it's unlikely the poet will learn of your reproduction..

Wednesday, May 21, 2014

Depositing Copies With Library of Congress

Dear Rich: On the same day that I sent you a question regarding copyright law, (I self-published a novel in September 2013. Is it too late to register my book with the Library on Congress?) I sent the same question to the Library of Congress website. I never thought that they would get back to me, but they did and their answer is more confusing than ever. What does this mean? And does your original answer still stand for me, that it is "not" to late to register my book? Here's what they wrote, and please keep in mind I asked them the same question as you: "Mandatory deposit (17 U.S.C. section 407) requires the owner of copyright or of the exclusive right of distribution to deposit in the U.S. Copyright Office for the use of the Library of Congress two complete copies of the best edition within 3 months after a work is published. Copies of all works under copyright protection that have been published or distributed in the United States must be deposited with the Copyright Office within 3 months of the date of first publication. Electing not to register your copyright in the work with the Copyright Office does not exempt you from the mandatory deposit provision of the law." Like the Certs twins, both answers are right. Registration with the Copyright Office (there is no "registration" with the Library of Congress) requires that you deposit two copies of your book, which, in turn, satisfies the Library of Congress' deposit requirement. In other words, you don’t have to worry about the Library of Congress if you register your work with the Copyright Office.
What's up with the Library of Congress? The creators of the Library of Congress had this dream that they would build a Noah's Ark of America's creative efforts -- containing two copies of every published work. Laws were enacted demanding that artists, writers, and musicians deposit copies of their work within three months of publication. If they failed to do so, the Library was entitled to demand copies and to mete out financial penalties for those who disregarded the requests. In practice, we've never witnessed an LoC request or penalty, and our research shows that the chances of it happening are lower than being struck by lightning this year (Bonus lightning fact: People on cell phones are struck the most!)

Tuesday, May 20, 2014

Can Political Opponent Use Cake Throwing Photo?

Dear Rich: I have a question related to misuse of a photo from a personal profile on Facebook. I have a friend who is running for a public official seat. Someone took pictures of my friend in a party where someone throws a cake on his face. His opponent used this photo in a political ad in another context. Does my friend have a case of invasion of privacy, copyright infringement or defamation? It's not likely to be defamation. You're defamed when someone makes an untrue statement that injures your reputation ... and we're not sure that a face full of frosting ruins a politician's reputation. Politics is a contact sport and free speech reigns supreme. It's also probably not an invasion of privacy unless perhaps the photographer was trespassing at the cake-throwing event.
Copyright. If the photograph was reproduced without authorization, the opponent may have committed copyright infringement. The copyright owner -- probably the photographer -- could bring that claim (not your friend). Copyright lawsuits in political campaigns are used strategically, or to distance a copyright owner from a candidate. Some political infringements are excused as a fair use and most are resolved long after the campaign has ended.

Friday, May 16, 2014

Can They Make Me Give Up Domain Name?

Dear Rich: I have an LLC (and domain name) and they have been in continual operation/use since 2011. The name of the LLC and domain name are the same. I never applied for a trademark. Recently a company sent me a letter saying they were just issued a trademark for the name; they would pay me $300 and if I refused they would force me to give up the domain name. It looks like they filed for a trademark in 2013 (At least 2 years after my first use of the name). What are my options and can they force me to give-up my company and domain names? A preliminary question is whether you offer similar goods or services to the other company. If you don't -- for example, they offer massage tables and you provide pet bereavement counseling -- then the other company will have a hard time dislodging your domain. If you sell similar products, or it's likely that the other company will expand into your commercial sphere as a competitor, then things may become a little trickier (see below).
Who can make you change? Only a court, or an arbitration panel from the Internet Corporation for Assigned Names and Numbers (ICANN), can force you to give up your domain name. In general, that would happen if the other company can demonstrate that your acquisition of the domain name is in bad faith -- for example, you bought the URL in order to trade off the other company's name or with the intention to sell the domain name back to the company (cybersquatting). Having a federally registered trademark doesn't give the other company dibs on the domain name, but it is sometimes helpful when fighting domain name battles because it creates a presumption of nationwide priority. That's something you will try to rebut in an arbitration or lawsuit by demonstrating that your use of the domain precedes the other company. In the practical world, the letter you received is typically a prelude to a more serious domain name negotiation in which the other company seeks to cajole you into a sale that would be more profitable than litigating.

Thursday, May 15, 2014

Can I "Own" Yoga Method?

Dear Rich: I just read your answer about Bikram Yoga (yes, the one dating back in 2011, I'm a slow reader :) and I have a related question. I understand that Bikram Yoga cannot restrict competing brands from using heat in their studios. But what is the principle behind this ruling? (I am talking about the environment in which people practice yoga, not the actual postures). If I, for example, come up with the concept of FlowerYoga (not a real concept, by the way) which means that people will practice yoga surrounded by flowers, would I be able to "protect" this concept in any way? And would I be looking for a copyright agreement or a trademark?  The principle behind the Bikram decision is that copyright law -- which protects manifestations of ideas such as writings, images, recordings, films and software -- will not protect methods or processes. Trademark law -- which protects names, logos and packaging used by businesses -- will not protect anything "functional." So a company like Bikram can use trademark law to stop others from using its name, and it can use copyright law to stop others from reproducing its books, brochures and videos. But it can't use trademark or copyright law to stop others from offering a sweaty yoga class (or other possible deviations on yoga piracy).
What about patent law? A patent is granted for a novel process or device that is not obvious to people who are skilled in the field. Although there's little novelty in spreading carnations or turning up the thermostat, some inventions associated with yoga can acquire patent protection. If you seek to patent a yoga method, keep in mind that there's the possibility of bad press, as well as high patent fees and enforcement costs.

Wednesday, May 14, 2014

Is It Too Late To Register Copyright?

Dear Rich: I self-published a novel in September 2013. Is it too late to register my book with the Library on Congress? No, you (or your estate) can register any time that the work is protected (your life plus 70 years). If you register before an infringement occurs you can elect statutory damages and may be entitled to attorney fees. Also, you get a neat certificate. Although registration has its benefits, keep in mind that it is not a requirement for copyright protection.

Tuesday, May 13, 2014

Can You Refile a PPA?

Dear Rich: I would like to refile a provisional patent application (PPA). I originally filed a PPA for my invention in 2011 but never filed a regular patent application. May I now refile a new PPA for the same invention given that the first PPA has expired? Yes, you can file a second provisional patent application that's the same as a previously filed PPA. As you're probably aware, you have lost your priority date by not filing a regular application within twelve months of the 2011 filing. And things will be different now because the America Invents Act is in effect. The AIA rewards the first to file (not first to invent as in 2011) which means that anyone who filed for the same invention before you file your second PPA will have priority. You may want to consider filing a regular patent application after checking out some of the concerns raised in this article.



Monday, May 12, 2014

Cut-Out Animations, MOOCs, and Copyright

Dear Rich: I am a university professor, preparing some Massive Online Open Courses (MOOCs). In my courses, I intend to explore different ways of telling a story, to try to engage as many students as possible with the material. Unfortunately I can't draw, so I have to come up with other cheap and easy solutions. For instance, I want to use cutout animation (Monty Python style) or shots of toy figurines of Alice in Wonderland, Bob the Builder and Charlie Chaplin for a course in cryptography. What rules should apply for this, especially given the context of education? Does the fact that I am using a commercial platform change anything? What if I do not intend to make money out of the courses myself? We don't think the distinctions between profit, or non profit or commercial and educational, will matter much in a copyright analysis. It may figure into a right of publicity analysis (see below) and it may matter for a fair use analysis ... but raising fair use arguments means you're playing defense against an unhappy copyright owner and we don't think you want to be in that position.
Cutting it out. As a general rule you should assume that if you're cutting out and animating a copyrighted image, then you're infringing. Whether you get hassled depends on whether the copyright owner finds out and cares enough to hire an attorney or write a letter. If you're seriously risk-averse, Bob the Builder and some versions of Alice in Wonderland are protected under copyright laws, so  you would stay away from these. Although some Charlie Chaplin films are in the public domain, the use of Charlie's image for a commercial enterprise may trigger right of publicity laws (yes, his estate has an agent). Normally, academic uses like yours might remain undetected but with the unlimited spread of MOOCs, you never know who will see what.

Friday, May 9, 2014

Senior Citizen Doesn't Want IP Trouble!

Dear Rich: I live in a not-for-profit retirement community, and am a member of the chorus. For a performance (audience=community residents), I added a verse to the song "Downtown", referencing our facility's location in the "Uptown" neighborhood of Chicago. Now there is discussion of using a clip, recording, or other form of this performance as part of the community's marketing efforts. Would this use of the music be covered under the "fair use" provision? The lyrics are mine, and I'm not as concerned about them. This all started out very simply, and I'm flattered that this is being discussed, but we don't want to create any intellectual property issues. 
You own the rights to any original lyrics you create but copyright law requires that you seek permission before altering an existing copyrighted work. (Permission is also required from the song's publisher -- Universal Music -- if you want to distribute copies of the song, or sync the song with a video. You can read about the licensing requirements in a previous post.)
Fair use. We can't say whether fair use would work as a defense in your case but you can get a rough idea by looking at some fair use music cases. Even though you're a non-profit, the commercial marketing purpose would likely weigh against a fair use argument. More importantly, fair use is a defense that you would only use if you were being threatened with a lawsuit ... and we don't imagine you want to be in that position.
The real world ... Practically none of this will matter if the song's owners don't find out about your use, or choose not to chase senior citizens altering lyrics (the music business may not want a replay of the Macarena debacle). In any case, if the community uses the song, you can cover your bases with indemnity.
What's indemnity? If the community wants to proceed and you're unsure, you can ask the community's management to release you from any resulting claims of liability. This is officially known as "indemnification" and can be accomplished informally with an email from community officials saying something to the effect that they will hold you harmless for any claims that result from the use of your lyrics and that the community will indemnify you for any damages, including reasonable attorney fees.

Thursday, May 8, 2014

Color Me Copyrightable

Swedish artist Sanna Dullaway popularized the colorization of
archival black and white imagery. Check out
her series on Abraham Lincoln, created for TIME Magazine.
Dear Rich: I want to start a business colorizing old photos and maybe selling or distributing them. Almost all of the photos were originally attributed to a photo agency known as Acme and they're all over fifty years ago. Can I copyright the photos that I colorize? It is possible to register a colorized black and white photo with the Copyright Office provided that the results "reveal a certain minimum amount of individual creative human authorship." Analogizing as to how the Copyright Office processes colorized motion pictures, your work would have to demonstrate (1) numerous color selections made from an extensive color inventory; (2) a range of additional colors that is more than a trivial variation, and (3) that the overall appearance of the picture must be modified.
Who owns the copyright? A colorized image is considered a derivative work and your rights in the imagery extends only to what you've added -- the color choices. If the underlying work is in the public domain, you're free to do what you want with it. If the work is not in the public domain, you will need permission from the copyright owner to reproduce or sell the derivative (or risk a charge of infringement). Works published before 1923 are in the public domain, as are works published from 1923 through 1963 that were not renewed. On the other hand, the rights to Acme Newspictures were acquired by the Bettman Archive, which is now part of Corbis. (This was a result of transfer of ownership of United Press International which owned Acme). Considering the thousands of photos that were generated by Acme over the decades, it's very likely that many of the ones you are interested in have not been renewed.  (It's estimated that less than 10% of all works were renewed.) But it may be difficult to sort out which Acme photos are protected, especially if you try to research the matter by yourself.

Tuesday, May 6, 2014

Do My Patent Drawings Infringe Copyright?

Dear Rich: I hired a commercial patent artist to prepare drawings for a very simple provisional patent application. However, it is obvious she simply cobbled together a collection of clipart. I am concerned I will have my patent filed and then someone will sue for use of these clipart pieces in the patent drawings. Should I be concerned? Probably not. Provisional patent applications are never examined. Unlike drawings for a regular patent appplication (that are published after 18 months), provisional applications are filed away and rarely viewed.
Are you sure you need permission? You might want to check whether the artist was using licensed clip art for which she had rights. Not all clip art is proprietary and not all clip art is protected by copyright.  Some clip art may be used for unlimited purposes, and may be royalty-free, so a permission agreement is not always necessary. For more on copyright claims and patent drawings, check our previous post, Can You Copyright a Patent?

Monday, May 5, 2014

Wants to Use Bicycle Race Footage for Trade Show

Dear Rich: I work in an in-house marketing department, and I’m creating video content for an upcoming trade show. The company I work for specializes in projection technology and information networks. During the show we want to tell a story of “a large city that successfully manages an international sporting event (crowds/traffic/etc..).” This would be done through faux news broadcasts of a cycling race happening through the city. A cycling race is happening very soon in my city, and I want to film it and use clips for the faux news broadcasts. Obviously the environment this content would be shown is commercial (trade show), but the content in form is identical to editorial. There are no direct endorsements to our company or products, and I’m not trying to sell the footage, just a faux news report about the race in the city. Anyway could this qualify as fair use? Communicating information? I know I could attempt to film it in a way where cyclists are unrecognizable, but the fact that they wear numbers and specific jerseys, this could be very difficult. You won't need to make a fair use defense because you will own the copyright in the bicycle race footage (assuming you film it yourself). So, you're free to do what you want with it under copyright law. However you should familiarize yourself with the rules of trademark and right of publicity laws (below).
Commercial use? You state that the content is identical in form to editorial content. That may be so, but your purpose -- like an informative advertorial or infomercial -- is to sell your products and services, not to present information about the bicycle race. Having a commercial purpose doesn't mean you will run into trouble but it opens up the possibility of trademark or right of publicity claims. We think the odds of such claims happening are low but if the race organizers (or race sponsors) or the individual riders see the presentation and perceive themselves as endorsing your company, then the aggrieved parties can chase you under these two theories of law. If you're still concerned, you can lower your odds of running into problems, by blurring out race logos, sponsoring trademarks and individual riders that are easily recognizable.

Friday, May 2, 2014

Can You Copyright Iron Works?

Dear Rich: I want to create greeting, note cards and other stationery products using designs I create that are of iron work in Charleston, S.C. These are iron gates, window grills, stairs rails that are attached to a house or business. Much of the iron work dates to pre-American Revolutionary war period. Some of the iron work that dates to the 20th century, the blacksmith is known, specifically Charles Simmons. He is no longer living. In other cases the blacksmith is not known. Are these architectural features in the public domain? Can their likeness be reproduced in print products and not violate copyright law? It is my intent to produce these items with a letterpress. We don't imagine you'll get hassled over your stationery products either because most iron work is not protectable (explained below) or because the copyright owner will probably not know or care about your use. If you're risk-averse, consider that figurative and highly ornamental iron work (like this) is more likely to be protected than a minimalist creation (like this). If you're highly risk-averse, stay away from reproductions of decorative post-1922 iron work (and post-1922 iron work photos, for example from this book).
Copyright and iron works. Although blacksmiths may possess skill and craftsmanship, designs included within functional objects (such as iron work) will be protected “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” (Here's an explanation of the rules and this case illustrates how the standard is applied to belt buckles.) Iron work is also difficult to protect because it often lacks sufficient originality – that is, it's comprised of generic shapes of twisted iron. The issue can get more confusing when the iron work is incorporated within the architecture of a post-1990 building (or when the blacksmith claims copyright of his creations). Of course, iron work created prior to 1923 is probably in the public domain.
PS Dept. You mentioned the iron work of Charles Simmons but we wonder if you mean Phillip Simmons (unless you're referring to Phillip's nephew, Carlton).