Sunday, January 22, 2017

Spouse's Photo Used on Postcard: Can We Sue?

Dear Rich: My husband's photo was chosen by a huge non-profit for a postcard. He signed a non-exclusive licensing agreement for the use with payment of $250. They have never paid us and continue selling the postcard into the millions of copies. Can't we sue? 
Unless the licensing agreement requires that you arbitrate the dispute, you are free to sue the nonprofit. However, be prepared for the fact that no matter how many copies are sold, your recovery may be limited to $250 (and possibly interest). That's because we think you're dealing with a breach of contract situation in which the remedy is usually compensatory damages. That means the court attempts to put you in the financial position you would have been in if the contract had been performed. Another possibility is to claim that the failure to pay is a material breach of the agreement that entitles you to cancel the agreement. You would write to the nonprofit and tell them the agreement is canceled and any further use of the photo after the termination will be considered copyright infringement. Because the compensatory damages are relatively small, you should try to avoid court and seek payment via correspondence. If that fails, you can handle the matter yourself in small claims court, (assuming the nonprofit is doing business in the state in which you are suing).
Avoiding this problem in the future. To best protect your rights in the future, try to include the following language in any photo licenses: “Company shall have no right to make any use of the work until Licensor (photographer) has been paid the fee established in this Agreement. Any unauthorized use constitutes a willful infringement.” If that clause is in effect in your agreement and the other party fails to pay, you can sue for copyright infringement.

Monday, January 16, 2017

Cisco Kid is PD: But What About Pancho?

Dear Rich: O Henry published a short story in his Western series in 1907 called "The Caballeros Way" The main character was an outlaw called the Cisco Kid. Since 1914, many movies and a TV series about the Cisco Kid were produced. I would like to write a script, completely original, with the Cisco Kid as a character. Can I legally use the name, Cisco Kid, as a character in my script? Is his name and character in the public domain since the story was published in 1907?
You can definitely use the Cisco Kid in your work. O Henry's story (in which Cisco first appeared as a ruthless American outlaw), was published in the U.S. prior to 1923 placing it within the public domain. There are also no character trademark registrations for the Cisco Kid, though the name has been the subject of registrations for candy, fishing lures, and tequila. If you plan to include the Kid's sidekick, Pancho, in your script, beware that his copyright status is not as clear. Pancho did not appear in the O Henry story and was reportedly inspired by Don Quixote's sidekick, Pancho Sanza. His first appearance was in the 1945 film, The Cisco Kid Returns (not to be confused with the 1939 film, Return of the Cisco Kid) and assuming that film was timely renewed, the assignees of Monogram Pictures (Allied Artists International) may own copyright on that character. We say "may" because a number of Monogram films from 1936 to 1946 fell into the public domain. (In other words further copyright research is required.) Our analysis of Pancho is based on the case involving Sherlock Holmes in which it was determined that Sherlock was in the public domain but that the assignees of Arthur Conan Doyle's estate could claim copyright on the characters (for example, Watson's second wife) in stories published after 1922.
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Tuesday, January 10, 2017

Appeared in Music Video; Didn't Get Paid

Dear Rich: Last year I was the main actor in a music video. It was first released on Facebook where the view count currently stands at 1,075,106. The video was then uploaded to YouTube where it now has 1,940,685 views. The song that the video was based on, then went on to be a number one. This video started this band's pop career. It is still their most famous song. But, I never got paid. I had a YouTube channel at this time, so the band knew me from that, and we are from the same area. They asked me would I be in it. I said yes. There were no contracts, no personal releases, nothing. I was never acknowledged on any of their social media accounts but my image was used widely. Do I have any rights? 
First of all, congratulations on being viewed by more people than the combined population of South Dakota, Delaware and Montana. Although your numbers pale when compared to Grumpy Cat or OMG Cat, you do have something in common with those feline YouTube stars -- you're not likely to see a paycheck. Here's why.
Right of publicity. State laws that prohibit the unauthorized use of your image or name to sell a product or service are known as the "right of publicity" (see the dust-up over a recent music video). You have two problems asserting this type of claim: (1) you authorized your appearance (by saying "Yes" and by participating in the video); and (2) creative works like music videos are commonly excluded from these laws under first amendment (freedom of expression) principles. On the other hand, if the video is used to sell a third-party product or service --  for example used in a car commercial -- then you would have a reasonable claim that your rights were violated.
Written agreements. We always prefer written agreements as they spell out rights and obligations (and payments, if any). But in the absence of a written agreement a court is likely to presume you made an oral agreement and obtained compensation other than money for your appearance -- for example, exposure for you, or your YouTube channel. In summary, unless you can prove you agreed upon (or are entitled to) a payment, you won't be getting any checks in the mail.
Other possibilities. There are some peripheral legal possibilities. If your footage was used in a manner that defames you -- for example, the footage is manipulated so you appear as a racist -- you may have a claim for defamation. Alternatively, if you wrote the script for the video, you might be a co-author of the copyright of the video and you may have a right to revenue attributable to the video. Finally, if you had negotiated for a credit and failed to get one, you would have a breach of contract claim.

Tuesday, January 3, 2017

She Created PD Work -- Now She Wants to Expand It

Mona Claus
Dear Rich: I wrote a short story as part of a residency that required that I donate that story to a public federal agency, placing it in the public domain. I agreed to those terms and donated the story. Now I want to expand the story into a novel, keeping the general setting, some characterizations, and title, but changing most everything else, expanding the plot, changing character names, etc. What are my rights in this case? I believe that a greatly modified public domain work would be a new work and therefore copyrightable, right? I couldn't be sued for modifying my own writing, could I?
No, you can't be sued for modifying a public domain work (unless you copy someone else's modifications to the same work). And yes, a greatly modified public domain work would be a new (or "derivative") work that is subject to copyright protection.
To explain the principle, law professors often use as an example the most famous modified PD work, Marcel Duchamp's L.H.O.O.Q., commonly known as Mona Lisa with a Mustache. (L.H.O.O.Q. is a vulgar French acronym implying that a woman has a hot derriere.). Duchamp's estate can stop others from reproducing his work (at least in France where it is still protected) but they cannot stop others from adding their own unique modifications to DaVinci's painting. As the Copyright Office explains:
A work that has fallen into the public domain, that is, a work that is no longer protected by copyright, is also an underlying “work” from which derivative authorship may be added, but the copyright in the derivative work will not extend to the public domain material, and the use of the public domain material in a derivative work will not prevent anyone else from using the same public domain work for another derivative work.
Similarly, you can stop others from copying your expanded plot, and other unique additions and modifications. You cannot, however, stop others from adopting or modifying the same public domain story (unless they copy your modifications). Examples of how this is managed can be seen in the many adaptations of Sherlock Holmes (the original works are almost all PD) in print, on television, and in the movies.