Can I Stop App Maker From Using My eBook Title?

Dear Rich: I recently discovered that a new Apple app is using my exact common law trademark -- a phrase associated with my former profession. Through Apple, I contacted the app designer, who said she registered the trademark with the USPTO and it was tough luck for me. Since February 2013, I have used my trademark for the title of my copyrighted eBook, which is available globally on Apple, Amazon, Barnes and Noble, Kobo and Smashwords. Since that date, any cursory internet search for those keywords would reveal my eBook, my website and my personal contact information. How can I regain control of my common law trademark? I used the trademark first, the app trademark is identical, both are used for digital products and both are available in the Apple store (and appear in close proximity in online searches).
Sorry to deliver the bad news but if you've only used the phrase in connection with a single book title, you probably have not acquired any common law trademark rights. As the USPTO puts it, "the title of a single book cannot serve as a source identifier," and as we've indicated previously, only a book title used as part of a series is registrable as a trademark. There may be exceptions for blockbuster books but you would be in a better position to chase the app developer if you offered other goods or services with the phrase.
The app developer's trademark registration. Looking at the USPTO trademark records, it appears as if the app developer's statement that she registered the trademark may not be completely accurate. Although the examiner has approved the mark, there seem to be two steps remaining in the registration process: (1) publication of the mark on the Principal Register (which is supposed to occur on July 7, 2015); and (2) the app developer must submit evidence that the mark is being used in commerce (the developer filed an intent to use or "1B" application). That leaves two possibilities. First, you can file a notice of opposition following publication. We don't think you have sufficient basis to do that but you would be best served by seeking out a trademark attorney for guidance. Alternatively, the registration may not be granted if the app developer fails to file a Statement of Use  (or seek an extension) within six months of the Notice of Allowance (The USPTO explains these procedures.)
Copyright claims? If the app developer is taking more than the title from your eBook, you may be able to frame the dispute as copyright infringement.

Wants to Use Recycling Logo As Part of Trademark

Dear Rich: I started a small comic book publishing company called Disposable Fiction Comics, LLC. We are using the recycling logo as part of our logo. I know that the recycle logo is part of public domain, but I was considering trademarking it, but I started realizing that may not be possible as it would make it private property. 
The classic recycling logo -- three bent arrows in a triangle shape --has been used in many variations in dozens of registered trademarks from recycled fabrics to recycled metals to cement to photocopier cartridges to edible marijuana seeds. It even has its own design code at the USPTO (24.17.19 - Recycling symbol) which can be used when searching the USPTO trademark database.
How the USPTO handles the recycling symbol. The USPTO treats the recycling symbol as a "universal symbol"which is "any design, icon, or image that conveys a widely recognized or readily understood meaning. The USPTO advises examiners (Note: Word document download) that a mark using a universal symbol is registrable if it:

"... is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed."

In light of the registered marks, we believe that your use of the recycling symbol meets the standards described above. Hopefully, if there are no other impediments (for example, prior users in the same field of goods or services) or other registration issues, you should be cleared for takeoff.

None of our business dept. In light of the universally recognized meaning of the recycling symbol -- to designate recyclable materials -- isn't there a disconnect when you combine it with a word like "disposable" ("something designed to be thrown away after use")? Our re-branding suggestion is attached.

Making an NDA With Someone in Remote Location

Dear Rich: Can you advise me as to the best process for arranging a non disclosure agreement with a party in a remote location? Can the agreement be signed and attached in an email? Would this be sufficient or is an original necessary?
Thanks to the federal e-signature law, contracts that are signed and executed electronically are as valid and enforceable as paper contracts. All you need to do is email it to the remote party who emails it back with an electronic signature. People use different types of e-signatures, including typing the signer's name into the signature area, pasting in a scanned version of the signer's signature, clicking an "I accept" button, typing in the name between forward slashes, or using cryptographic "scrambling" technology.
Jurisdiction: Where does the remote party reside? Always keep in mind that enforcing the agreement -- that is, keeping your secrets a secret -- requires a lawsuit. If you are suing an American worker -- even one temporarily at a remote location outside U.S. borders -- you're okay because U.S. courts have jurisdiction over those who reside in the U.S. But if the NDA is with a foreign national or a foreign company with insufficient ties to the U.S., you may have difficulty enforcing your agreement, especially if you must sue in a foreign country. It may help to include an injunctive relief provision and a foreign arbitration provision.

How Do I Register Revised Version of Previously Published Book?

early print-on-demand system

Dear Rich: Some years ago, I wrote a novel. I briefly offered it through a print-on-demand service, but only a very few copies were actually printed before I thought better of it and all of those copies went to me or close friends. The work was not registered with the Copyright Office at that time. Since withdrawing the book from the P-O-D service, I've made various revisions to the text, fixing some errors, refining dialogue, and so forth. I am now interested in registering the work, but because of the short-lived print edition, I'm not sure how I need to approach it. Am I obligated to submit the version published, noting the date, and then file a separate continuation with the revision? Is there a way to simply submit the current version and note that a previous, unregistered edition was published? (The current version is still close enough to the previous one to be immediately identifiable as a different draft of the same thing.) Yes, you can register the most current version but you might be better served by registering the earlier P.O.D. version assuming there are no major changes -- new characters, new plot line -- in the revision. Here's the skinny:

Do you need to register at all? Start with the principle that both versions are protected under copyright law and registration is not required to obtain rights. Registration is encouraged because it provides some benefits most of which are important if you must sue someone. Because few people have seen the P.O.D. version and nobody has yet to see your new version, you may not need to be concerned with infringement ... that is, until you distribute your revised version. 

If you do register ... The Copyright Office views your revised work as a derivative of the P.O.D. work and therefore your registration is intended to provide protection for your modifications. When you complete the limitations section of your application, you would fill it out as shown below:

Assuming the P.O.D. version is close to the revision, we would recommend registering the P.O.D. now. Later, when you are ready to publish the revised version, register that one as well, including the information shown above, as well as previous registration number and year of registration. Keep in mind that you can use your P.O.D. registration to stop someone who rips off your revised version (even if the revised version is not registered) because only the copyright owner (you) would have the right to make derivatives.
By the way dept. You would not file a "continuation." We think you're applying the patent definition of that term.  Under copyright law a continuation sheet is used to provide additional information that doesn't fit within the original paper application.

Can I Write Fiction Using Patented Inventions and Copyrighted Architecture?

Dear Rich: To what extent do writers of prose editorial works (whether fiction or nonfiction) need to worry about patents and architectural copyrights? Can I write a novel in which characters use or discuss some invention or technology that is covered under a current patent? Is a fiction or nonfiction description of a work of copyrighted architecture an infringement of that copyright? For example, if I write a (fictional) novel containing scenes that take place in a building subject to architectural copyright and that include narrative descriptions of relevant design features and layout (e.g., the rooms through which characters run during a chase scene), does that infringe the architectural copyright? Does it make a difference if the building is a public? 
Write away! It's highly unlikely that you'll get hassled for writing about about patents or architectural works.
Patents. Patent infringement occurs when you make, use, or sell a patented invention without authorization ... not from writing about a patent. Keep in mind, a patent is not a secret; it's published for all to see. Even quoting from patents won't get you in trouble. As the USPTO states at its website: "Subject to limited exceptions ... the text and drawings of a patent are typically not subject to copyright restrictions." That said, you could get hassled for reproducing a patent drawing. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings.
Architectural works.  Infringement of an architectural copyright occurs when someone copies "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings."Architects have many modes of expressions but we're hard pressed to imagine an architectural rendering solely in words. Writing about an architectural work would not infringe the work, anymore than writing about a Warhol silkscreen, a Robert Frank photo, or any other visual work.

Can I Score a Movie Using Existing TV Themes?

Dear Rich: While scoring a movie I've been asked to use two existing TV themes. Is this even doable? Do I need a music lawyer? Anything is doable in the world of music licensing. Assuming the owners of the TV themes are open to licensing the rights, the major factors affecting the licensing price will be the type of film -- indie, documentary, studio feature (in other words, your budget), whether the song will be included on a soundtrack recording, whether you will recreate the theme (or use an existing recording), the length of use and where it is placed within the movie (for example, over opening or closing credits), and whether the theme will be used in advertising for the movie.
Do you need a lawyer? A lawyer's advice can be helpful, particularly if you must furnish the licensing agreements. But it may not be as essential if someone in the production has experience with these types of negotiations (and the TV theme owners are furnishing the agreements). You may find it more cost effective to deal with a music licensing agent, an expert in music licensing and clearance, instead of an attorney. These agents are familiar with the necessary rights and agreements and can negotiate terms that may be most favorable for your movie. Type "music clearance expert" into your search engine.
Theme music trivia: Director Robert Altman's 14-year old son earned a million dollars in royalties for writing the lyrics to the movie music (and TV theme) for "M*A*S*H. Altman earned $70,000 for directing the movie.

Can I Say "Life is Good" on Zazzle Products?

Dear Rich: Could someone register a phrase as a brand name and not let anyone else use that phrase? For example: I created a design using the words "Life is good when the fish are biting." I posted it on Zazzle.com  and a couple days later they took it down saying I may be infringing on someone's intellectual property. I asked who it was and what proof did they have. They gave me this website address: www.lifeisgood.com. I thought the words "life is good" was in the public domain and no-one could own those words and/or prevent others from using that phrase in a sentence. Can they do that or are they trying to bluff me?
We don't think they're trying to bluff you. You can freely use "life is good" in a song lyric, or as the title of your book or for other copyright purposes, but you'll run into problems using it for trademark purposes on merchandise like t-shirts, hats or ceramic cups.
How two brothers cornered the "life is good" marketplace. Life is very good for the two brothers who own Life is Good (LIG), a Boston-based t-shirt and licensing company. The brothers were struggling t-shirt manufacturers until they stumbled on their bright-sided branding mantra. Nowadays LIG generates $100 million stamping their optimistic message on greeting cards, coffee, pet supplies, frisbees, cups, musical festivals, and a whole bunch of other products and services desired by an ever-hopeful ever-consuming world. Along with this licensing and expansion, LIG has made a serious investment at the U.S. Patent and Trademark Office where LIG registrations have been issued in dozens of classes of goods including backpacks, dog leashes, luggage, bed blankets and towels, children's and baby clothing, toys, etc.
Bottom line department. Other companies have acquired trademark registrations for "Life is Good" (and its variations) for products or services not exploited by LIG. Further, you may even be able to prevail in a dispute by demonstrating that consumers are not confused -- that is, your phrase is distinguishable. But practically, we think LIG has the legal firepower (and legal presumptions) on its side. Keep in mind, that LIG has even become embroiled in disputes with people manufacturing "Life is nutz," "Life sucks" and "Life is gay." As much as we hate to see the English language cordoned off by manufacturers, we think you should consider moving on to another line.

Do I Need Model Release for Khmer Rouge Documentary?

Dear Rich: I shot an on-the-open-road documentary revolving around the killing fields of Cambodia and interviewed many people along the way about their experiences with the Khmer Rouge. I thought I was covered under the journalistic news banner and did not need model releases but now more than a few people are telling me I screwed up and will either get sued or won't get E and O insurance and then no outlet to carry my show. What do you think? By signing a typical release, the subject consents to participate in your documentary and waives the right to sue over claims such as defamation, invasion of privacy, and right of publicity. A release doesn't always shield a documentarian from a lawsuit, but it's a strong defense, and it may be required by your insurer, distributor, or exhibitor.
Releases. A release doesn't have to be in writing. Video releases -- in which the subject is video recorded agreeing to the terms of a release -- are also enforceable. A consent to participate may also be implied. In Clearance and Copyright: Everything You Need to Know for Film and Television, attorney Michael Donaldson writes how Lily Tomlin sued documentarian Nick Broomfield to stop distribution of his documentary about her one-person show. One of her grounds was that she and the people around her, never signed a release. The trial court ruled that neither Tomlin or the other participants ever objected to Broomfield's cameras, a failure that prevented later objection to their participation in the film.
Bottom line dept. If you can afford the attorney fees we would suggest consulting with an attorney knowledgeable about film clearance.